European Patent Applications

A European Patent application may be filed at the European Patent Office in English and can designate any of thirty states which are party to the European Patent system. These are currently: Albania, Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Macedonia, Monaco, Netherlands, Portugal, Romania, Slovak Republic, Slovenia, Spain, Sweden, Switzerland (including Lichtenstein), Turkey and the UK.

After filing a European Patent application and requesting a search, an European Patent Office examiner conducts a search through previously published patent specifications and a limited range of other literature to identify published documents which may be relevant to the patentability of the invention. A report listing these documents is sent to the applicant (together with a copy of the documents).

If the search report was favourable and the prospect of securing a granted Patent seems good, the applicant may decide to proceed to examination. For this purpose, it is necessary to file an “Examination Request” and pay an examination fee no later than six months after publication of the search report. By the same date, it is also necessary to pay a “Designation Fee” for each designated European country in which Patent protection is desired (although there is no fee for the eighth and each subsequent designated country).

The application is allocated to a European Patent Office examiner who will in most cases issue an “Official Letter” detailing any objections to the application. Objections which may arise are that the invention is not new or is merely an obvious departure from what is already known.

Working closely with his advisor, the applicant may choose to instruct his advisor to prepare and file a response to the objections or amend the application to overcome the objections. There may be several exchanges of correspondence between the examiner and the advisor over a number of years and this procedure is often referred to as prosecution. The costs of prosecution will depend on the time spent by the advisor which in turn depends on how difficult it is to overcome the examination.

Provided that all objections are eventually overcome, the European Patent Office will issue a formal notification of acceptance. The application will proceed to grant, subject to payment of various fees and filing of translations of the accepted claims into French and German.

Shortly after the European Patent Office issues the formal “Decision to Grant”, various steps must be taken at the local Patent Office of each designated European country in which the applicant desires the European Patent to take effect. For this purpose, a local language translation (if appropriate) of the accepted text must be prepared and filed at the relevant local Patent Office by an appointed local Attorney. The cumulative costs will reflect the number of countries and the length of the accepted text to be translated, although translation costs have recently been greatly reduced.

Each separate national phase patent must then be maintained by paying annual renewal fees.

On balance, where Patent protection is desired in three or more European countries, a European Patent application is generally more cost effective than three separate national foreign Patent applications.

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