European Patents

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

Approximately three months after filing a European Patent application, an EPO searcher 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 search report listing these documents is sent to the applicant (together with copies of the documents).

The application is published at 18 months generally with the search report which typically issues soon after filing.

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 an EPO 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 and therefore lacks inventive step.

Working closely with his advisor, the applicant may choose to instruct his advisor to prepare and file a response to the objections and/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 the substantive examination. The costs of the prosecution of this stage will depend on the time spent by the advisor, reflected the objections.

Provided that all objections are eventually overcome, the EPO will issue a formal notification of acceptance. The application will proceed to grant, subject to payment of various fees (including typically renewal fees) and filing of translations of the accepted claims into French and German.

Shortly after the EPO 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. This is called ‘validation’. For this purpose, a local language translation (if appropriate) of the claims and description where applicable is prepared and filed at the relevant local Patent Office by an appointed local representative. The cumulative costs will of course reflect the number of countries and the length of the accepted text to be translated. Recent changes to the translation requirements have made this cheaper.

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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