Patent Protection in Europe

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Patent Protection in Europe
Heidrun Krestel Liaison Officer Member
States Co-operation Programmes and
INPADOC European Patent Office
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Topics of this presentation

• Introduction to the EPO
• General issues
• Filing
• Search and examination
• Granting
• Opposition
• Appeal
• Summary

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3 new member states which will join the EPC soon
LV
LT
PL
Lithuania
Latvia
Poland
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• DG1Search, examination and administration
  ofsearch documentation

DG2Search, examination and opposition
DG3Boards of appeal
DG4General administration,finance, language
servicepersonnelPatent information
DG5Patent law, internationalaffairs, PR,
technicalco-operation
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The EPOs Mission
To examine patent applications To grant
patents To publish and disseminate patent
information
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Applications 1995 to 2002
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Topics of this presentation

• Introduction to the EPO
• General issues
• Filing
• Search and examination
• Granting
• Opposition
• Appeal
• Summary

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What is a patent?

• A patent is a legal title granting its holder
  the exclusive right to make use of an invention
  for a limited area and time by stopping others
  from, among other things,
  making, using or selling it without
  authorisation.

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National procedures
Invention
Application
CZ-Patent
Application
AT-Patent
Application
SE- Patent
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European procedure (EP)
Invention
Application
up to 27 national patents
EPO Grant
National Phase
European phase
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International procedure (PCT)
Invention
179 member states
Application
search and optionalpreliminary examination, no
patent grant as such, entering the regional or
national phase with 30 months delay after first
filing
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Topics of this presentation

• Introduction to the EPO
• General issues
• Filing
• Search and examination
• Granting
• Opposition
• Appeal
• Summary

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Filing the application

• Who can file?
• Where to file?

• Any natural or legal person, joint applicants
• at EPO premises in Munich, The Hague and Berlin
• at the central industrial property office or
  other competent authorities in that Contracting
  State (depending on the national law)

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Filing the application

• In countries where the EPC has entered into force
  the contracting (designating) states
• In one of the official languages (English,
  French, German)

• For whichcountries?
• In which language?

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Filing the application

• Request for grant of a European patent
• Description of the invention
• Claim(s)
• Drawing(s) referred to the description or the
  claims
• Abstract
• Claim to priority

• Items to file

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Filing the application

• Priority may be claimed for a European patent
  application by a person who in 12 month prior to
  the filing of the European application has filed
  an application of a patent or registration of a
  utility model in respect of the same invention in
  a state which is party of the Paris Convention
  for the Protection of Industrial Property

• Claim topriority

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Filing the application

• Requirements concerning the presentation of the
  invention
• Disclosure of the invention
• Unity of invention
• Description
• indication of technical field of the invention
• background state of the art
• definition of the technical problem and its
  solution
• description of the figures
• descrption of the way to carry out the invention
• indication of industrial application

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Filing the application

• Requirements concerning the presentation of the
  invention
• Claims
• define the matter of protection
• usually comprises two parts, the prior art
  portion and the characterising portion
• Drawings must correspond to description and
  claims
• Abstract summary of the invention for technical
  information purposes

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Further detailed information via the EPO website

• www.epo.org

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Topics of this presentation

• Introduction to the EPO
• General issues
• Filing
• Search and examination
• Granting
• Opposition
• Appeal
• Summary

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Search and examination

• Examination on filing by the Receiving Section
• indication that a European patent is sought
• designation of at least one contracting state
• definition of an applicant
• description and at least one claim
• payment of filing and search fees
• Formalities examination
• check of compliance with requirements concerning
  the items to file

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Search and examination

• Search
• on basis of the claims
• search tools
• electronic databases (e.g. DOC d.b)
• paper collection, systematically filed according
  to the ECLA, containing PCT minimum documentation
• non-patent literature
• search reportpublished together with the
  publication of the application 18 months after
  the priority applicationor published separately

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Search and examination

• Code letters in the search report indicatingX
  particularly relevant document which, taken by
  itself destroys the novelty or inventive step of
  the subject-matter claimedY particularly
  relevant document which, taken together with one
  or more other Y documents, indicates that the
  subject-matter claimed does not involve an
  inventive stepA document gives information
  about the state of the art

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Search and examination

• Substantive examination
• upon request for examination in written form
• after payment of the examination fee
• in the light of the search report, the EPO
  examines if the inventions is patentable and
  meets the requirements of the European Patent
  Convention (EPC)

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Topics of this presentation

• Introduction to the EPO
• General issues
• Filing
• Search and examination
• Granting
• Opposition
• Appeal
• Summary

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Granting

• For an invention to be patentable it must be
• Novel (no prior disclosure or use) EPC Art. 54
• Inventive (not obvious to one skilled in the
  art)EPC Art. 56
• Industrially applicableEPC Art. 57

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Granting

• Not regarded as inventions
• Discoveries, scientific theories and mathematical
  methods
• Aesthetic creations
• Schemes, rules and methods for performing mental
  acts, playing games or doing business, and
  programs for computers
• Presentations of information
• Treatment of human or animal body by surgery or
  therapy
• Plant and animal varieties

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Granting

• Novelty
• Has the claimed invention been disclosed, used,
  exhibited before? If not it is NOVEL
• Examiners use documentation and computer searches
  to decide on novelty.

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Granting

• Inventiveness
• Does the claimed invention comprise an inventive
  step, attributes which are not obvious to someone
  skilled in the art?
• Test can elements of the claimed invention be
  found in 2 prior art documents?
• If yes then the claimed invention is not
  inventive.

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Granting

• Industrial Applicability
• An invention shall be considered as susceptible
  of industrial application if it can be made or
  used in any kind of industry, including
  agriculture
• Difficult to assess

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Granting
10 Withdrawn after search report
65 Patents granted 6.2 opposed
25 rejected or withdrawn during examination
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Topics of this presentation

• Introduction to the EPO
• General issues
• Filing
• Search and examination
• Granting
• Opposition
• Appeal
• Summary

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Opposition

• Any person (public)
• Opposition period nine months after mention of
  publication of grant
• Reasoned statement (grounds)
• In written (opposition form) with facts and
  evidence
• Payment of opposition fees
• Substantive examination of the opposition by the
  opposition division
• Oral proceedings
• Decision of the opposition division

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Topics of this presentation

• Introduction to the EPO
• General issues
• Filing
• Search and examination
• Granting
• Opposition
• Appeal
• Summary

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Appeal

• Anyone adversely affected by a decision of the
  EPO may file an appeal to the Board of Appeal
• time limit two months after the date of
  notification of the respective decision
• written statement (grounds)
• last instance
• case law

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Topics of this presentation

• Introduction to the EPO
• General issues
• Filing
• Search and examination
• Granting
• Opposition
• Appeal
• Summary

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Fees

• Application fee 125
• Search fee 690
• Designation fee 75 per country, maximum
  7 times
• Examination fee 1430
• Fee for grant 715
• Annual fee 34 year 785
• Total up to grant 4270
• Opposition fee 610
• Fee for appeal 1020

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Overview of the patent procedure at the EPO
Application
12 month
Formalities
Further applications (Priority)
after 18 months
Search
Publication, Search Report
Info
Request for Examination
max. 6 Month after search report
Examination
-
Reject
Max. life time 20 years

Info
Applicant
Patent
Grant
EPO
within 9 month
Third Parties
national Phase
Translations
Opposition
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Thank you for your attentionQuestions