1. The EPO and the Procedures
Torino, October 2011
Edoardo Pastore
Patent Examiner, Cluster Computers
European Patent Office

2. Disclaimer:
The presentation and in particular the treatment of the examples reflects the personal opinion of the authors and does in no means prejudice any Examination Division or Opposition Division working on related applications. 2

3. Further proceedings before the EPO Appeal procedure
Agenda
Procedure up to grant
Further proceedings before the EPO
Appeal procedure 3

4. There is no such thing (yet) as an EU-patent!
How to obtain patent protection in Europe?
1. The national route
2. The regional route: European Patent Convention
separate procedures for each state
procedures differ according to national law
one application filed at one office for up to 40 states
one procedure
applicant selects the desired states
one European patent for up to 40 states
results in a bundle of national patents EP IT NO FI TR RO DE IT UK DE
There are 3 main ways of protecting an invention abroad:
Within one year of the first filing of a patent application, applicants may file an application for the same invention with other patent offices. Such inventions are treated as if they were filed on the date of the first application (for the purposes of examining novelty and inventive step).
There is no such thing (yet) as an EU-patent! 4 4

5. Example: the European granting procedure
opposition period starts
withdraw?
18 months 24
application filed
search
publication
examination
grant
the invention becomes visible to the competitors!
national validation
The search report is usually created before the patent application is published.
Applicants can withdraw their application at any time, e.g. if conflicting prior art is found.
If applications are withdrawn early enough, then the application is not published.
During the opposition period, third parties can oppose the patent on the grounds that it should not have been granted (opposition grounds are limited).
The reasons for the long time taken to grant a patent (not just at the EPO, but at most other patent offices too):
applicants have a long time to respond to communications from the patent office
there is a substantial backlog of applications due to a surge in patenting activity and international patenting
A published patent application will provide some limited protection even before it is granted (see Art. 67 EPC). NO IE RO y IT DE FI CZ 5 5

6. How does it work with society?
discloses how the invention works
inventor
public
exclusive rights for (max.) 20 years
legal certainty
generates
represents the public
procedure up to grant
checks if the invention is disclosed
office
issues certificate of exclusive right (patent) 6

7. Overview of European patent grant procedure
Appeal
proceedings
Refusal of
application
Applicant
Limitation or
revocation
proceedings
Substantive
examination
Grant of
European
patent
EPO
Opposition
proceedings
Opposition by
third parties
possible
Public
domain 7

8. The European granting procedure
18 months 24
filing
search
publication
examination
grant 8 8

9. Filing a European application
EPO
The Hague
Berlin
Munich
European patent application
NPO 9

10. Filing a divisional application
EPO
The Hague
Berlin
Munich
European patent application
Divisional
conditions!
NPOs
NPO
European patent application
Parent 10

11. The European granting procedure
18 months 24
filing
search
publication
examination
grant 11 11

12. Examination inventor office public requests file inspection objections
third party
observation
amendments
decision:
grant or
refusal
When filing amendments, these amendments may not contain any new information. It is a general principle that no new information may be added to the patent application. Any amendment may therefore only concern a re-grouping of the information already present in the patent application as originally filed. If this principle is not being observed by the inventor when filing an amendment, the examining division will object to the amendment.
sends decision
publishes decision 12

13. Examining Division Article 18 EPC
Responsible for the examination of European patent applications
Shall consist of three technically qualified examiners
Examination, as a general rule, entrusted to one member of the Examining Division
Oral proceedings shall be before the Examining Division itself
If the Examining Division considers that the nature of the decision so requires, it shall be enlarged by the addition of a legally qualified examiner
In the event of parity of votes, the vote of the chairman of the Examining Division shall be decisive

14. Number of staff in 2010 almost 4000 patent examiners working in
Munich
3 727
The Hague
2 661
Berlin
277
almost 4000 patent examiners
working in
directorates (25-35 examiners)
technical fields (e.g. G06Q /EC)
Vienna
108
Brussels 5
Total
6 778 14

15. Staff from 31 different countries (2009)
Country Number of staff
AT Austria
237
BE Belgium
359
BG Bulgaria 35
CH Switzerland 74
CY Cyprus 8
CZ Czech Republic 20
ES Spain
447
DE Germany
1 851
DK Denmark 75
EE Estonia 7
FI Finland 49
FR France
1 225
GB United Kingdom
507
GR Greece
165
HU Hungary 29
IE Ireland 82
HR Croatia 2
Country Number of staff
IT Italy
507
LT Lithuania 4
LU Luxembourg 69
LV Latvia 5
MT Malta 2
NL Netherlands
609
SE Sweden
125
PL Poland 62
PT Portugal 87
RO Romania
115
SI Slovenia 14
SK Slovakia 15
TR Turkey 29
Others
Total
6 818
IS Iceland 1 15

16. Grant of a patent Positive outcome of the examination procedure
(Rule 71(3) EPC)
intention to grant a patent
version of the patent (e.g. which claims)
invitation to pay fees for grant and printing
invitation to submit translation of claims
fees for grant and printing paid
translations submitted
Decision to grant a European patent
(Rule 71(11) EPC) 16

17. Cost of a European patent up to grant
translations*: EUR
4 types of cost:
attorney fees*: EUR
patent office fees*: EUR
source: EPO - Patent Teaching Kit
Cost of a European patent compared with a German patent:
Higher fees charged by patent attorney
Higher fees charged by European Patent Office
Translations required (depending on countries chosen)
Note: The costs shown are up to the date of grant of the patent. Renewal fees due after that date are not included.
application and other prosecution fees:
Paid to national and regional patent offices
Costs relating to patent attorneys or agents:
Who assist in drafting the application
Use of a patent attorney/ agent is usually optional (see legal requirements)
it is generally advisable to seek legal advice when drafting a patent document;
Costs of translation:
Only relevant when seeking IP protection in countries whose official language is different from the language in which the application has been prepared;
Costs may prove to be high (technical language)
Maintenance fees:
Paid at regular intervals
In order to maintain the patent application or to keep the patent alive;
usually maintenance fees increase the longer the protection is maintained;
EPO fees:
cost indicated above includes annual fees for 3rd and 4th year;
schedule of fees
filling fee: 190 EUR; 105 EUR (online filing)
search fee (filed on or after ): 800 EUR
exam fee (filed on or after ): 1480 EUR
designation fees: 525 EUR
grant fee (< 35 pages; filed on or after ): 830 EUR
renewal fees: 3rd: 420 EUR; 4th: 525 EUR; 5th: 735 EUR
further info:
search fee for suppl. EP search: 800 EUR
search fee for international search: 1785 EUR
renewal fees: from 3rd year on
German
patent
European
patent
* estimated cost Actual cost depends very much on the specifics of the individual case. 17 17

18. There is no such thing as an international patent!
How to obtain patent protection in Europe/ worldwide?
PCT
3. The international route: Patent Cooperation Treaty (PCT)
just one application for up to 144 countries (June 2011)
harmonisation of formal standards for a patent application: language, patent agent, fees etc.
PCT offers an international search report and an opinion.
After months, the applicant has to decide if he wants to proceed with the patent examination proceedings in one or more jurisdictions. (cost implications) IN AU GB US CN
PCT applications can be filed at a national patent office, the EPO or with the World International Property Organization direct.
The PCT procedure allows for a single application which is later split into many national patent applications. The EPO accepts patent applications filed under the PCT in its capacity as a receiving office, international searching authority, international preliminary examining authority and/or designated or elected office. However, it is important to stress that there is no such thing as an "international patent".
There is no international patent as such, but there is such a thing as an international patent application procedure!
There is no such thing as an international patent! 18

19. Paris Convention (1883) Concept of Priority (art. 4)
„Any person who has duly filed an application for a patent ... In one of the countris of the Union,... shall enjoy, for the purpose of filing in the other countries, a right of priority of months
First filing = priority date
(IT)
12 months
JPO US
EPO
Filing date <> priority date

20. Patent Cooperation Agreement PCT
PCT outputs an:
- Search Report
- Written OPINIONs on patentability (not patent !!)
Search report
Written opinion
Report on patentability
Filing
17/18 mesi
28 mesi
30/31 months

21. PCT vs EPO PCT ends with an opinion EPO ends with a grant/refusal
The „filing and examination“ costs are comparable
PCT: the applicant has 30/31 months after the priority date in order to decide whether a nations application has to be filed.
More time.
In the „not PCT “ filing procedure, (i.e. EPO; US JP) the applicant has 12 months from the priority date
Less Time.

22. Further proceedings before the EPO Appeal procedure
Agenda
Procedure up to grant
Further proceedings before the EPO
Appeal procedure 22

23. Procedures before the EPO
Board of Appeal
EXAMINATION
grant of a European patent
refusal
APPEAL
European Patent Office
maintenance
revocation
OPPOSITION
limitation
revocation
1. Instance
2. Instance
Limitation, revocation:
after limitation proceedings, there is no new 9month opposition time limit. if limitation and opposition requests coexist, oppo gets precedence. if revocation and oppo requests coexist, then the revocation gets precedence (and then oppo if the revocation request is rejected).
so, only in the case that the patent is limited and the amended spec published within 9 months can a limited patent be opposed. this is apparently a rare case in which dg5 should be consulted because Art 99 says the patent as granted can be opposed...
validation in EPO member states
national patents
national courts
nullity/ infringement proceedings
national law
national bodies

24. Examination and Opposition
Examination Grant of a European patent or refusal of the
procedure: application
Responsible: Examining division
Party: the applicant / inventor (ex parte)
Opposition Review of the patent granted; may be revoked
procedure: or confirmed (even if in an amended form)
Responsible: Opposition division
Parties: the patent proprietor
at least one opponent (inter partes)
2 different sets of people
opposition division cannot be the same of examining division: why?
see next slide 24

25. Opposition Division Article 19 EPC
Shall consist of three technically qualified examiners, at least two of whom shall not have taken part in the proceedings for grant of the patent
An examiner who has taken part in the proceedings for the grant of the European patent may not be the chairman
Before a decision is taken on the opposition, the Opposition Division may entrust the examination of the opposition to one of its members
Oral proceedings shall be before the Opposition Division itself
May be be enlarged by the addition of a legally qualified examiner who shall not have taken part in the proceedings for grant of the patent
In the event of parity of votes, the vote of the chairman of the Opposition Division shall be decisive

26. Limitation and Revocation
Limitation Limit the scope of a patent which has been
procedure: granted
Responsible: Examining Division
Party: Patent proprietor (ex parte)
Revocation Revoke patent in its entirety as of as soon as
procedure: possible
Responsible: Examining Division
Party: Patent Proprietor (ex parte) 26

27. Further proceedings before the EPO Appeal procedure
Agenda
Procedure up to grant
Further proceedings before the EPO
Appeal procedure 27

28. Prerequisite for Appeals
a decision of a Receiving Section, Examining Division, Opposition Division or Legal Division
which is a decision with an adverse effect
Examples of appealable decisions:
a decision of the Examining Division to refuse an application
a decision of the Opposition Division
Examples of non-decisions:
application deemed to be withdrawn
search report / non-establishment of search report (Rule 63 EPC) 28

29. Appealable Decision: Examination
Request of the applicant:
Decision:
a patent be granted
"application is refused"
is appealable
Request of the applicant:
Decision:
a patent be granted
"a patent is granted"
not appealable 29

30. Appealable Decision: Opposition
Request of the opponent:
Request of the proprietor:
Decision of the Opposition Division:
the patent be revoked
the patent be maintained as granted
"The patent is ...
opponent
proprietor
... maintained as granted"
... revoked"
... maintained in an amended form"
Note: both proprietor and opponent are party to any appeal

31. Appeal
What to do:
two months after the appealable decision was notified:
file notice of appeal (Rule 99 EPC)
pay the appeal fee
four months after the appealable decision was notified :
file the statement of grounds for the appeal

32. Processing the Appeal is the appeal admissible is the appeal allowable
decision on the appeal
Admissible!
Allowable!
Decision

33. If not, the appeal is inadmissible
Admissibility:
was the notice of appeal filed (2 months)?
was the appeal fee paid (2 months)?
were the grounds of appeal filed in time (4 months)?
If not, the appeal is inadmissible
the decision under appeal will have legal effect
Allowability:
is the appeal well founded (possibly after amendments)?
If not, the appeal is dismissed (not allowable)
the decision under appeal will have legal effect

34. Decision on the Appeal:
the decision under appeal is set aside by the BoA
the case is returned to the department of first instance with the order to:
e.g. grant a patent
e.g. further prosecution
e.g. request to search more prior art (examination only!)
(other)

35. Two Instances - Example
The appellant (applicant or proprietor) is considered to have the right to two instances.
responsible
division
appellant
Board
of Appeal
“added
subject-matter"
files appeal
“no added
subject-matter"
checks:
novelty,
inventive Step
check novelty,
inventive step!
remit:
“not novel"
files appeal
(...)

36. Two Instances - Example
The appellant (applicant or proprietor) is considered to have the right to two instances.
responsible
division
appellant
Board
of Appeal
“added
subject-Matter"
e.g. obiter dictum:
"also
not novel"
files appeal
“no added
subject-matter"
“novelty (y/n)"
decides:

37. Any Questions?
Thank you
for your attention! 37 37

38. Further information Patent teaching kit
Designed for use by university lecturers, it contains presentations, teachers' notes, background information, real-world examples and case studies - everything lecturers need to provide students with a comprehensive introduction to the patent system, including information on how to file patent applications and search for existing patents.
free of charge (download or hard copy)
core modules: - an introduction for students of science, engineering and business administration
- an introduction for law students
sub-modules:
- searching for existing patents - how to use the database
- the use of patents by a university spin off
-understanding patent claims: 7 case studies 38 38

39. Further information (download)
Brochures by the WIPO:
Brochures by the EPO:
European patents and the grant procedure
Inventing the future -
An introduction to patents for SMEs
Part 1: How to get a European patent
Part 2: PCT procedure before the EPO – "Euro-PCT"
Secrets of Intellectual Property: A Guide for Small and Medium-sized Exporters
WIPO:
EPO: 39 39

40. Further information (download)
EPO: Patent information: Adding certainty to your patent, legal and business decisions
EPO: Guide for beginners to the service. In six easy steps it shows newcomers to how to perform simple searches.
EPO:
EPO: These guides explain how to use online European patent register, online public file inspection, alert service. 40 40