The EPO and the Procedures Torino, 13-14 October 2011 Edoardo Pastore Patent Examiner, Cluster Computers European Patent Office

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

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

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

Example: the European granting procedure opposition period starts withdraw? 18 months 24 48 - 60 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 If applications are withdrawn early enough, then the application is not published.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

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

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

The European granting procedure 18 months 24 48 - 60 filing search publication examination grant 8 8

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

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

The European granting procedure 18 months 24 48 - 60 filing search publication examination grant 11 11

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

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

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

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

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

Cost of a European patent up to grant translations*: 3000 EUR 4 types of cost: attorney fees*: 10000 EUR patent office fees*: 5000 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 - 1.4.2010 filling fee: 190 EUR; 105 EUR (online filing) search fee (filed on or after 1.7.2005): 800 EUR exam fee (filed on or after 1.7.2005): 1480 EUR designation fees: 525 EUR grant fee (< 35 pages; filed on or after 1.4.2009): 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

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 30 - 31 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

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 ....12 months First filing = priority date (IT) 12 months JPO US EPO Filing date <> priority date

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

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.

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

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

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

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

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

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

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

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

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

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

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

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

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)

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 (...)

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:

Any Questions? Thank you for your attention! 37 37

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) http://www.epo.org/learning-events/materials/kit.html 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 esp@cenet database - the use of patents by a university spin off -understanding patent claims: 7 case studies http://www.epo.org/learning-events/materials/kit.html 38 38

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: http://www.wipo.int/sme/en/documents/guides/ EPO: http://www.epo.org/about-us/publications/user-guides.html http://www.epo.org/about-us/publications/procedure.html http://www.epo.org/about-us/publications/patent-information.html 39 39

Further information (download) EPO: Patent information: Adding certainty to your patent, legal and business decisions EPO: Guide for beginners to the esp@cenet service. In six easy steps it shows newcomers to esp@cenet how to perform simple searches. EPO: http://www.epo.org/about-us/publications/user-guides.html http://www.epo.org/about-us/publications/procedure.html http://www.epo.org/about-us/publications/patent-information.html EPO: These guides explain how to use online European patent register, online public file inspection, alert service. 40 40