Patent Application Procedures in Europe by Dr. Ulla Allgayer Patent Attorney in Munich Germany

Europe – geographical KRAMER BARSKE SCHMIDTCHEN

Europe – political KRAMER BARSKE SCHMIDTCHEN Members of the EC Candidates

Harmonization of the Patent law KRAMER BARSKE SCHMIDTCHEN Founding of a European Patent Organisation (EPO) in 1973 with the task to facilitate the granting procedure Article 2 EPC: The European patent shall in each of the Contracting States for which it is granted, have the effect of … a national patent granted by that state.

Europe – EPO Members KRAMER BARSKE SCHMIDTCHEN 30 Contracting States: (AT, BE, BG, CH, CY, CZ, DE, DK, EE, ES, FI, FR, GB, GR, HU, IE, IS, IT, LI, LT,LU, MC, NL, PL, PT, RO, SE, SI, SK, TR) 5 Extension States: (AL, HR, LT, LV, MK)

KRAMER BARSKE SCHMIDTCHEN Inventor´s rights (e.g. employee´s inventions) for not yet filed patents; Applications by persons not having the right to the patent National Regulations Pre-administrative phase Disputes are solved by national authorities Administrative Core Phase Granting procedure; Oppositions European Patent Convention (EPC) + Implementing Regulations European Patent Office (EPO) Post-administrative phase Nullity, Infringement, European Patent as an object of property National Regulations Disputes are solved by national authorities

KRAMER BARSKE SCHMIDTCHEN Even though there are some „guidelines“ for the national courts how to interpret a European Patent in the post administrative phase, only the administrative core phase is unitary. Therefore:  Patents can be attacked most easily as long as they are in the administrative core phase with effect for all contracting states;  Transfers, name changes etc. can be easily recorded in this phase;  After grant (opposition) the effect of any measures is only national.

Obtaining Patent Protection in Europe International (PCT) Application designating EP (selection of EP contracting states not neccessary) designating one or more European countries (designation of BE, CY, FR, GR, IE, IT, MC, NL, SI leads to EP application) National Patent Application selection of states in which protection is sought upon filing EP Application selection of EP contracting states in which protection is sought not neccessary upon filing NATIONAL (INDEPENDENT) PATENTS KRAMER BARSKE SCHMIDTCHEN

The way to get a EP Patent Filing date Language: EN, DE, FR Claiming priority Priority of a previous application can only be claimed once ??? Formal Examination Search IT DE GB CH… PT KRAMER BARSKE SCHMIDTCHEN

The way to get a EP Patent Filing date Language: EN, DE, FR Claiming priority Priority of a previous application can only be claimed once ??? Search request (accelerated search possible, PACE program) Fees: Filing fee, Search fee, Claim fees (for claims more than 10) IT DE GB CH… PT KRAMER BARSKE SCHMIDTCHEN

The way to get a EP Patent Filing date (claiming priority) Publication of the Application (electronically as A1, A2) Publication of the European Search Report (together with application (A1) or separately (A3)) IT DE GB CH… PT KRAMER BARSKE SCHMIDTCHEN 18 months after priority Approx. 1 year after filing for applications with priority claim Formal Examination Search Stage European Search Report Within 6 months after publication of the Search Report: Designation of contracting states (max. 7 designation fees) Request for substantive Examination (fee for examination request; accelerated Examination possible, PACE) BEST, EESR

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When can amendments be filed? Rule 86 EPC: ( 1) Before receiving the European search report the applicant may not amend the description, claims or drawings of a European patent application except where otherwise provided. (2) After receiving the European search report and before receipt of the first communication from the Examining Division, the applicant may, of his own volition, amend the description, claims and drawings. (3) After receipt of the first communication from the Examining Division the applicant may, of his own volition, amend once the description, claims and drawings provided that the amendment is filed at the same time as the reply to the communication. No further amendment may be made without the consent of the Examining Division. Filing DateESR Examination Request 1st Office Action …further Office Action(s) R 86(1): No preliminary amendments R 86(2): amendments possible R 86(3): One amendment R 86(3): Amendments only with consent response

The way to get a EP Patent (ctnd.) Office Action(s), Response(s): Examination as to unity, clarity, novelty, inventive step … Relevant prior art: IT DE GB CH… PT KRAMER BARSKE SCHMIDTCHEN 1st Office Action about year after entering examination stage all publications prior to the priority date of the application, independent of their nature (written, orally, use) with respect to novelty additionally all EP applications having a relevant date before the relevant date (filing date or priority date) of the respective application but published afterwards and designating the same states

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The way to get a EP Patent (ctnd.) Office Action(s), Response(s): Examination as to unity, clarity, novelty, inventive step … Possibly amendments Strict handling of requirement of original disclosure Informal Interwiew with the Examiner Personally or by phone Oral proceedings Third party observations possible IT DE GB CH… PT KRAMER BARSKE SCHMIDTCHEN 1st Office Action about year after entering examination stage

KRAMER BARSKE SCHMIDTCHEN Problem solution approach for asessment of inventive step: 1.Identification of the „closest prior art“ 2.Identification of the differing features 3.Determination of the objective problem solved by these features 4.Definition of the objective object 5.Could-would approach:  Is there a document suggesting the missing features? (Can the skilled person combine these documents and arrive at the claimed solution?)  Is there any motivation for the skilled person combining these documents? (Would the skilled person combine these documents)

European Claim drafting Multiple dependent claims are allowed and favorable (count as 1 claim) Only one independent claim of same category (apparatus, method, use) two part form, reference numbers KRAMER BARSKE SCHMIDTCHEN

The way to get a EP Patent (ctnd.) Office Action(s), Response Communication under R. 51(4) EPC Applicant is informed of proposed text for grant Approval/Disapproval within usually 4 months: filing translation of claims in two EPC languages fee for grant Grant of a European Patent; mentioned in European Patent Bulletin Filing of divisional applications possible IT DE GB CH… PT KRAMER BARSKE SCHMIDTCHEN

If application is refused: Possibility of appeal Appeals are handled by the EPO Boards of Appeal  They are independent within the EPO  Two technically qualified members One legally qualified member

The way to get a EP Patent (ctnd.) Validation of the patent in one or more designated states translation of the patent specification publication fee Grant of a European Patent; mentioned in European Patent Bulletin IT DE GB CH… PT BE GB DE FI HU … SK FR NL KRAMER BARSKE SCHMIDTCHEN

Opposition Filing of an Opposition within 9 months after mention of grant (about 6%-10% of granted EP-patents): two instances (Opposition division of EPO, Boards of Appeal) can be filed by anybody; opponent position is not transferable 1,5 to 2,5 years per instance revocation/maintenance valid for all states plural oppositions by different parties are commonly trated Third party observations possible IT DE GB CH… PT KRAMER BARSKE SCHMIDTCHEN Grounds for opposition:  The subject matter of the European patent is not patentable  The invention is not disclosed in a manner sufficiently clear  Subject matter extends beyond content of application as originally filed

KRAMER BARSKE SCHMIDTCHEN Trap situation: Amendment during substantive examination This amendment turns out not to be sufficiently supported by original disclosure It cannot be kept in the claims, because this would contravene the requirement that the application must not comprise subject matter extending beyond the content of the application as originally filed It cannot be removed from the claims, because this would broaden the scope of the claims Revocation of the patent !!!

Opposition Opposition proceedings end IT DE GB CH… PT BE GB DE FI HU … SK FR NL payment of annuities nullity suits infringement suits …. KRAMER BARSKE SCHMIDTCHEN

Priority Can a priority of an application validly be claimed more than once for EP patent applications? 26. March June March 1988 FR 1 FR 2 EP 1: claim1, claim2, description EP 2: claim2, description 03. March 1988

KRAMER BARSKE SCHMIDTCHEN Priority Can a priority of an application validly be claimed more than once for EP patent applications? 26. March June March 1988 FR 1 FR 2 EP 1: claim1, claim2, description EP 2: claim2, description 03. March 1988 If priority claim is invalid: EP1 is novelty destroying for EP2 (Art. 54(2) EPC)

KRAMER BARSKE SCHMIDTCHEN T 998/99 L´Oréal: EP2 was considered not claiming validly priority of FR1 Article 87(1) EPC does not permit to claim the same priority when applying in an identical country for several applications concerning the same invention. EP2 received filing date as valid date EP1 was novelty destroying for EP2

KRAMER BARSKE SCHMIDTCHEN Soulution 26. March June 1987 FR 1 FR 2 EP 1: claim1, claim2, description EP 2: claim2, description EP: claim1, claim2, description 26. March 1988 Divisional Applications

KRAMER BARSKE SCHMIDTCHEN Embodiment 1 Embodiment 2 Embodiment 3 Embodiment 1 Embodiment 2 Embodiment 6 Embodiment 1 Embodiment 2 Embodiment 4 Embodiment 5 Embodiment 1 Embodiment 3 Embodiment 4 Embodiment 1 Embodiment 3 Embodiment 6

KRAMER BARSKE SCHMIDTCHEN Embodiment 1 Embodiment 2 Embodiment 3 Embodiment 1 Embodiment 2 Embodiment 6 Embodiment 1 Embodiment 2 Embodiment 3 Embodiment 6 Embodiment 2 Embodiment 4 Embodiment 5 Embodiment 1 Embodiment 3 Embodiment 4 Embodiment 1 Embodiment 3 Embodiment 6 Embodiment 1 Embodiment 2

KRAMER BARSKE SCHMIDTCHEN Former situation: EPO The Hague (NL)EPO Munich (DE) Formal Examination SearchSubstantive Examination Oppositions Appeals Enlarged Board of Appeal BEST and EESR

KRAMER BARSKE SCHMIDTCHEN Bring Examination and Search Together (BEST) EPO The Hague (NL)EPO Munich (DE) Formal Examination SearchSubstantive Examination X EP Y US Y CH …. Term Art. 52, 54 …

KRAMER BARSKE SCHMIDTCHEN When can amendments be filed? Rule 86 EPC: ( 1) Before receiving the European search report the applicant may not amend the description, claims or drawings of a European patent application except where otherwise provided. (2) After receiving the European search report and before receipt of the first communication from the Examining Division, the applicant may, of his own volition, amend the description, claims and drawings. (3) After receipt of the first communication from the Examining Division the applicant may, of his own volition, amend once the description, claims and drawings provided that the amendment is filed at the same time as the reply to the communication. No further amendment may be made without the consent of the Examining Division. Filing DateESR Examination Request 1st Office Action …further Office Action(s) R 86(1): No preliminary amendments R 86(2): amendments possible R 86(3): One amendment R 86(3): Amendments only with consent response

KRAMER BARSKE SCHMIDTCHEN Extended European Search Report (1.July 2005): R44a EPC (1)The European Search Report shall be accompanied by an opinion on whether the application and the invention to which it relates seem to meet the requirements of this Convention, unless a Communication under Rule 51, paragraph 2 or paragraph 4, can be issued. (2) The opinion under paragraph 1 shall not be published together with the search report. Filing Date EESR Examination Request 1st Office Action …further Office Action(s) R 86(1): No preliminary amendments R 86(2): amendments possible R 86(3): One amendment R 86(3): Amendments only with consent response EESR = ESR + „written opinion“(Content of 1st Office Action) Art. 52, 54 … X EP Y US Y CH ….