Transcript The European Patent Office How to file European Applications

The European Patent Office
How to file European Applications
The European Patent Grant Procedure
Presentation held at ITI-CERTH on 10.11.2010
Presenter: Dr. Benno Penzkofer; Cluster Audio/Video/Media
22/05/2016
Contents
1. The European Patent Office
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About us
What we do
Quality
Facts and figures
Milestones
2. How to file European Applications
– Formal requirements
– EPO fees
3. The European Grant Procedure
4. The seven deadly sins of the inventor
Contents
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About us
What we do
Quality
Facts and figures
Milestones
The European Patent Convention
 The European Patent Convention (EPC)
– provides the legal framework for the granting of European patents
via a centralised procedure
– establishes the European Patent Organisation
 1973 – Diplomatic Conference in Munich ► signature of the EPC by 16 countries
 1977 – Entry into force of the EPC in 7 countries -
marked as follows
Structure of the European Patent Organisation
European Patent Organisation
European Patent Office
Administrative Council
The executive body
The legislative body
 responsible for examining
European patent
applications
 made up of delegates
from the member states
 supervises the activities
of the Office
 has a specific legislative
function
38 member states
Albania • Austria • Belgium • Bulgaria •
Croatia • Cyprus • Czech Republic •
Denmark • Estonia • Finland • France •
Germany • Greece • Hungary • Iceland •
Ireland • Italy • Latvia • Liechtenstein •
Lithuania • Luxembourg • Former Yugoslav
Republic of Macedonia • Malta • Monaco •
Netherlands • Norway • Poland • Portugal •
Romania • San Marino • Serbia • Slovakia •
Slovenia • Spain • Sweden • Switzerland •
Turkey • United Kingdom
European patent applications and patents can
also be extended at the applicant's request to
the following states:
Bosnia-Herzegovina • Montenegro • Morocco
Autonomy
 Second largest intergovernmental
institution in Europe
 Not an EU institution
 Self-financing, i.e. revenue
from fees covers operating
and capital expenditure
Structure
President
Presidential area
Benoît Battistelli
Directorates-General
Operations
Thomas Hammer
(Guillaume Minnoye
as of 01.01.2011)
Operational
Support
Appeals
Administration
Peter Vermeij
Peter Messerli
Brian McGinley
Business Services
Patent Administration
Appeals
Human Resources
Search
Substantive Examination
Opposition
Quality Management
Information Management
Legal/Int. Affairs
Wim van der Eijk
(Raimund Lutz as of
01.01.2011)
Patent Information
and
European Co-operation
General Administration
Language Service
Patent Law
and
International Affairs
Legal Services
European Patent Academy
and Qualification
Number of staff in 2009
Munich
3 718
The Hague
2 710
Berlin
274
Vienna
112
Brussels
Total
4
6 818
Around 60% are
patent examiners
Staff from 31 different countries (2009)
Country
Number of staff
Country
Number of staff
AT
Austria
237
IS
Iceland
BE
Belgium
359
IT
Italy
BG
Bulgaria
35
LT
Lithuania
CH
Switzerland
74
LU
Luxembourg
CY
Cyprus
8
LV
Latvia
5
CZ
Czech Republic
20
MT
Malta
2
DE
Germany
1 851
NL
Netherlands
DK
Denmark
75
PL
Poland
62
EE
Estonia
7
PT
Portugal
87
ES
Spain
447
RO
Romania
115
FI
Finland
49
SE
Sweden
125
FR
France
1 225
SI
Slovenia
14
GB
United Kingdom
507
SK
Slovakia
15
GR
Greece
165
TR
Turkey
29
HR
Croatia
2
Others
2
HU
Hungary
29
IE
Ireland
82
Total
1
507
4
69
609
6 818
Locations
The EPO has offices at
five different locations.
Its headquarters are in Munich.
Munich
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Patent grant procedure
Appeals
Quality management
Information management
Administration
Legal services
International affairs
European co-operation
The Hague
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Patent grant procedure
Information management
Administration
Legal services
Berlin
 Patent grant procedure
 Administration
Vienna
 Patent information
 Administration
 European co-operation
Brussels
 Relations with the European
institutions and other
organisations/associations
Contents
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About us
What we do
Quality
Facts and figures
Milestones
Our role in the European patent system
 We provide patent protection in up to 40 European countries based on
a single application in one of the three official languages (German, English, French)
European patent applications can be filed:
– direct with the EPO
– via the national patent offices of the contracting states
– based on an international (PCT) application
 We are also responsible for
– limitation and revocation proceedings by patentees
– opposition proceedings by third parties
– appeal proceedings before the Boards of Appeal
Our role in the international (PCT) system
 We process international patent
applications
– we act as a receiving office for
international applications (PCT)
– we carry out international search and
preliminary examination procedures
Other services
 Free online services
– file inspection
– tracking of legal status of applications
 Free patent information services
– online access to all European patent documents (updated weekly)
– simple online searches in our database of over 70 million patent
applications
– helpdesk staffed by experts on the Japanese, Chinese and Korean
patent systems
 Training
– conferences
– workshops and seminars
– e-learning
Contents
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About us
What we do
Quality
Facts and figures
Milestones
Four key ingredients
Highly skilled
examiners
Rigorous controls and
commitment to improvement
Quality
Comprehensive
search documentation
Thorough and
consistent procedures
Highly skilled examiners
 Top-level engineers and scientists
– high degree of technical expertise
– knowledge of the EPO's three official languages
 Training during first two years
– extensive legal and procedural training
– individual coaching by experienced examiners
 Continuing professional development throughout career
Thorough and consistent procedures
 Single procedure
– the European Patent Convention provides the legal framework for the
granting of European patents
 Systematic approach
– each application is examined by a division of three technically
qualified examiners
 Review processes
– each opposition is examined by three technically qualified examiners,
at least two of whom will not have been involved in the grant proceedings
for the patent
– appeals heard by independent second-instance judiciary (Boards of Appeal)
Comprehensive search documentation
 World's largest collection of patent and non-patent literature documents,
containing more than 540 million records in over 120 databases and updated daily
 Online access to more than 6 000 journals via the EPO Virtual Library
 New tools and services such as machine translation to extend the range
of easily accessible information
 Ongoing efforts to improve the scope and quality of our documentation
Rigorous controls and commitment to improvement
 Up-to-date guidelines and instructions for examiners
 Spot-checks on search reports and patent quality
 Internal quality audits
Contents
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About us
What we do
Quality
Facts and figures
Milestones
Applications filed
55 896
Direct European filings
63 077
78 646
Euro-PCT applications
entering the
regional phase
83 567
0
90 000
2008
2009
European patents granted
51 969
2009
59 809
2008
0
64 000
Applications by residence of applicant (2009)
Technical fields with the most filings (2009)
Medical or veterinary science; hygiene
16 400
13 753
Electric communication technique
Computing
8 508
7 639
Basic electric elements
Organic chemistry
7 402
Measuring; testing
7290
Biochemistry; genetic engineering
3 853
Vehicles in general
3 809
Organic macromolecular compounds
3 681
Engineering elements
3 254
58 953
Others
Number of applications
Positive-growth technical fields (at least 500 applications filed in 2009)
36.1
Fluid-powered machines
20.4
Lighting
14.7
Drilling; mining
Aircraft; aviation;
cosmonautics
6.9
Refrigeration; heat pump
systems
Heating; ventilating
Inorganic chemistry
5.0
600
792
618
573
779
2.1
1 084
696
0.7
% growth in number of applications
2009 vs. 2008
Number of
applications
in 2009
Leading applicants and patentees in 2009
Applications
Granted European patents
2556
Philips
1943
1699
Siemens
BASF
1337
1284
1221
1020
992
969
913
893
850
827
681
672
654
653
649
630
613
607
602
600
591
585
Samsung
Bosch
LG
Panasonic
Bayer
Qualcomm
Sony
Toyota
Alcatel Lucent
Ericsson
General Electric
Huawei
Fujitsu
Honeywell
Research in Motion
Hitachi
Hoffmann-LaRoche
Thomson Licensing
Canon
Nokia
NXP
IBM
0
Bosch
Siemens
Samsung
Panasonic
Sony
BASF
Philips
Canon
Ericsson
Honda
LG
Alcatel Lucent
Toyota
Fujitsu
Hitachi
Nokia
Bayer
Research in Motion
Continental
NXP
Seiko Epson
3M
Fujifilm
Huawei
Qualcomm
624
609
509
502
401
399
394
391
366
353
298
297
295
288
273
272
263
262
261
246
218
218
205
198
197
Oppositions in 2009
Oppositions were filed against 4.7% of granted European patents.
Over one third of all opposed patents were revoked.
Opposition
rejected
Patent
revoked
26.3%
4.7%
43.6%
Oppositions
30.1%
Granted patents
Patent maintained
in amended form
Contents
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About us
What we do
Quality
Facts and figures
Milestones
The first European patent
1980
The first European patent is granted
to German systems manufacturer
Scheidt & Bachmann.
The invention relates to a device
for the temporary storage of coins
for use in ticket machines.
Trilateral co-operation
1983
The EPO and the Japanese and
US patent offices set up a programme
of trilateral co-operation which so far
has included technical standards,
new databases, document exchange
and electronic filing.
Today, these three offices receive 85%
of all applications filed worldwide.
Co-operation with the Chinese Patent Office
1985
This year sees the start of the EPO's
co-operation with the Chinese Patent
Office.
The EPO helps China to establish
a modern and effective patent system.
This includes the provision of a search
system, the training of examiners
and the exchange of databases.
Today the Chinese office is the third
largest in the world.
Patent law versus bioethics
1992
The conflict between patent law
and bioethics hits the headlines with
the grant by the EPO of the first ever
patent on a mammal (EP 169672).
Implanted with a human cancer gene,
the so-called oncomouse has an
increased disposition for developing
tumours.
Patent documents on the Internet
1998
The esp@cenet database is launched,
making patent information available to
the public via the Internet.
Today the EPO's worldwide patent
search database gives users free access
to more than 60 million patent documents
(mostly patent applications).
Opposition to stem cells
1999
The granting of the Edinburgh patent,
which relates among other things to
human embryonic stem cells, leads to
wide-spread political debate about the
boundaries of patent protection.
Online filing
2000
Thanks to the EPO's electronic
epoline service, applicants
are able for the first time to file
patent applications via the Internet.
Online fee payment and
file inspection follow.
Contents
2. How to file European Applications
Introduction
Formal requirements for European patent applications
I.
Entitlement to file a European patent application
II.
States for which a European patent application may be filed
III. Languages of European patent applications
IV. Language arrangements to assist applicants from certain states
V.
Items making up a European patent application
VI. Request for grant
VII. Designation of inventor
VIII. Claiming priority
IX. Representation
I. Entitlement to file a European patent application
 Any natural or legal person regardless of
nationality
place of residence
place of business
Applications may also be filed by
• joint applicants
• two or more applicants designating different contracting states
Where there are different applicants for different contracting states, they are
regarded as joint applicants for the purposes of proceedings before the EPO.
II. States for which a European Application may be filed
All the contracting states for which the
EPC is in force on the date of filing
A list of the EPC contracting states
is published every year in the Official
Journal of the EPO.
III. Languages of European patent applications
English  French
•
 German
Applications can also be filed in any other language
•
... provided you file a translation into one of the official
languages of the EPO within two months of filing the
application.
If you miss the date you can file the translation within two
months of the notification of the invitation.
If you miss that date again the application is deemed to
be withdrawn.
III. Languages of European patent applications
The EPO official language in which you file your application (or which
the application is translated into) is made
the language of the proceedings.
Other that for amendments to the application or the
patent, in written proceedings, any party may use any
of the EPO’s official languages.
Divisional applications must be filed in
•
•
the language of the proceedings of the parent
application
if the parent application was not filed in the
language of the proceedings, the divisional may
be filed in the language in which the patent was
filed
The Hague
Berlin
Munich
IV. Language arrangements to assist applicants from
certain contracting states
Finland is a
contracting state
Finnish and Swedish
are official languages
 20% reduction in filing and examination fees
This fee reduction also applies to the fees for
opposition  appeal  petition for review  limitation  revocation
However, within one month of filing a document subject to a time limit,
you must submit a translation into the language of the proceedings.
V. Items making up a European patent application
abstract
request for grant
description of invention
claim(s)
drawings
VI. Request for grant
The request for grant must be filed on theEPO Form 1001.
You can get the form, together with explanatory notes, from
•
•
•
•
the EPO
the national patent offices
the EPO website (download)
the EPO's Online Filing software
VII. Designation of inventor
The inventor
European patent
application
European patent
specification
will be mentioned in the
Register of
European Patents
European Patent
Bulletin
If you do not designate the inventor when you file your application
you must do so within 16 months of the filing date/date of earliest priority.
The inventor must be designated at least five weeks prior to
the intended date of publication.
Otherwise, your application will be refused.
VIII. Claiming priority
If you or your predecessor in title, have duly filed an application for a patent,
A utility model, or a utility certificate in or for such a state within the last 12 months,
you may claim priority when filing a European patent application
in respect of the same invention.
The states concerned are
• any state party to the Paris Convention for the Protection of Industrial Property
• any member of the World Trade Organization
If the earlier application was filed in or for an
EPC contracting state, you may also
designate that state in the European application.
VIII. Claiming priority
To claim priority you must
supply the priority document and the complete declaration of priority
earliest priority date
16 months later
If you do not indicate the file number or file the copy of the earlier
application within this time limit, you will be invited to remedy the
deficiency.
If you fail to do so, you will lose your right to priority.
IX. Representation
There are no geographical restrictions to prevent you filing a European
patent application
You need a representative and must act through him if
you have neither
• a residence nor
• your principal place of business
in one of the contracting states.
IX. Representation
Representation before the EPO may be undertaken only by
professional representatives who are on a list maintained by the EPO,
or by legal practitioners entitled to act before the EPO.
Where required, representatives may be authorised either by individual
authorisation or by general authorisation.
EPO Fees from 1.4.2010
Filing phase
EUR
1 295
Online applications
EUR
1 210
Examination phase
EUR
2 425
Grant phase
EUR
1 355
Total procedural fees
EUR
5 075
Online applications
EUR
4 990
Contents
3. The European Grant Procedure
Overview of European patent grant procedure (I)
Applicant
EPO
European
patent
application
Filing and
formalities
examination
Search and search
report together
with preliminary
opinion on patentability
Refusal or
withdrawal
of application
Validation in
designated
states
Substantive
examination
Grant of
European
patent
Publication of application and search report
Public
domain
Online access to application file and
legal status information
Observations by third parties possible
Publication
of patent
specification
Overview of European patent grant procedure (II)
Applicant
EPO
Refusal of
application
Substantive
examination
Grant of
European
patent
Limitation or
revocation
proceedings
Opposition
proceedings
Public
domain
Opposition by
third parties
possible
Appeal
proceedings
Contents
4. The seven deadly sins
7 deadly sins of the inventor (I)
7 deadly sins of the inventor (II)
Need more information?
www.epo.org
[email protected]
Tel. + 49 (0)89 2399 - 4636
Thank you for your attention !