The European prosecution begins with a filing at the European Patent Office (EPO) with the designation of the countries selected among those signatories to the Munich Convention (EPC). We approach here the major principles of such a prosecution.
Filing
The filing is a first filing or a filing under priority (namely within a 12-month period as from the priority date). It is filed in one of the three official languages : German, English or French. The designation states and the extension states may be designated at the filing. See the map of the European Patent States.
European search report
In the European search report, references are cited which are available to the European Patent Office at the date of the establishment of the report and which can be taken into account to appreciate the novelty of the invention and the inventive step.
After having received the search report, the Applicant can withdraw his application if he deems that continuing the prosecution will probably not be successful. If he decides to continue the prosecution for the granting of the patent, he has the possibility to amend the application in order to take into account the search results.
Publication of the application
The EPO notifies the Applicant of the date to which the Patent European Bulletin mentions the publication of the application and of the European search report if it is available at this date. If the search report is not available in time, it is the object of a separate publication
From the publication date, translations of claims can be filed in some countries in order to obtain a provisional protection in these countries (Article 67).
The publication is automatic within a 18-month period from the filing or priority date. The bibliographical data as well as those relating to the progress of the prosecution of the application are open to the public inspection via the patent European Register (Epoline).
Designation states and Examination
Within a 6-month period from the publication of the Search Report, the designation and extension states must be indicated, the corresponding fees must be paid.
Within the same period, the Examination request must be filed and the examination fee must be paid.
Official communications pursuant to Article 96(2) and Rule 51(2)
After that the examination report has been formulated, the EPO examines on the basis of the search report whether the European patent application and the invention which is the subject matter of it meet the conditions of the EPC, especially whether the invention is patentable.
If there are objections against the application, the Examiner entrusted to the instruction within the Examining Division invites the Applicant in a first well-founded communication to present his observations, and possibly to amend the specification, the claims and the drawings.
If after examining the response of the Applicant, the application is still not yet placed under condition to result in the granting, the examining prosecution is continued, as the case may be, by the forwarding of a new Office Action, by a telephone call or by an interview with the Examiner.
Communication pursuant to Rule 51(4) EPC
When the Examining Division demmes that the invention meets the requirements of the EPC, the Applicant is invited to file the translation of the claims in the two other Official languages and to pay the grant and printing fees.
If a priority has been claimed in a language different of the one of the European proceedings, a translation of the priority document in this language must also be filed.
The applicant may still file corrections and amendments, with their translation.
Communication pursuant to Rule 51(6) EPC
When the applicant proposed corrections and/or amendments, the EPO can refuse them by a Communication under Rule 51(6). The applicant may then file observations and/or a new set of claims, with their translation.
Decision to grant
Pursuant to Article 97(2) EPC, the decision to grant a European patent shall not take effect until the date on which the European Patent Bulletin mentions the grant.
Within a 3-month period from the day of this publication (6 months for Ireland), a translation of the patent as granted must be filed in the countries which have a language different from that of the publication, and a fee must be paid to each corresponding Office when requested.
This is named the validation: the European patent splits in as much as national patents that there are countries which have been designated for which the validation has been effectively conducted. At the same time, the annual fees will have to be paid at each national Office.
In the absence of validation in a country, the owner of the European patent has no right in this country.
In case of infringement, the competent Courts will be the Courts of each state.
Annual fees
Annual fees have to be paid to the EPO for the European patent application. These fees are due for the third year, computed from the filing date of the application and for each following year.
The payment of annual fee for the incoming year is due the last day of the month of the anniversary of the filing of the European patent application.
The payment can still be validly done within a 6-month period following the due date, if an extra fee of 10 % of the amount of the fee paid with a delay is paid within the same time limit. The EPO sends a reminder to this end to the Applicant, but the latter cannot avail himself of the omission of the sending of this reminder.
The last annual fee due for the European patent application is the one which has to be paid for the year during which the mention of the granting of the European patent is published.
Opposition procedure
Within a 9-month period from the date of the publication of the granting of the European patent, any third can form opposition to the granted European patent, at the EPO and after payment of an opposition fee.
Appeal procedure
It is possible to appeal against decisions of the filing division, of the examining division and of the opposition division. The appeal must be lodged in writing within a 2-month period (unextendable) from the date of the signification of the attacked decision and after payment of the appeal fee.
A statement indicating the grounds of appeal has to be filed in writing within a 4-month period (unextendable) from the date of the signification of the attacked decision.
Accelerated prosecution
See the Notice from the President of the European Patent Office dated 1 October 2001 concerning the programme for accelerated prosecution of European patent applications : PACE
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