Outline of the procedure before the EPO

Search Procedure: upon receipt of the European search report

The European search report is issued around 6-9 months after filing, and contains the documents cited by the Examiner, relevant for the patentability of the subject-matter claimed in the application, as well as a written opinion of the Examiner on the patentability of the invention. Even if it is not mandatory to file a response to this European search report, it is advisable to do so, in order to accelerate the examination procedure.

Examination Procedure

At the latest six months after the mention of the publication of the European search report in the European patent bulletin, the request for substantive examination has to be filed and the corresponding examination fee has to be paid. If no priority is claimed, this publication takes places 18 months after the filing date. In case a priority is claimed, the publication takes place about 18 months after the earliest priority date. The designation fee for all designation states has to be paid within the same time limit. An extension fee for each extension state and a validation fee for each validation state   can also be paid if desired within the same time limit. A first office action is then issued by the Examiner. The applicant is given a four month time limit (extendable once by two months) to file a response thereto (arguments and/or amendments to the application documents).

Grant Procedure

After the end of the examination procedure, the European Patent Office issues the application documents it intends to grant, called Druckexemplar. The applicant is given four months to pay the fee for grant and printing and to file a translation of the claims only in the other two official languages of the European Patent Office (French and German if the prosecution is in English).

Validation

After grant, the European patent is split in national patents. The national offices do not examine the patent, however a validation step is required in most of the countries. This is why, once the European patent is granted, it is necessary to validate it in the designated countries of interest.
This validation step most often requires the filing of a translation in the national language of all or part of the patent and the payment of a national fee.
Since the London agreement, the validation step is reduced for several countries, among which France and Germany (see our detailed list and specific requirements) where the translation is no more required.

Translation requirements after grant can be found here :  www.epo.org/law-practice/legal-texts/html/natlaw/en/iv/index.htm

Renewal fees

The maintenance fees (annuities or renewal fees) are due from the 3rd one (at the latest on the last day of the anniversary month of the filing date of the application before EPO). They are payable 3 months before the due date.

The omission of payment can be overcome if the renewal fee is paid during an additionnal grace period of 6 months (e.g: for an application filing date at the 31st of March, the grace period runs from the 1st of April to the 30th of September). The European Patent Office usually sends a notification of warning before forfeiture approximately four months before the end of the grace period.
If the renewal fee remains unpaid at the end of the grace period, the European Patent Office sends a notification indicating that the patent application shall be deemed to be withdrawn if the annuity with fine is not paid in due time.

After grant, the fees have to be paid before the national offices. For example, for a European patent application filed on 15/05/2006, and granted on 15/01/2009, the 4th renewal fee, due on 31/05/2009, should be paid before the national offices.

Opposition

During a 9-month period from the publication of the grant, third parties may file an opposition. See more details on our web page : “The Oppostion in the European patent procedure”. During the opposition, the renewal fees are still due before the national offices.
In case the European patent is maintained in amended form as a result of the opposition proceedings, validation steps are to be accomplished again before the national offices in the same way as after grant.

Limitation and revocation

According to Article 105a of EPC 2000, the patentee has the possibility to file a request for limitation or revocation before the EPO.

Extension, designation and validation states of a European patent

  • Date of entrance and applicability of the accession of new member states to the EPC since 2000 : www.epo.org/about-us/foundation/member-states.html
  • Only European patent applications filed on or after the date of entry into force may designate the new member states. No retroactive designation is possible.
  • Only PCT applications filed on or after the date of entrance, which designate European Patent, will include the new EPC contracting states.
  • It has to be noted that SI, RO, HR and MK were extension states. The extension system will continue to apply to all EP and PCT applications filed prior the date of entrance with regard to these states.

Recordals before the European Patent Office

To record a change of name or legal form or address , we only need to know the new name, legal form and/or address to be recorded.

To record an assignment, we have to file an application for the registration of this entry, together with copy of the agreement, which must bear the signatures of both parties ; and a translation of the agreement into the language of the proceedings.

A recordal can be filed before the EPO until the end of the time limit for filing an opposition or until the end of the opposition if any. The registration receipts are received about two weeks after the filing of the request.

After that, recordals have to be done before the national offices. For some countries, it is even advisable to record the change before the national office as from the granting (for example for France).

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