Introduction To European Patents

What is a European patent?


A European patent is, in essence, a single unitary patent application that simultaneously covers many European states during the examination process. After grant of the patent, it splits up into a bundle of separate national patents.

The European Patent Office (“EPO”) administers and grants European patents in accordance with the European Patent Convention (“EPC”). The list below shows the current 38 contracting states of the EPC, which includes all countries of the European Union, as well as those that are not in the EU, such as Switzerland, Norway and Turkey.

Albania Denmark Hungary Monaco Serbia
Austria Estonia Ireland Republic of Macedonia Sweden
Belgium Spain Iceland Malta Slovenia
Bulgaria Finland Italy Netherlands Slovakia
Switzerland France Liechtenstein Norway San Marino
Cyprus United Kingdom Lithuania Poland Turkey
Czech Republic Greece Luxembourg Portugal
Germany Croatia Latvia Romania

How is a European application filed?


The European application can be filed electronically using specialised software available at the EPO website. Alternatively, the application can be filed by fax, by post or in person at any one of the EPO offices in Munich, Berlin or The Hague, or at a national office of a contracting state.

Who can file a European application?


Anyone can file a European application. If your principal place of business is not in a European contracting state, you will need to appoint a European professional representative, such as our firm.

When should I file a European patent?


We strongly recommend early patent filing. The filing date of a patent application is very important.

You must file a European application (or a patent application in any country that is a signatory of the Paris Convention (see below) before you disclose any aspect of your invention or sell products that implement the invention. You will likely be precluded from obtaining patent protection for your invention if you disclose it before a patent application is filed. We can advise on how to best safeguard your invention from such disclosure.

If you have already filed a patent application at another patent office, you can file a European patent application based on that earlier application, provided you do so within a year. This procedure, so-called “claiming priority”, is available when the earlier application was filed in any country which is a signatory to the Paris Convention for the Protection of Industrial Property, thereby allowing for patent protection simultaneously in the signatory countries. The vast majority of countries are now signatories.

If you have missed the one-year period for “claiming priority”, a European patent application can be filed within 14 months of the earlier application, under certain limited circumstances. We can advise whether these limited circumstances may apply.

A European application may also be based on an international patent application (filed in accordance with the Patent Cooperation Treaty). Any European application based on an international application should be filed within 31 months of the earliest priority date of your international application. If you have missed this 31-month deadline, you may be able to file the European application late – we can advise whether this is possible.

If you filed an international patent application and wish to take this forward in any of Belgium, Cyprus, France, Greece, Ireland, Italy, Latvia, Monaco, Malta, the Netherlands and Slovenia, it will be necessary to file a European patent application. These European states do not allow national phase patent applications based on an international filing.

What information / documentation do I need for a European patent application?


First and foremost, you need a ‘specification’ describing your invention. The specification forms the core of your European patent application. Patent specifications must comply with a number of strict legal requirements, but the main requirement is a detailed technical description of how your invention works. The level of detail must be enough for a typical person working in the same technical field to be able to put the invention into effect. Drawings and figures that complement the description of your invention are recommended.

We strongly recommend that you instruct a registered European Patent Attorney to handle the preparation of your patent specifications. We can, of course, handle this and will advise you on other requirements. There are many benefits in the proper drafting of a specification before it is filed, since it can be difficult to remedy problems encountered during the subsequent examination process. Since we specialise in drafting specifications, we can help you avoid such pitfalls.

The specification can be filed in any language, but a translation into any one of the official languages of English, French or German will need to be provided shortly after filing.

As part of the application, you will also need to provide details regarding the applicant and any inventors, and, if priority is claimed, details of the priority application together with a certified copy of it. However, Powers of Attorney and assignments (transferring rights from the inventor to the applicant) are typically not required. We will assist in collecting all the necessary information and documentation when filing an application.

What are the various steps in the procedure of a European application?


The EPO will publish the European application around 18 months from the application date (or the priority date, if applicable).

After filing, the EPO will search for any relevant prior art relating to your invention, and issue a search report, together with their opinion on the patentability of the invention. The time the EPO takes to issue the search report can vary, depending on their workload.

Once completed, the search report is published, and this sets a six month deadline by which to request examination and pay various fees, which gives you an opportunity to assess any publications identified in the search report, and consider what sort of patent protection will ultimately be available.

Once examination is requested, the EPO will then examine the patent application to ensure it meets various criteria such as novelty and inventive step, and issue at least one examination report if they have any such substantive objections. Your European patent attorney will respond to the examination reports after seeking your instructions.

Once the EPO is satisfied that the application meets all patentability criteria, they will issue a notice of allowance.

After this point, the so-called “validation” procedure of the European patent is straightforward. After grant of the European patent, it can be made effective in each country of interest (i.e. in each contracting state of the European Patent Convention). This validation normally involves at least appointing an address for service in the chosen countries and filing translations of the granted patent in certain countries. After grant of a European patent, annual renewal fees are then payable to the national patent offices of the chosen countries instead of to the EPO.

We provide cost estimates for validation in the various European countries, and the decision about which countries to choose is normally deferred until the EPO has agreed that a European patent can be granted.

Grant of the European patent also starts a nine month period during which any third party can file an opposition against your patent. This procedure is explained in further detail below.

Alternatively, if the EPO considers that you have not overcome all objections during examination, they will refuse the application. However, the EPO provides you with an opportunity to appeal any refusal. This procedure is explained in further detail below.

What is an opposition?


The European patent system provides third parties with an opportunity to have a say in the patenting procedure in a process called “opposition”.

After the examination process concludes and a patent is granted, for a nine month period following grant, any third party can file an opposition. An opposition can only be based on a limited set of grounds, and gives a third party an opportunity to raise their own views as to why the patent should not have been granted, such as that it lacks key patentability criteria such as novelty and inventive step.

The European patent office considers submissions from both the patentee and the third party, and, if necessary, holds a hearing. The outcome may be that the patent is upheld in its granted form, upheld in amended form, or revoked in its entirety.

Once this nine month period passes, in essence the EPO plays no further part in validity of the European patent. Should any third party wish to contest the validity of a European patent, they can only apply to revoke a patent on a country by country basis; this may change once the proposed new Unitary Patent and Unified Patent Court comes into force (likely to be in 2015 or 2016).

What if my application is refused by the EPO?


If the examiner does not consider that you have overcome all objections during examination, the application will be refused.

However, any decision to refuse may be appealed before the EPO Board of Appeal, who will then assess your appeal.

If the Board deems your appeal is well-founded, it will set aside the examiner’s refusal, thereby continuing examination (and usually pushing the application closer towards grant). However, if the Board deems your appeal to be without merit, the original decision to refuse is upheld.

What are the costs associated with European applications?


There are costs for filing a European application, including any costs for drafting the specification of an application, where necessary. There are also costs for associated with requesting examination and designating EPC contracting states.

The cost of prosecuting the application through to grant of a European patent will vary, and essentially depends on how difficult it is to deal with the EPO’s objections.

Please note the EPO charges very substantial fees where your application contains more than 15 claims. We can assist in reviewing claims to minimise these fees.

A yearly renewal fee must be paid to the EPO for the third and subsequent years after the application is filed, in order to maintain the application. After grant, any future renewal fees are no longer payable to the EPO; instead, they will need to be paid at the national patent offices in each state where the granted patent was validated.

The cost of validating the European patent can vary substantially, and it primarily depends on whether translations are required by the country of interest.

We can provide detailed estimates for any of the costs above upon request.

How long does it take for a European patent to grant?


The European Patent Office’s examination of an application usually takes several years, but this can vary significantly from case to case.

The EPO issues as many examination reports as it deems necessary, and there is no set pattern governing how long its takes for an examination report to issue. We have obtained granted European patents in as little as two years, but there are examples where the process has taken as long as ten years or even more. We can influence this time period, because the EPO provides the option of accelerating examination of any patent application under a procedure called “PACE”. Under this procedure, we expect most applications to grant within three or four years.

The EPO also is involved in the Patent Prosecution Highway (PPH) Pilot Scheme. Under this scheme, examination may be accelerated by basing the European application on an equivalent patent granted by another patent office participating in the scheme, such as those of Japan or the US.

We can advise whether PPH is suitable for your European application.

I have another question, but I can’t see the answer here. Can you help me?


Yes, of course. Please speak to your regular contact at A.A. Thornton & Co., who will be more than happy to answer any questions you have. Alternatively, please call our reception staff, who can direct your enquiry appropriately. The EPO website also provides further information relating to European patents.