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The EPOand the Procedures
Edoardo PastorePatent Examiner, Cluster ComputersEuropean Patent Office
Torino, 13-14 October 2011
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The presentation and in particular the treatment of the examples reflects the personal opinion of the authors and does in no means prejudice any Examination Division or Opposition Division working on related applications.
Disclaimer:
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EP
IT NOFI
TR
RO
DE
How to obtain patent protection in Europe?
separate procedures for each state
procedures differ according to national law
one application filed at one office for up to 40 states
one procedure applicant selects the desired states one European patent
for up to 40 states results in a bundle of national patents
IT UKDE
DE IT UK
2. The regional route: European Patent Convention
1. The national route
There is no such thing (y
et)
as an EU-patent!
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Example: the European granting procedure
searchsearch publicationpublication examinationexamination grantgrant
NOIE
ROyy
IT
DE
FI
CZ
nationalvalidationnationalvalidation
48 - 600 18 months 24
withdraw?
application filed
opposition period starts
the invention becomes visible to the competitors!
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How does it work with society?
inventor public
represents the public
checks if the invention is disclosed
exclusive rights for (max.) 20 years
discloses how the invention works
issues certificate of exclusive right (patent)
gene
rate
sle
gal c
erta
inty
procedure up to grant
office
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The European granting procedure
searchsearch publicationpublication examinationexamination grantgrant
48 - 600 18 months 24
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filingfiling
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Filing a divisional application
Europeanpatent
applicationDivisional
Europeanpatent
applicationParent
conditions!
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NPOsNPO
EPO
The Hague
Berlin
Munich
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The European granting procedure
searchsearch publicationpublication examinationexamination grantgrant
48 - 600 18 months 24
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filingfiling
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Examination
inventor office public
examination
decision:grant orrefusal
third partyobservation
file inspection
requests
objections
amendments
sends decision publishes decision
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Examining Division
Article 18 EPC
• Responsible for the examination of European patent applications
• Shall consist of three technically qualified examiners
• Examination, as a general rule, entrusted to one member of the Examining Division
• Oral proceedings shall be before the Examining Division itself
• If the Examining Division considers that the nature of the decision so requires, it shall be enlarged by the addition of a legally qualified examiner
• In the event of parity of votes, the vote of the chairman of the Examining Division shall be decisive
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Number of staff in 2010
• almost 4000 patent examiners
• working in
• directorates (25-35 examiners)
• technical fields (e.g. G06Q /EC)
Munich 3 727
The Hague 2 661
Berlin 277
Vienna 108
Brussels 5
Total 6 778
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Staff from 31 different countries (2009)
Country Number of staffAT Austria 237
BE Belgium 359
BG Bulgaria 35
CH Switzerland 74
CY Cyprus 8
CZ Czech Republic 20
ES Spain 447
DE Germany 1 851
DK Denmark 75
EE Estonia 7
FI Finland 49
FR France 1 225
GB United Kingdom 507
GR Greece 165
HU Hungary 29
IE Ireland 82
HR Croatia 2
Country Number of staff
IT Italy 507
LT Lithuania 4
LU Luxembourg 69
LV Latvia 5
MT Malta 2
NL Netherlands 609
SE Sweden 125
PL Poland 62
PT Portugal 87
RO Romania 115
SI Slovenia 14
SK Slovakia 15
TR Turkey 29
Others 2
Total 6 818
IS Iceland 1
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Grant of a patent
Positive outcome of the examination procedure(Rule 71(3) EPC)
intention to grant a patent version of the patent (e.g. which claims) invitation to pay fees for grant and printing invitation to submit translation of claims
Decision to grant a European patent(Rule 71(11) EPC)
fees for grant and printing paid translations submitted
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Cost of a European patent up to grant
patent office fees*: 5000 EUR
attorney fees*: 10000 EUR
translations*: 3000 EUR
Germanpatent
Europeanpatent
* estimated cost Actual cost depends very much on the specifics of the individual case.
4 types of cost:
renewal fees: from 3rd year on
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How to obtain patent protection in Europe/ worldwide?
3. The international route: Patent Cooperation Treaty (PCT)
just one application for up to 144 countries (June 2011)
harmonisation of formal standards for a patent application: language, patent agent, fees etc.
PCT offers an international search report and an opinion.
After 30 - 31 months, the applicant has to decide if he wants to proceed with the patent examination proceedings in one or more jurisdictions.(cost implications)
PCT
IN
US
AU
GB
CN
There is no such thing
as an international patent!
Concept of Priority (art. 4)
„Any person who has duly filed an application for a patent ... In one of the countris of the Union,... shall enjoy, for the purpose of filing in the other countries, a right of priority of ....12 months
First filing = priority date(IT)
EPOFiling date <> priority date
12 months
US JPO
Paris Convention (1883)
Patent Cooperation AgreementPCT
PCT outputs an:- Search Report- Written OPINIONs on patentability (not patent !!)
Filing
17/18 mesi
Search report Written opinion
28 mesi
Report on patentability
30/31 months
PCT vs EPO
PCT ends with an opinion EPO ends with a grant/refusal
The „filing and examination“ costs are comparable
PCT: the applicant has 30/31 months after the priority date in order to decide whether a nations application has to be filed.
More time.
In the „not PCT “ filing procedure, (i.e. EPO; US JP) the applicant has 12 months from the priority date
Less Time.
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Procedures before the EPO
EXAMINATION
grant of a European
patent
refusal
1. Instance 2. Instance
Eur
opea
n P
aten
t Offi
ce
revocation
maintenance revocation
OPPOSITIONAPPEAL
national courts
nullity/ infringement proceedings
national law
natio
nal
bod
ies
validation in EPO member states
national patents
Board of Appeal
limitation
Opposition Review of the patent granted; may be revokedprocedure: or confirmed (even if in an amended form)
Responsible: Opposition divisionParties: the patent proprietor
at least one opponent (inter partes)
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Examination and Opposition
Examination Grant of a European patent or refusal of theprocedure: application
Responsible: Examining divisionParty: the applicant / inventor (ex parte)
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Opposition Division
Article 19 EPC• Shall consist of three technically qualified examiners, at least two of
whom shall not have taken part in the proceedings for grant of the patent
• An examiner who has taken part in the proceedings for the grant of the European patent may not be the chairman
• Before a decision is taken on the opposition, the Opposition Division may entrust the examination of the opposition to one of its members
• Oral proceedings shall be before the Opposition Division itself• May be be enlarged by the addition of a legally qualified examiner who
shall not have taken part in the proceedings for grant of the patent• In the event of parity of votes, the vote of the chairman of the
Opposition Division shall be decisive
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Limitation and Revocation
Limitation Limit the scope of a patent which has beenprocedure: granted
Responsible: Examining DivisionParty: Patent proprietor (ex parte)
Revocation Revoke patent in its entirety as of as soon asprocedure: possible
Responsible: Examining DivisionParty: Patent Proprietor (ex parte)
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Prerequisite for Appeals
• a decision of a Receiving Section, Examining Division, Opposition Division or Legal Division
• which is a decision with an adverse effect
Examples of appealable decisions:
• a decision of the Examining Division to refuse an application
• a decision of the Opposition Division
Examples of non-decisions:
• application deemed to be withdrawn
• search report / non-establishment of search report (Rule 63 EPC)
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Appealable Decision: Examination
Request of the applicant:
Decision:
a patent be granted
is appealable"application is refused"
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not appealable
Request of the applicant:
Decision:
a patent be granted
"a patent is granted"
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Patent teaching kit
Further information
Designed for use by university lecturers, it contains presentations, teachers' notes, background information, real-world examples and case studies - everything lecturers need to provide students with a comprehensive introduction to the patent system, including information on how to file patent applications and search for existing patents.
free of charge (download or hard copy)http://www.epo.org/learning-events/materials/kit.html
core modules:- an introduction for students of science, engineering and business administration- an introduction for law students
sub-modules:- searching for existing patents - how to use the esp@cenet database - the use of patents by a university spin off-understanding patent claims: 7 case studies
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Brochures by the WIPO:
Further information (download)
Inventing the future - An introduction to patents for SMEs
Brochures by the EPO:
Part 1: How to get a European patent
Part 2: PCT procedure before the EPO – "Euro-PCT"
European patents and the grant procedure
Secrets of Intellectual Property: A Guide for Small and Medium-sized Exporters
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Further information (download)
EPO:Patent information:Adding certainty to your patent, legal and business decisions
EPO: Guide for beginners to the esp@cenet service. In six easy steps it shows newcomers to esp@cenet how to perform simple searches.
EPO: These guides explain how to use online European patent register, online public file inspection, alert service.
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