EUROPEAN PATENT APPLICATION

Procedure of a European Patent Application

Our firm represents clients before the European Patent Office in filing and prosecution of the European patent applications as well as in post grant opposition proceedings. Grant procedures of European patent applications are governed by the European Patent Convention (EPC), and are also subject to the procedural steps as outlined in a simplified manner within the following scheme.

 

A European patent confers exclusive rights for a duration of 20-years, with respect to the claimed technology, to the patentee in the EPC contracting states. There are currently 38 member states, namely; Albania (AL), Austria (AT), Belgium (BE), Bulgaria (BG), Switzerland (CH), South Cyprus (CY), Czech Republic (CZ), Germany (DE), Denmark (DK), Estonia (EE), Spain (ES), Finland (FI), France (FR), United Kingdom (GB), Greece (GR), Croatia (HR), Hungary (HU), Ireland (IE), Iceland (IS), Italy (IT), Liechtenstein (LI), Lithuania (LT), Luxembourg (LU), Latvia (LV), Monaco (MC), Macedonia (MK), Malta (MT), Netherlands (NL), Norway (NO), Poland (PL), Portugal (PT), Romania (RO), Serbia (RS), Sweden (SE), Slovenia (Sl), Slovakia (SK), San Marino (SM), and Turkey (TR).

Filing & Costs of a European Patent Application

Official fees: EUR-1.430.00 (Search fee & filing fee: due within one month from filing)

Possible additional fees: Additional fees apply if the number of claims exceeds 15 and number of pages exceeds 35.

Requirements of a European patent application:
Applicants should normally supply the following items in order to meet the basic requirements prescribed by the law (Art. 78 EPC):

  • a request for the grant of a European patent,
  • a description of the invention,
  • one or more claims,
  • any drawings referred to in the description or claims,
  • an abstract,
  • payment of the official fees.


Minimum Requirements for obtaining a filing date

The new provisions of EPC2000 are more liberated as compared to the previous version, which makes now possible recordal of a filing date with minimum requirements mentioned below (Rule 40 EPC).
•    an indication that a European patent is sought,
•    information identifying the applicant or allowing the applicant to be contacted; and
•    a description or reference to a previously filed application.

The above acts can be performed by the applicant himself irrespective of his nationality or country of residence. However, an applicant who is not a citizen or resident of an EPC state must be presented by a Professional representative after filing the application.

Filing Language

Official languages of the EPO are English, French and German. However, European applications can be filed in any language provided that a translation is filed within two months from the filing date.

Examination stage

Official fees: EUR-2.220,00 (Examination fee & designation fee: due within 6 months after publication of the application)

Additional Requirements: Applicant must also respond to the Extended European Search Report within the aforesaid 6-months period if such report contains a negative opinion concerning deficiencies in the application.

Grant stage

Official fees: EUR-915,00

Additional requirements: Translation of the claims in two other official languages of the EPO is required.

Validation stage

A European patent normally takes effect in EPC member states upon a validation procedures which generally involve payment of the prescribed fees and filing of a translation of the specification in an official language of the concerned state within three months after mention of the grant in the European Patent Bulletin. It should be noted that this term is 6-months for Ireland. However, some states have already dispensed with this translation requirement partly or entirely in frame of the London Agreement which aims at reducing the translation costs incurred by the applicant. The states dispensing with translation requirements “entirely” are France, Germany, Liechtenstein, Luxembourg, Monaco, Switzerland and United Kingdom. It should be borne in mind that validation terms are generally very strict in the contracting states where a translation is required, and cannot be remedied unless a timely request for extension of time is filed within the prescribed timelimit at the concerned national offices.  

Renewal Fees of European patent applications

European patent applications are subject to renewal fees from the third and each subsequent year calculated from the filing date of the application. A renewal fee is due on the last day of the month containing the anniversary of the date of filing of the European patent application. If the applicant fails to do so, such renewal may still be paid within an additional term of six months with surcharge.

Renewal fees falling due before publication of the mention of grant are payable to the EPO. However, applicants should pay attention to the fact that if the due date falls on or after the publication of the mention of the grant, such renewals should then be paid before the national offices where the European patent takes effect.