European Patent Convention
EUROPEAN PATENT CONVENTION:
European Patent Convention (EPC) is a multi-lateral treaty on which the European Patent Organisation (EPO) an independent body is instituted. The grants of European Patents in a smooth and harmonised format by way of a single application is structured on the legal framework provided by the EPC.
As on date the following countries are signatories to the EPC:
Albania, Austria, Belgium, Bulgaria, Switzerland, Cyprus, Czech Republic, Germany, Denmark,, Estonia, Spain, Finland, France, United Kingdom, Greece, Croatia, Hungary, Ireland, Iceland, Italy, Liechtenstein, Lithuania, Luxembourg, Latvia, Monaco, Former Yugoslav Republic of Macedonia, Malta, Netherlands, Norway, Poland, Portugal, Romania, Serbia, Sweden, Slovenia, Slovakia, San Marino, Turkey
Extension States on request which recognised EPOC
Bosnia and Herzegovina ,Montenegro
EPO is headquartered at Munich with a branch at Hague and sub-office at Berlin. Applications may be filed at any of these offices along with the national patent offices of the designated / chosen contracting states.
Before the commencement of the EPC, applicants faced 2 pressing problems whilst seeking patent protection in Europe. The multitude of countries each with their own language, and distinct patent granting procedures meant several translations and perusals with each national office. Though the EPC does not do away with the translations requirements entirely, it affords a centralised prosecution in one chosen language amongst the designated languages until the time of grant thereby postponing translations costs.
Benefits of the EPC:
The EPC has offered the following benefits to the applicants wishing to obtain patent protection across countries in the European Union along with participating extension countries:
– Applications can be filed in one single language chosen from the designated languages which are English, German, French.
– A single application will suffice to obtain protection in all the contracting countries.
– Centralised examination by the EPO
– By way of the EPC, a European patent grant is at par with national patents granted by the contracting countries.
– By way of the EPC, a published European patent application provides provisional protection which is at par with protection accorded by the contracting states.
– Term of protection given to European patents is 20 yrs. extendible in special circumstances such as medical or plant protection product patents.
Kindly Note: National patent grant procedures are not superseded by the European procedure.
European Patent Convention’s ratifies other international treaties / conventions such as:
Paris Convention, WTO-TRIPS, PCT
Applicants to the EPC:
European patent application can be filed by any natural or legal person or a body corporate. It can be filed either by joint applicants or by two or more applicants designating different contracting states.
European Patent Convention’s procedures for grant of patents:
Applicants can choose from the following to obtain patent protection by way of EPC:
- The European Route – wherein the entire procedure of patent grants is overseen and administered by the European Patent Office.
- The Euro – Pct Route – wherein the international phase is subjected to the PCT procedure whereas, the regional phase before the EPO as designated or elected office is governed primarily by the EPC.
The whole procedure before the EPO is conducted in one of the three official languages English, French, German, the language as used in the application. Translated documents should be filed within prescribed time limit else, the patent application shall be deemed withdrawn.
The applicant encounters translation requirements to be furnished to national patent offices of each contracting state post patent grant as per requirements stipulated in the national laws.
Selection of Signatory Countries to the EPC:
Applicants may, select all the signatory countries to the EPC by way of designating the same in the application and then paying fees to the EPO as regards the countries selected. Similarly, patent protection is extended to such states which are not part to the EPC, yet deemed extension states.
Filing Steps & General Precautions by the Applicants for the Request for grants of Patents with the EPO :
- Request for Grant : the application shall be filed on form 1001 which the applicants may download from the EPO website. Our Attorneys are entitled to represent before the EPO, are at hand to assist you in filing of the applications with the EPO and well versed with all the languages used by the EPO.
- Designation of the Inventor : Unless the inventor waives his right of designation within the prescribed time in advance of the publication, Applicants must mandatorily designate the inventor on the application which will be reflected in the :
– Published European patent application
– European patent specification
– Register of European Patents
– European Patent Bulletin
If the Inventor is not designated at the time of filing of the European patent application, applicants will have to remedy this deficiency within 16 months from the date of filing of the applicaton or the earliest priority date and in any event no later than 5 weeks prio to the intended date of publication of the application . If this mandatory requirement is not complied with within the timelines mentioned, the application is refused registration.
- Claiming Priority : Since the Paris Convention is ratified by the EPC, applicants may claim priority in such applications originating from signatory countries to the Paris convention. However, this claim of priority is applicable only to the same invention and priority is to be claimed within 12 months of the first date of filing of the application.
Applicants must supply priority documents along with complete declaration of priority no later than 16 months from the date of earliest date of priority. Remedies to priority documentation will have to be complied with within the prescribed time lines else, applicants run the risk of losing priority.
Priority documentation not being in one of the official languages of the EPO has to be remedied with appropriate translations within the prescribed timelines.
- The Reference Number : relevant reference numbers must be mentioned in the subsequent patent applications while requesting grant of patent with the EPO. If the reference application that is to be attached along with the request for grant of patent is not in one of the official languages, appropriate translations have to be provided by the applicant.
- Invention Documentation : Applicants have to ensure:
– Adequately clear and complete disclosure of the invention to enable a person skilled in the art to carry out the invention.
– Amendments do not go beyond the disclosure of the invention.
– Unity of Invention exists for the patent application to relate to a single invention only or to a group of inventions so linked as to form a single general inventive concept.
- Biotechnological Inventions : such as nucleotides and amino acids sequencing descriptions must comply with prescribed WIPO standards and must be filed both on paper and on an electronic medium. Our Attorneys are at hand to help applicants with the EPO’s PATENTIN software used in presenting these applications in the standardised format which is mandatory, non compliance with this format will invalidate the invention from registration.
Applicants should also note that such biological material has to be deposited with a recognised depositary institution per the Budapest Treaty on the deposit of Microorganisms, no later than the filing date. Our Attorneys are at hand to assist applicants with the deposits and compliances thereof.
- Claims : inventions should be clearly defined in terms of the technical features therein by way of claims and should not contain more than one independent claim. Independent and Dependent claims together should not exceed 15 in number. Else, applicants will incur stipulated fee per additional claim.
- Drawings : should be clear and not contain matter in text unless absolutely so required. Flow sheets and diagrams are considered as drawings.
- Abstract : should be clear, concise and a precise summary of 150 words, which ensures efficient searching in the particular technical field.
- Prohibited Matter : should not be reflected anywhere in any of the documentation pertaining to the European patent application.
Examination and Grant procedures by the EPO:
Examination by the EPO consists of 2 steps:
- Formalities Examination and a Mandatory Search – comprising of an examination on filing, formalities examination, preparation of the examination search report and a preliminary opinion on the patentability, and publication of the application and the search report.
- Substantive Examination – is undertaken by way of a request from the applicant and comprises of substantive examination and grant. Examiner interacts with the applicant or his representative during the substantive examination before proceeding to grant the application.
- Opposition : once the patent is granted, within 9 months of the publication of the patent, interested 3rd parties may oppose the patent grant, and the procedures pertaining to opposition proceedings are dealt with as per national laws of the signatory countries.
- Renewals and Maintenance : timely payments towards renewals and maintenance calculated from the date of filing of the patent application is essential to ensure that the patent is alive and does not lapse.