- What is the European patent
- How to file a European patent application
- The grant procedure
- Keeping the European patent alive
- Duration and protection
1. What is the European patent ↑
The European patent is a patent that is valid in many states of Europe that have adhered to the European Patent Convention of which the states of the European Union and some neighboring countries are part (Albania, Bulgaria, Croatia, Island, Liechtenstein, Macedonia, Monaco, Norway, San Marino, Serbia, Switzerland and Turkey). The European patent is requested and obtained with a unitary procedure managed by the European Patent Office, often indicated with the English acronym EPO. The patent application can be filed immediately or within 1 year from the filing of a preceding identical national or regional patent, as can be an Italian patent application (c.d. priority). Anyone can file a European application, independently of its own residence or nationality, but he is obliged to be represented by a qualified EP Agent in case he does not have residence or nationality in one of the countries adherent to the EP convention (Contracting states). The European patent can represent an autonomous patent application or can be inserted as a regional patent inside an international patent application: in this second case we speak about Euro-PCT. Before filing a patent it is necessary to examine thoroughly the invention and choose how to file it. If you have not done it yet, we suggest you read the section Filing a patent, which gives useful advice on the matter.
When the preliminary analysis has been done carefully and, as always advised, with the help of an expert consultant in the field, the filing of the application can be done.
2. How to file a European patent application ↑
The European patent application can be filed with the EPO or with the Italian Patent and Trademark Office, which will forward it to the European Patent Office. To file a European patent application it is necessary to fill in a series of forms that are downloadable from the website of the European Patent Office, in which the applicant’s information, who will become the holder of the patent, the title of the patent, the name of the inventor and a series of other information have to be indicated.
The official languages of the EPO are English, French and German and, therefore, the application and its attachments have to be written in one of these languages, and the chosen language will be the language for the entire prosecution.
The Description, the Claims and the technical drawings have to be attached to the forms. The Description, first of all, has to highlight the technical problem that the invention wants to solve and the advantages that derive from the use of the invention. All the main technical-constructive features of the solution proposed have to be described, with the help of the drawings attached. According to the type of invention the functioning or the procedure with which a certain result is obtained will be described. The most important part of the patent are the “Claims” that have to reproduce, in a specific technical jargon, the elements on which the protection is sought. To understand the importance of the claims, it is enough to consider that in general what is described but not claimed is not object of protection. The claims are intended to be formulated in a “waterfall-like” manner in the sense that the first one is the most important one, which encloses the core of the invention, while the subsequent ones are a sort of specification of the first one.
Also technical drawings will have to be prepared in such a way as to show well which the inventive solution that wants to be protected is. Therefore, it is unadvisable to attach too much detailed constructive drawings with measures and irrelevant particulars.
In order to proceed with the filing, administrative fees and official fees will have to be paid, which vary on the basis of the type of patent. To know the official fees in force at the moment of the filing of the application, it is advisable to consult the Italian Patent and Trademark Office website.
To prepare the patent application well is as fundamental as to analyse well the invention before filing it, since on the basis of these preliminary choices the possibility of defending the patent in case of infringement is higher or lower.
3. The grant procedure of the patent ↑
Once the patent application has been filed, an application number and a filing date are obtained, and from that moment the examination of the file initiates.
European patent applications undergo a novelty search that is done directly by the European Patent Office and is forwarded to the applicant. Within 18 months from filing the application is published generally together with the novelty search done. The applicant will have to choose whether to prosecute the procedure of exam by paying the examination fee and replying to eventual objections made in the search phase within 6 months from the publication date of said search. At that point, the file is assigned to an examiner who, on the basis of the text of the application filed, read in the light of the documents cited in the novelty search, and on the basis of the eventual reply filed as well, decides to grant the patent or not.
In this phase the applicant can send his further observations and replies to the examiner in case the examiner is not of the idea of granting the patent and can also “adjust” the application to overcome eventual objections emitted by the Office. In this regard, it is good to remember that absolutely nothing can be added to the text of the application since the invention is crystalized as described at the moment of the filing. Nevertheless, the claims can be limited or clarified, always remaining within the limits of what has been originally described.
If the examiner considers that the patent can be accepted he issues a favorable written opinion (c.d. Intention to grant) and forwards it to the applicant, who will have to pay the grant fee and file the text of the claims in the other two official languages within 4 months.
Once this has been done, the patent is granted through the emission of a Decision to grant and a number and a date of grant are assigned to it.
Once the patent has been granted, within 3 months from the publication of the Decision to grant, the patent will have to be validated in one or more states of the EP convention, freely chosen by the holder among those indicated in the application.
As it is commonly said, after grant the European patent “branches off” in a series of national patents that will be valid only in those countries where the original patent will be validated.
The validation consists, broadly speaking, of the filing of the translation of the patent granted in the national language of the state and of the payment of the national fees foreseen. The validation procedure, however, varies from state to state, therefore it is advisable to resort to an expert to know the specific national provisions.
The person who has obtained a European patent is not obliged to validate it in all the sates initially indicated, but can instead choose to validate it in some countries of his interest, thus reducing the costs to be afforded.
4. Keeping the European patent alive ↑
During the grant procedure of the European patent the application has to be kept alive by paying the annual maintenance fees directly to the European Patent Office. In this phase, so as not to lose the rights over the patent, it is also necessary to reply to eventual observations or objections made by the Office and pay the relative fees. For example, if the examination fee is not paid the procedure is interrupted and all rights over the application filed are lost. After the European patent has been granted and validated, official fees are not paid to the EPO anymore. Instead, in order to keep the patent alive, annual maintenance fees will have to be paid to the national offices state by state in each nation where it has been validated.
5. Duration and protection ↑
Even if many months are necessary before the patent application is accepted (or maybe refused), in this period the invention can be realized, sold or licensed.
Moreover, action can be taken against an infringer also on the basis of the single public patent application, with the assistance of an attorney expert in the field to avoid mistakes that could compromise the success of such an action.
In the case of the European patent application, if, for example, an infringement procedure wants to be initiated in Italy, it will be necessary to proceed first with the publication with the Italian Patent and Trademark Office of the translation into Italian of the text of the claims that, otherwise, are not opposable to third parties.
The European patent is valid for 20 years that are counted from the filing date.
6. Regulations ↑
European Patent Convention of 1973 reviewed in Munich on 29.11.2000 (CBE 2000)