European Patent Procedure
Legal Articles
Submit Articles Back to Articles
12 January 2012
FILING A EUROPEAN PATENT
A European Patent application may be filed at the
European Patent Office in English and can designate any of thirty
states which are party to the European Patent system. These are
currently: Albania, Austria, Belgium, Bulgaria, Cyprus, Czech Republic,
Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland,
Italy, Latvia, Lithuania, Luxembourg, Macedonia, Monaco, Netherlands,
Portugal, Romania, Slovak Republic, Slovenia, Spain, Sweden,
Switzerland (including Lichtenstein), Turkey and the UK.
Approximately three months after filing a European Patent application,
an European Patent Office searcher conducts a search through previously
published patent specifications and a limited range of other literature
to identify published documents which may be relevant to the
patentability of the invention. A search report listing these documents
is sent to the applicant (together with a copy of the documents).
The application is published normally after the search report has been
completed.
If the search report was favourable and the prospect of securing a
granted Patent seems good, the applicant may decide to proceed to
examination. For this purpose, it is necessary to file an "Examination
Request" and pay an examination fee no later than six months after
publication of the search report. By the same date, it is also
necessary to pay a "Designation Fee" for each designated European
country in which Patent protection is desired (although there is no fee
for the eighth and each subsequent designated country).
The application is allocated to a European Patent Office examiner who
will in most cases issue an "Official Letter" detailing any objections
to the application. Objections which may arise are that the invention
is not new or is merely an obvious departure from what is already known.
Working closely with his advisor, the applicant may choose to instruct
his advisor to prepare and file a response to the objections or amend
the application to overcome the objections. There may be several
exchanges of correspondence between the examiner and the advisor over a
number of years and this procedure is often referred to as prosecution.
The costs of prosecution will depend on the time spent by the advisor.
Provided that all objections are eventually overcome, the European
Patent Office will issue a formal notification of acceptance. The
application will proceed to grant, subject to payment of various fees
and filing of translations of the accepted claims into French and
German.
Shortly after the European Patent Office issues the formal "Decision to
Grant", various steps must be taken at the local Patent Office of each
designated European country in which the applicant desires the European
Patent to take effect. For this purpose, a local language translation
(if appropriate) of the accepted text must be prepared and filed at the
relevant local Patent Office by an appointed local Attorney. The
cumulative costs will reflect the number of countries and the length of
the accepted text to be translated.
Each separate national phase patent must then be maintained by paying
annual renewal fees.
On balance, where Patent protection is desired in three or more
European countries, a European Patent application is generally more
cost effective than three separate national foreign Patent applications.
Michael Coyle is a Solicitor Advocate and can be contacted at
michael.coyle@lawdit.co.uk. Lawdit Solicitors is a commercial
law firm based in Southampton with offices in London, Malaga and Rome.
About the Author
Lawdit
Solicitors offer services and advice for litigation,
commercial contracts, Intellectual Property and IT legal agreements. We
are experts in commercial law with a heavy emphasis on Intellectual
Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of
Higher Court Advocates and we are the appointed Solicitors to the
largest webdesign association in the world, the United Kingdom Website
Designers Association.
Follow us @Scopulus_News
Article Published/Sorted/Amended on Scopulus 2012-02-05 13:42:29 in Legal Articles
