pct2ep.com the reliable and efficient way to progress your PCT patent application in Europe Pocket Guide to European Patents

pct2ep.com the reliable and efficient way to progress your PCT patent application in Europe Pocket Guide to European Patents

How it works 1. Get a quote Enter the number of your PCT application and a few simple details to obtain a fixed quote for entry to the EPO regional phase 2. Save & accept Save the quote to accept it later or start the process with just one click 3. Keep track Review the progress of your application via our clear interface Expertise All EPO filings are overseen by our experienced team of European Patent Attorneys. Efficiency Our advanced electronic systems ensure reliable and timely submission of documents, as well as effective communication with you. Continuity Your application remains in safe hands throughout the filing process and the subsequent procedure in the EPO.

Overview of the European Patent System 3 The European patent system, governed by the European Patent Convention (EPC) and administered by the European Patent Office (EPO), came into operation in 1978, and provides an alternative to the filing of multiple national patent applications in individual European countries. Indeed, for some countries in Europe, where protection is sought through a PCT application, the EPO route is the only option. Whilst some aspects of the European patent system have been, and remain, the subject of criticism, it is indisputable that the system has been a success, as evidenced by the number of applications that are filed at the EPO. Under the EPC, a single application is filed in one of the three official languages of the EPO: English, French or German. The chosen language is called the language of the proceedings. The application usually covers all the contracting states of the EPC, which includes all current member states of the European Union (EU) plus several others. The application is processed centrally up to the point of grant, following which the single European patent application in effect becomes a bundle of national patents that are equivalent in all material respects to patents granted by the national patent offices of individual countries. In this booklet, we outline some of the key features of EPO practice that are most relevant to applicants and practitioners from outside Europe. w: pct2ep.com e: info@pct2ep.com t: +44 115 947 7977

4 Contracting states of the EPC The following countries are member states of the European patent system (August 2013): AL Albania GB United Kingdom MT Malta AT Austria GR Greece NL Netherlands BE Belgium HR Croatia NO Norway BG Bulgaria HU Hungary PL Poland CH Switzerland IE Ireland PT Portugal CY Cyprus IS Iceland RO Romania CZ Czech Republic IT Italy SM San Marino DK Denmark LI Liechtenstein RS Serbia EE Estonia LT Lithuania SI Slovenia ES Spain LU Luxembourg SK Slovakia FI Finland LV Latvia SE Sweden FR France MK Macedonia TR Turkey DE Germany MC Monaco Reliable and efficient PCT regional phase entry

Entry of a PCT application to the European regional phase 5 The majority of European patent applications filed by applicants from outside Europe are derived from International (PCT) patent applications. The time limit for entry of a PCT application to the regional phase in the EPO is 31 months from the earliest claimed priority date (or from the PCT filing date, if no priority is claimed). Entry to the regional phase requires the payment of the applicable official fees. Usually, those fees are: filing fee search fee designation fee examination fee excess page fees In some cases, the search fee is reduced or waived (depending on which patent office carried out the International search), and the designation and examination fees may not be due at the time of entry to the regional phase. excess claims are expensive, but the fees can be deferred Excess claims fees are relatively high in the EPO and apply to all claims in excess of fifteen, but these can be deferred; they do not need to be considered or paid at the time of regional phase entry. w: pct2ep.com e: info@pct2ep.com t: +44 115 947 7977

6 Patentability in Europe The main requirements for patentability in Europe are that the claimed invention must be novel and must involve an inventive step. The prior art against which these criteria are measured is made up of all information that was already in the public domain before the effective priority date of the claim under consideration (or the filing date where no priority is claimed or the claim is not entitled to priority). In other words, the absolute novelty standard applies. the absolute novelty standard applies in Europe Inventive step is broadly comparable to the requirement for non-obviousness that exists in other jurisdictions such as the USA. However, EPO examiners use the problem-and-solution approach to the assessment of inventive step. This involves identifying the difference between the claimed invention and the closest prior art, determining the technical effect associated with that difference, and in the light of that determination formulating the technical problem addressed by the invention and the solution to that problem that the invention provides. If that solution is not obvious over the prior art, then an inventive step is involved. In addition, there are certain classes of invention that are not patentable in Europe. These include computer software and business methods, but the exclusion applies only in so far as the patent relates to that subject matter as such. There are often ways of formulating claims that circumvent the exclusion. Similarly, although methods of treatment of the human or animal body are not patentable in Europe, claims can often be reworded into an acceptable form. Reliable and efficient PCT regional phase entry

Prosecution of a European patent application 7 For a PCT-derived application, the first procedural step after regional phase entry is the issuance of a Rule 161 communication. This invites the applicant to amend the claims and, if the EPO acted as International Search Authority (ISA), also to file a full response to the issues raised in the Written Opinion that accompanied the International Search Report. If the EPO did not act as ISA, then no substantive response is required at this stage. The number of excess claims fees depends on the number of claims after the response to the Rule 161 communication has been filed. If the application contains more than fifteen claims, then a reduced claim set is often filed at this stage. Unless the EPO acted as ISA, a supplementary European search is then carried out, and the search report is issued with an accompanying Written Opinion. For a full response to the Written Opinion must be filed the application to proceed, a full response to the Written Opinion must be filed, which may include amendments to the claims. The next communication is issued by the Examining Division, and the time limit for response is usually four months, though a single extension of time of two months is generally available. In practice, the primary examiner of the Examining Division is usually the examiner who carried out the search and prepared the Written Opinion. The number of office actions is at the discretion of the examiner, but our experience is that examiners are willing to prolong the dialogue with applicants, provided that each response is a genuine attempt to move the case towards allowance. (continued overleaf) w: pct2ep.com e: info@pct2ep.com t: +44 115 947 7977

8 A precautionary request for a hearing (oral proceedings) is made to ensure that the examiner cannot refuse the application without notice. In practice, if a summons to oral proceedings is issued, it is often possible to resolve outstanding issues by further discussion with the examiner. Where objections are raised by the Examining Division, it is almost always necessary to make amendments to the specification and in particular to the claims of the application. Those amendments may substantially affect the scope of the claims, or they may be purely formal in nature. In all cases, however, it is critically important that any amendment does not introduce information into the application that was not present in the Art 123(2) is applied very rigorously by the EPO amendments made elsewhere may not be acceptable specification as originally filed. This requirement is set out in Article 123(2) EPC, and is applied very rigorously by the EPO. Extensive case law has developed over the three decades in which the EPO has been in operation, and amendments that may be possible in other jurisdictions, for instance in the USA, may not be acceptable under EPO practice. Once the Examining Division is satisfied that the application meets the requirements of the EPC, a notice of allowance (Rule 71(3) Communication) is issued. This is accompanied by a copy of the text with which it is intended to grant the European patent. If the applicant approves the text, it is necessary to pay the grant fee and to file translations of the claims into the two other official languages of the EPO, i.e. into French and German if the specification is in English. Once these formalities have been completed, the application proceeds to grant and the patent specification is published. Reliable and efficient PCT regional phase entry

Divisional applications 9 A European patent application may be divided and one or more divisional applications filed. This may be done either in response to an objection of lack of unity of invention by the EPO examiner, or voluntarily in order to protect subject matter disclosed in the application but not covered by the claims of the parent application. strict time limits apply to the filing of divisional applications It is important to note that, under current rules, a restrictive time limit applies to the filing of divisional applications. In most cases, a divisional can only be filed within 2 years of the first communication issued by the Examining Division. Divisional applications may themselves be divided and further divisionals filed, but the same time limit applies to all applications in the same patent family. Please note: Change of Rules With effect from 1 April 2014, the two-year time limit on the filing of divisional applications at the EPO will no longer apply. Instead, divisional applications may be filed at any time, provided that the parent application is still pending. w: pct2ep.com e: info@pct2ep.com t: +44 115 947 7977

10 Maintenance fees Maintenance fees (annuities) are payable throughout the pendency of a European patent application. The first fee is in respect of the third year from the filing date of the application, and therefore falls due in the month containing the second anniversary of the filing date. Maintenance fees must be paid by the last day of that month. For an application derived from a PCT application that claimed priority from a national application filed twelve months earlier, the first (third year) maintenance fee usually falls due about six months after regional phase entry. Maintenance fees may only be paid up to three months in advance, and so the maintenance fee cannot be paid when the regional phase is entered. maintenance fees are due throughout the pendency of a European patent application However, where the interval between the priority application and the PCT filing date is smaller, or where no priority is claimed, the third year maintenance fee may already be due at the time of entry to the regional phase. In such cases, the maintenance fee is included in the quote you receive from pct2ep.com. Reliable and efficient PCT regional phase entry

After grant 11 The European patent system is not yet truly unified. The pre-grant procedure is centralised through a single patent application that provisionally covers all the individual countries that are parties to the EPC. However, once the patent is granted, the patent proprietor has to decide which individual countries the patent is to take effect in, and for most countries action has to be taken to bring that about. This may involve the preparation and filing of translations, either of the whole specification or just the claims. This process is commonly referred to as validation of the European patent. Once the patent has been validated, it is necessary to pay renewal fees in each European country in which the patent takes effect. These fees vary widely from country to country, but in all cases they are payable annually and fall due in the month containing the anniversary of the filing date of the patent application (i.e. the PCT filing date for a PCT-derived case). enforcement takes place countryby-country the patent proprietor must decide which countries the patent is to take effect in Also, because the single European patent application is converted, in effect, into a bundle of national patents once it has been granted, enforcement of the patent takes place on a country-by-country basis, through the court systems of each individual country. In general, judgements of each court apply only to their national jurisdiction, and enforcement across the whole of Europe can necessitate legal action in multiple countries. (continued overleaf) w: pct2ep.com e: info@pct2ep.com t: +44 115 947 7977

12 a truly unified EU patent system may come into being, but we do not yet know for certain Legislation on a truly unified patent system for the EU has been passed by the European Parliament, but is now subject to ratification by the individual member states of the EU. If the required number of ratifications is achieved, then the unitary patent system could come into being, possibly in 2015. It will then be possible for a patent to have unitary effect throughout the participating EU member states, i.e. a single patent will cover all those countries, subject to the payment of only one renewal fee each year. At present, however, we cannot be certain whether this system will come into effect, or when. Reliable and efficient PCT regional phase entry

Oppositions and appeals 13 The opposition process is one of the most significant features of the European patent system. Within nine months of the date of grant of a European patent, it is possible for a third party to lodge a notice of opposition. The notice of opposition must be accompanied by a detailed statement of all the facts, evidence and arguments on which the opposition is based. opposition can be filed within nine months of grant The notice of opposition is considered by a tribunal of three examiners, known as the Opposition Division, made up of the primary examiner of the Examining Division responsible for the pre-grant examination of the patent application and two other examiners not previously involved with the case. The opposition is transmitted to the patent proprietor, who is given an opportunity to respond. The response may involve amendment of the claims of the patent, and it is critical that any amendment does not broaden the scope of the patent in any way, i.e. the scope of the claims may only be reduced after grant, and not widened. It is customary for the parties to request oral proceedings if the Opposition Division does not intend to decide in their favour. Oral proceedings take place at the EPO s offices, either in Munich or The Hague. Almost all oral proceedings are completed within one day, and the decision is announced at the conclusion of the hearing. The formal written decision, with detailed reasons, is issued some time later (sometimes several months later). (continued overleaf) w: pct2ep.com e: info@pct2ep.com t: +44 115 947 7977

14 Once the written decision has been issued, a party adversely affected by it may file an appeal within two months. The appeal is considered by one of the EPO s Boards of Appeal, which constitute the judicial arm of the EPO and are completely independent of the Examining and Opposition Divisions. The appeal procedure is effectively a judicial review of the previous procedure, and usually follows a similar course to opposition proceedings, i.e. written submissions by both parties, followed by oral proceedings, with the final decision being issued at the conclusion of the hearing. Typical timescales are 2-3 years from the lodging of an opposition to the issuance of the first instance decision of the Opposition Division after oral proceedings, and a similar period for the completion of appeal proceedings. opposition proceedings take 2-3 years and appeals take a similar length of time The content of this booklet is for information only, and does not constitute legal advice. Whilst we have endeavoured to ensure that the information is generally applicable, specific advice should be sought on any individual case. Reliable and efficient PCT regional phase entry

Our expertise Our team of European Patent Attorneys and Certified Patent Administrators have vast experience of all aspects of European Patent Office procedure. Each case is allocated to an attorney who will personally supervise the preparation and filing of your application, and who will be responsible for prosecution of the application through the grant process. As well as their knowledge of EPO law and procedure, our attorneys all have excellent academic backgrounds in specialist disciplines, ranging from chemistry and biotech to mechanical engineering and physics. You can be sure that the attorney handling your application will have the appropriate technical expertise. pct2ep.com was conceived as a result of our desire to provide the greatest benefit to our clients, and our belief that what is best for our clients is also best for us. Please visit our corporate website at www.adamson-jones.co.uk for more details about our company and other useful information.

Talk to us: Tel: +44 115 947 7977 Email: info@pct2ep.com Website: www.pct2ep.com Adamson Jones IP Ltd BioCity Nottingham Pennyfoot Street Nottingham NG1 1GF United Kingdom LinkedIn: adamson-jones Twitter: @pct2ep