The life of a patent application at the EPO

The life of a patent application at the EPO Yves Verbandt Noordwijk, 31/03/2016

Yves Verbandt Senior expert examiner Applied Physics guided-wave optics optical measurements flow and level measurements dosing devices Previously PhD, Brussels post-doc, Brussels, BE yverbandt@epo.org 2

Patent = contract A patent is a legal title granting its holder means to stop others from, among other things making, using or selling an invention without authorisation within a limited geographical area and time frame. Benefit the public Benefit the owner Reveal the invention by publishing the detailed description available to everyone for free Patents Exclusivity of exploitation by preventing others from exploiting the invention for commercial purposes without authorisation 18 months after filing Valid for max. 20 years 3

Our mission As the patent office for Europe, we support innovation, competitiveness and economic growth across Europe through a commitment to high quality and efficient services delivered under the Patent Convention. 4

Our history 1973 5 October 1973 Diplomatic Conference in Munich Signature of the Patent Convention (EPC) by 16 countries 1977 2000 Entry into force of the EPC in 7 countries Foundation of the Patent Organisation Foundation of the Revision of the EPC 2007 Entry into force on 13 December 2007 5

Seven founding states in 1977 Belgium Germany France Luxembourg Netherlands Switzerland United Kingdom 6

Today... 38 member states Belgium Germany France Luxembourg Netherlands Switzerland United Kingdom Sweden Italy Austria Liechtenstein Greece Spain Denmark Monaco Portugal Ireland Finland Cyprus Turkey Bulgaria Czech Republic Estonia Slovakia Slovenia Hungary Romania Poland Iceland Lithuania Latvia Malta Croatia Norway Former Yugoslav Rep. of Macedonia San Marino Albania Serbia 2 extension states Bosnia-Herzegovina Montenegro 2 Validation states Morocco Republic of Moldova 7

Our status Second-largest intergovernmental institution in Europe Not an EU institution Self-financing, i.e. revenue from fees covers operating and capital expenditure 8

Our five locations in Europe Headquarters Liaison office with the EU 9

The role of the EPO in the grant procedure We provide patent protection for up to 38 EPO member states, 2 Extension and 2 Validation states based on a single application in one of the three official languages (English, French, German) We are also responsible for limitation and revocation by patentees opposition by third parties appeal before the boards of appeal The EPO makes all patent documents available to the public 10

Some numbers (2015) < 300k patent applications 35% EP 26% US 18% JP >360k products 230k prior art searches 130k decisions: grant, refusal <2 days/ product 7000 staff >4000 examiners 11

The grant procedure at a glance Applicant patent application Refusal of the application Validation in the designated states Limitation or revocation Patent Office Filing and formalities examination Search and search report together with a preliminary opinion on patentability Substantive examination Grant of a patent Opposition Appeal Review Public Publication of the application and search report Publication of the patent specification Observations by third parties possible (Article115 EPC) 12

Request for grant of a patent 14

Date of filing The date of filing is crucial because: it determines the state of the art it must be within the priority year if priority is claimed many deadlines depend on this date The requirements are laid out in R. 40 EPC. indication that a patent is sought identification of the applicant description or reference to a previously filed application For a date of filing to be accorded, the application may be filed in any language. No claims, fees or declaration of priority are necessary at this point... but they will be required later! 15

Date of filing (Article 80 EPC) The application as originally filed will limit the scope of any future possible amendments. This has impact on subsequent phases: search and examination may be restricted to the scope of this originally filed document. Once the date of filing is accorded, the file must be complete. 16

Search (Art. 92 EPC) To discover the state of the art at the relevant date. To prepare for substantive examination and to determine whether, and if so to what extent, the invention to which the application relates is new and involves an inventive step. Scope: Internal & external documents, Patents & non-patent, i.e. scientific and technical documentation Extended search report is issued: Search report + on whether the application and the invention to which it relates meet the requirements of the EPC 18

Publication Patent applications are published at 18 months from the date of filing or priority. Publication makes the contents of the application available to the public. It also provides provisional protection (Art. 67 EPC); enables third parties to submit observations (Art. 115 EPC); forms part of the state of the art (Art. 54 (2) EPC). Search opinions are available through electronic file inspection Over 90M patent documents accessible to the public on www.epo.org/espacenet 19

The public can use patent documents to find out what technology already exists and build on it keep track of what other inventors and companies are doing avoid infringing other people's patent rights check out where an invention is patented, and where it is not 20

All patent documents are accessible free of charge on www.epo.org Espacenet over 90 million patent documents, easily searchable Patent Translate Automatic translation between English and 31 other languages, including Chinese, Japanese, Korean and Russian. 21

Search by CPC Keyword Class symbol 2000 Copy to search form Notes Warnings Definitions Schema 22

G01F: Flow measurement 23

G01F1/80 24

Patent publication 25

Substantive examination Clear definition of the protection sought (Art. 84 EPC). Sufficient disclosure of the invention (Art. 83 EPC). Unity of invention (Art. 82 EPC). A patent may be granted for an invention which is new (Art. 54 EPC), involves an inventive step (Art. 56 EPC), has industrial applicability (Art. 57 EPC),... and is not excluded from patentability (Art. 52-53 EPC). The examining division consists of three members examiners (Art. 18 EPC). Each decision is the responsibility of the division as a whole. 27

Inventive step (Article 56 EPC) Closest prior art Skilled person knows everything in the technical field can be a team has basic technical skills (textbook) is not inventive Problem-solution approach: difference with prior art objective problem solved by difference solution problem common or hinted at in the prior art? solution disclosed in prior art or textbooks? not inventive 28

Substantive examination All objections raised must be reasoned and supported by evidence. Applicants and examiners exchange written communications stating their objections, arguments and amendments. No additions allowed (Art. 123(2) EPC). The applicant must always be given the right to be heard (Art. 113 EPC). There can be no decision based on objections which have not been discussed. In order to finalise the procedure, oral can be requested (Article 116 EPC). For information on the legal status of applications go to www.epo.org/register 29

Patent register 30

Final outcome The application meets the requirements of the EPC: + translation of the claims + payment of grant and publishing fees grant Opposition period begins Administration goes over to the national offices Publication of the patent informs the public defines the granted exclusive right (Art. 64 EPC) enables the opposition procedure (Art. 99 EPC) The application does not meet the requirements of the EPC: refusal Adverse decision may be appealed. 31

Opposition = inter-partes procedure Any person may oppose a patent within nine month of its publication A patent may be opposed if according to the opponent: the subject-matter of the claims is not new, inventive, industrially applicable or excluded from patentability (Art. 100(a) EPC); the invention is not sufficiently disclosed (Art. 100(b) EPC); the patent goes beyond the originally filed application (Art. 100(c) EPC). New prior art may be submitted/claims may be amended After the opposition period has expired, patents may be only challenged in the individual countries in which they are valid. Opposition procedures are independent of the examination procedure. 33

Oppositions in 2013 Oppositions were filed against 4.5% of all granted patents. 4.5% 29% 31% 40% Oppositions Granted patents 34

Basic principles of the unitary patent Based on a patent granted by the EPO under the EPC Unitary effect extends to the 26 EU member states currently participating, at the patent proprietor's request Registered by the EPO in one single administrative step An additional option for patent proprietors, alongside the existing and national patent systems Can be combined with the patent to cover up to 40 countries Uniform litigation system 36

The patent with unitary effect Same grant procedure as for classic patent Appeal patent application Refusal or withdrawal of application Limitation/ revocation/ opposition Filing and formalities examination Search report with preliminary opinion on patentability Substantive examination Grant of patent At the request of the patent proprietor Unitary patent for the territories of the 26 participating states The unitary patent replaces the individual effects of the patent in the 26 participating states 37

Conclusion EPO organisation Patentability requirements prior art, skilled person, inventive step, sufficiency of disclosure Public information Espacenet Patent register Classification Unitary patent 38

Thank you Any questions? yverbandt@epo.org The opinions expressed in this presentation are those of the presenter. They should not necessarily be considered as the policy of the Patent Office, or imply any commitment by the EPO to any particular course of action. 39