European Patent Application

European patent: patentability search

When an invention is submitted to us, we first start by checking its novelty by means of a patentability search. The aim of this search is to determine precisely the prior art that is closest to the invention. To complete the search, a report is established that contains a list of patents and articles published by third parties that raise concerns as to the patentability of the invention, as well as our advice for protection.

The costs of the patentability search are invoiced according to a flat fee agreed in advance, often around CHF 3’000 + VAT for an invention of average complexity.

Nearly half of the inventions that are submitted to us are abandoned in the light of the patentability search report, when the inventors become aware that the prospects of obtaining protection do not justify the costs or efforts. In this case, the patentability search that was carried out enables the applicant to achieve considerable cost savings by avoiding the filing of a useless application.

Should the procedure on the other hand continue with the drafting of a patent application, the patentability search makes it possible to ascertain which characteristics can be effectively protected and to optimize the drafting of an application to highlight clearly the differences between the new invention and the documents uncovered by the search.

The patentability search report is also accompanied by one or several suggestions as to the strategy for protecting the invention, taking into account the commercial prospects of the invention, the uncovered prior art and the applicant’s budget.

European patent: filing

The text and the drawings of the patent application are then filed with the Swiss Federal Institute of Intellectual Property in Bern or directly with the European Patent Office (EPO) in Munich, together with a corresponding request. The formalities department of the EPO checks formal aspects and gives the application an application number and a filing date.

From this date onwards, the invention described in the application may be disclosed publicly or commercialised without this publication being opposable to the patent. The applicant can furthermore indicate “EP patent pending” on the product and associated documentation.

European patent: search report

The application is then transferred to the searching authority that is in charge of establishing a search report. The EPO usually strives to issue the search report within 9 months after filing if the application does not claim any priority; this deadline is however also frequently of several years if the European application is not the first filing for this invention.

The search report contains a list of documents discovered by the search examiner and which are judged relevant to assess the novelty and the inventiveness of the application. The cited documents are attached to the report.

A letter against each document indicates its relevance. The most important codes are “X”, used to designate a document which on its own is considered to pose a challenge to the novelty or inventiveness of a claim of the application, and “Y”, which designates documents which, together and in combination with one another, allow the inventiveness of a claim to be contested. The letter “A” designates documents cited as technological background.

The aim of the search report is only to establish the patentability of the claimed invention, but not to assess whether it can be used freely without infringing upon existing patents. An older patent, comprising claims sufficiently broad to be infringed by the invention, but that does not describe the new claimed characteristic, will not necessarily be cited even though the applicant would obviously be interested in this patent being brought to his attention. The search report also does not indicate whether the cited patents are still in force.

The search report for European applications not claiming priority is accompanied by an opinion on patentability. The applicant does not need to respond immediately. In the absence of a response, this opinion is generally taken over as first office action during the examination procedure.

European Patent: publication

European patent applications are published approximately 18 months after the filing date or, if priority has been claimed, after the oldest priority date. The search report is attached to the publication if it is already available (publication A1), otherwise it will be published separately at a later stage (publication marked A3).

Warning – Beware of approaches and requests for payment

It has come to the attention of P&TS that more and more clients are receiving invitations to pay fees that do not come from P&TS or WIPO/EPO and are unrelated to the processing of European or international applications under the EPC or PCT. Whatever registration services might be offered in such invitations, they are not issued by P&TS and bear no connection to WIPO/EPO or to any of their official publications.

These invitations to pay fees often identify a particular European or PCT application by its international publication number (eg: WO 02 xxxxxx), publication date, title of the invention, international application number, priority information and IPC symbols; examples of such invitations can be viewed below. It is highly recommended not to pay them.

You may find some examples on following WIPOs website : http://www.wipo.int/pct/en/warning/pct_warning.html

European Patent: examination

In order to continue the procedure, the applicant must pay an examination fee and a designation fee for each designated state within a 6 months’ term after the publication of the search report, barring which the application will be deemed withdrawn. Otherwise, the application is transferred to the Examining Division.

European Patent: office actions

The Examining Division examines the application by comparing it notably to the documents cited by the search examiner in the search report. If the application displays irregularities, e.g. lack of clarity or if the claims lack novelty or inventive step over the prior art, the Examining Division sends a written notification to the applicant or his representative and sets a deadline for remedying the defects or for contesting the examiner’s objections. The deadline is usually 4 months and can be extended by a further 2 months upon simple written request.

The Examining Division does not have the authority to reject the patent application without granting the applicant the opportunity to comment on the objections raised. If the applicant’s reply gives rise to new objections, a new office action must be issued. The procedure can thus theoretically imply a countless number of exchanges between the Examining Division and the applicant. In practice, however, the Examining Division will usually strive to force the applicant to respond fully to the office actions and to limit the number of necessary notifications.

European Patent: grant

When the examiner agrees with the latest version of the application proposed by the applicant, this agreement is notified to the applicant by sending a notification according to Rule 71(3) EPC, asking him whether he approves the text intended for grant. The patent cannot be granted without the applicant’s agreement on the text proposed for grant.

At the same occasion, the applicant is also invited to pay fees for grant and printing and to supply a translation of the claims within a set deadline. All European Patents are published with a set of claims in each of the three official languages of the EPC (English, German, French).

The patent is in order for grant as soon as these formalities have been fulfilled. The text of the patent is published on the date of grant, with mention of all the designated states to which it applies.

The designated states may request that a complete translation of the European patent in a national language be filed with the relevant office within a period of three months following the grant. From 1^st May 2008, some states that have ratified the London Agreement have waived this requirement or only request a translation of the claims.

A list of the required translations in the individual states is available on request.

European Patent: renewal fees

The validity of the European patent is 20 years maximum, upon condition however that the annual maintenance fees are paid each year on the anniversary of the filing date. These fees are due at the EPO before grant, and at the different national offices of the designated states after grant. It is possible to pursue or to abandon the patent separately in the different states and the European patent can also be invalidated separately in each state by the national courts.

European Patent: lapse

The patent or patent application may cease to produce its effect in one of the following cases:

• in any case, 20 years after the filing date
• if the applicant or owner stops paying the renewal fees or any other required fee
• if the applicant fails to answer an office action from the EPO
• in case the application is rejected on the grounds that it does not comply with the requirements of the EPC
• in case of revocation by a competent court, by an Opposition Division or by an Appeals Board of the EPO