Seminar Industrial Property Protection Prague, 4 June 2003 Patent Protection in Europe Heidrun Krestel Liaison Officer Member States Co-operation Programmes

Seminar Industrial Property ProtectionPrague, 4 June 2003

Patent Protection in Europe

Heidrun Krestel

Liaison Officer Member States

Co-operation Programmes and INPADOC

European Patent Office


Topics of this presentation

• Introduction to the EPO• General issues• Filing• Search and examination• Granting• Opposition• Appeal• Summary



3 new member states which will join the EPC soon

LT LVPLLithuania LatviaPoland



DG1Search, examination and administration ofsearch documentation

DG2Search, examination and opposition

DG3Boards of appeal

DG4General administration,finance, language servicepersonnelPatent information

DG5Patent law, internationalaffairs, PR, technicalco-operation


The EPO’s Mission

To examine patent applications

To grant patents

To publish and disseminate patent information


020000400006000080000

100000120000140000160000180000

1995 1996 1997 1998 1999 2000 2001 2002

Total number of applications

Applications 1995 to 2002





What is a patent?

A patent is a legal title granting its holder the exclusive right to make use of an invention for a limited area and time by stopping others from, among other things, making, using or selling it without authorisation.


National procedures

Application

Application

Application

Invention CZ-Patent

AT-Patent

SE- Patent


European procedure (EP)Invention

Applicationup to 27national patents

European phase National Phase

EPOGrant


International procedure (PCT)

Invention

Application

179 member states

search and optionalpreliminary examination,no patent grant as such,entering the regional or national phasewith 30 months delay after first filing





Filing the application

• Who can file?

• Where to file?

• Any natural or legal person, joint applicants

• at EPO premises in Munich, The Hague and Berlin

• at the central industrial property office or other competent authorities in that Contracting State (depending on the national law)



• For whichcountries?

• In which language?

• In countries where the EPC has entered into force = the contracting (designating) states

• In one of the official languages (English, French, German)



• Items to file • Request for grant of a European patent

• Description of the invention• Claim(s)• Drawing(s) referred to the

description or the claims• Abstract • Claim to priority



• Claim topriority

• Priority may be claimed for a European patent application by a person who in 12 month prior to the filing of the European application has filed an application of a patent or registration of a utility model in respect of the same invention in a state which is party of the Paris Convention for the Protection of Industrial Property



Requirements concerning the presentation of the invention• Disclosure of the invention• Unity of invention• Description:

• indication of technical field of the invention• background state of the art• definition of the technical problem and its solution• description of the figures• descrption of the way to carry out the invention• indication of industrial application



Requirements concerning the presentation of the invention• Claims:

• define the matter of protection

• usually comprises two parts, the prior art portion and the characterising portion

• Drawings must correspond to description and claims

• Abstract: summary of the invention for technical information purposes


Further detailed information via the EPO

websitewww.epo.org






Search and examination• Examination on filing by the Receiving

Section• indication that a European patent is sought• designation of at least one contracting state• definition of an applicant• description and at least one claim• payment of filing and search fees

• Formalities examination• check of compliance with requirements

concerning the items to file


Search and examination• Search

• on basis of the claims• search tools:

• electronic databases (e.g. DOC d.b)• paper collection, systematically filed according to

the ECLA, containing PCT minimum documentation• non-patent literature

• search reportpublished together with the publication of the application 18 months after the priority applicationor published separately



Search and examinationCode letters in the search report indicating:

X particularly relevant document which, taken by itself destroys the novelty or inventive step of the subject-matter claimed

Y particularly relevant document which, taken together with one or more other „Y“ documents, indicates that the subject-matter claimed does not involve an inventive step

A document gives information about the state of the art


Search and examinationSubstantive examination• upon request for examination in

written form• after payment of the examination

fee• in the light of the search report,

the EPO examines if the inventions is patentable and meets the requirements of the European Patent Convention (EPC)





Granting

• For an invention to be patentable it must be:•Novel (no prior disclosure or use)

EPC Art. 54• Inventive (not obvious to one skilled in the

art)EPC Art. 56

• Industrially applicableEPC Art. 57


GrantingNot regarded as inventions:• Discoveries, scientific theories and

mathematical methods• Aesthetic creations• Schemes, rules and methods for performing

mental acts, playing games or doing business, and programs for computers

• Presentations of information• Treatment of human or animal body by

surgery or therapy• Plant and animal varieties


Granting

• Novelty•Has the claimed invention been

disclosed, used, exhibited before? If not it is NOVEL

•Examiners use documentation and computer searches to decide on novelty.


Granting

• Inventiveness•Does the claimed invention comprise

an inventive step, attributes which are not obvious to someone skilled in the art?

•Test: can elements of the claimed invention be found in 2 prior art documents?

• If yes then the claimed invention is not inventive.


Granting

• Industrial Applicability

•An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture

•Difficult to assess


Granting

65% Patents granted6.2 % opposed

10% Withdrawn after search report

25% rejected or withdrawn during examination





Opposition• Any person (public)• Opposition period: nine months after

mention of publication of grant• Reasoned statement (grounds) • In written (opposition form) with facts and

evidence• Payment of opposition fees• Substantive examination of the opposition

by the opposition division• Oral proceedings• Decision of the opposition division





Appeal • Anyone adversely affected by a

decision of the EPO may file an appeal to the Board of Appeal

• time limit two months after the date of notification of the respective decision

• written statement (grounds)• last instance• case law





Fees• Application fee € 125• Search fee € 690• Designation fee € 75

per country, maximum 7 times • Examination fee € 1430• Fee for grant € 715• Annual fee 3+4 year € 785Total up to grant € 4270

• Opposition fee € 610• Fee for appeal € 1020



Overview of the patent procedure at the EPO

Formalities

Request for Examination

Examination

Application

Grant Patent

Reject

Opposition

within 9 month

Further applications (Priority)

12 month

Info

InfoApplicant

EPOThird Parties

Max. life time: 20 years

SearchPublication,

Search Reportmax. 6 Month after search report

-

+

Translationsnational Phase

after18 months


Thank you for your attention

Questions

Documents

Seminar Industrial Property Protection Prague, 4 June 2003 Patent Protection in Europe Heidrun Krestel Liaison Officer Member States Co-operation Programmes