European Patent Office. Patent protection. European Procedure. Filing. Formal Examination. Search. Publication. Substantive Examination. Grant.

Transcription

1 protection protection National patent system CARDS 2003 National Programme - Croatia "Strengthening the Intellectual Property Implementation System" From filing to granting - an overview on patent granting systems and procedures PCT (international) system patent system (Community patent system) 2 National patent system PCT (international) system protection One application for one state One procedure according to national law One patent for one state protection One application for all PCT member states (133) One procedure according to the Cooperation Treaty (PCT) before receiving Novelty search + written opinion by International ing Authority (AT, AU, CA, CN, EP, ES, FI, JP, KR, RU, SE, US) by International Bureau (WIPO) Option: international preliminary examination by International Preliminary Examining Authority (AT, AU, CA, CN, EP, ES, FI, JP, KR, RU, SE, US) Entry into the national () phase after 30 (31) months 3 4 patent system Extension Agreements protection One application filed at one for 31 member states ( + 5 "extension states") protection Extension (Co-operation) Agreements concluded by the EPO with AL, BA, HR, MK and YU One procedure according to the Convention (EPC) One EP patent for all 31 member states (+ 5 "extension states") Allow to extend the effect of and Euro-PCT applications and patents to the territory of these non-member states However, EPC does not apply (e.g. Decision of the Legal Board of - J 14/00) 5 6 1

2 protection The procedure 7 protection Where to file The Hague.... Munich - Berlin - The Hague Vienna Member states: Austria Belgium Bulgaria Cyprus Czech Republic Denmark Estonia Finland France Germany Greece Hungary Iceland Ireland Italy Latvia Liechtenstein Lithuania Luxembourg Monaco Netherlands Poland Portugal Romania Slovakia Slovenia Spain Sweden Switzerland Turkey United Kingdom 8 EPO locations How to file Munich PschorrHöfe Branch at The Hague protection protection by hand Headquarters Munich Isar building by mail by fax (no paper confirmation!) on-line Vienna sub-office Berlin suboffice 9 10 procedure and forwarding to EPO procedure and forwarding to EPO protection The Hague Munich Berlin patent application National via the national route may be necessary in case of: National security Nationals of the country First filings or other national requirements [see National Law relating to the EPC ] 11 protection Divisional application The Hague Munich Berlin Receipt for Documents [ Form ] Communication under Rule 24(4) EPC National procedure patent application National as to secrecy? 12 2

3 Breakdown of applications by residence of applicants 2005 Languages protection JP 17% Others 8% DE 19% protection EP applications in EPO official languages English (62 % of applications) French (7 % of applications) German (23 % of applications) US 25% Others (EPO) 8% IT 3% CH 4% GB 4% FR 6% NL 6% in admissible national languages Natural or legal person having its residence or principal place of business within the territory of EPC contracting state with non-epo official language, or national of that State resident abroad, may file in the official language of EPC contracting state (Art. 14(2) EPC) (8 % of applications) Numbering system First file treatment protection Separate number ranges for Paper filings On-line filings } per filing place Euro-PCT s [ onwards ] Application number - eight digits + check digit Example: year of filing current number/ filing place protection Receipt of application Pre-classification Data entry PHOENIX EDP Forms Receipt for documents Communication under R. 24(4) EPC number - is also patent number in case of grant Example: EP A1 EP B1 15 SIS Units (Support for Industrial Sectors) for formalities examination / administrative treatment 16 ities examination by Receiving Section pursuant to Arts. 80, 90 EPC protection pursuant to Arts. 80, 90 and 91 EPC Treatment of subsequently filed documents Dealing with matters concerning search report of the patent application [A-publication] Request for examination protection Article 80 EPC Otherwise no date of filing Article 90 EPC a) an indication that a patent is sought b) the designation of at least one contracting state c) information identifying the applicant d) a description and one or more claims in an admissible language a) filing and search fee b) translation of application

4 pursuant to Art. 91 EPC Important time limits protection Article 91 EPC Request for [EPO Form 1001] Request for examination Applicant s and representative s data Designation of inventor Title of the invention Declaration of priority Contracting (extension) states Divisional application Automatic debit order Signature Drawing(s) missing on date of filing? Re-dating of application or deletion reference drawing(s) in the application 19 protection of the application: of the designation of inventor: of (all) priority document(s): of the translation of the application: within 12 months from (earliest) priority date 16 months from date of filing/ (earliest) priority or 2 months from invitation 16 months from (earliest) priority date or 2 months from invitation 13 months from (earliest) priority date or (max.) 3 months from date of filing 20 Fees + time limits for payment The procedure protection fee* EUR 95 : online filing EUR 170 : paper filing protection fee* EUR 1000 : for extended EP search report Claims fee EUR 45 : for each claim > 10 Time limit for payment: filing date + 1 month * if not paid, invitation to pay with 50 % surcharge What is the aim of the search? Where do we search? protection To find the most relevant State of the Art protection Some figures from 2005: The State of the Art is all information, relevant to the patentability of the invention, made available to the public (in writing or orally) prior to the date of filing of the patent application (Art. 54(2) EPC) The State of the Art is of relevance for the purpose of determining whether, and if so to what extent, the invention to which the application relates is new and involves an inventive step 90 different databases available internally 53.2 million electronically searchable patent documents in EPO s main search database EPODOC 62 million facsimile digitised documents (patent and non-patent literature

5 Where do we search? How are the classification units organised? protection Every prior art document in the EPODOC database is classified according to its content protection In the past, paper documents were stored in special cabinets according to their classification Based on its class a document is stored in a corresponding classification unit But with 130,000 groups (ECLA) electronic storage of documents is essential EP Extended Report X (also Y or A) *abstract* *page 1, line 10 line 25* *page 3, line 12 line 45* DE A (KUROPKA HORST) 11 AUGUST 1994 G02C7/02 G02B5/22 Claims 1-4 Examiner 24 August 2001 protection For all applications filed as from 01/07/2005 (Rule 44a EPC): report accompanied by non-binding opinion on patentability If valid examination request present before search is carried out, opinion follows search report as first communication by Examining Division Opinion not published with application, but open to file inspection Harmonization with PCT procedure EESR as from The procedure protection protection EESR Communication examiner/ applicant of application with SR (opinion available through file inspection) 6 Entry into Communication examiner/ applicant / Refusal 0 18 Time (months)

6 of the application of the application Time limit for publication: protection EPASYS protection after 18 months from the date of filing (or from the priority date) [ Art. 93 EPC ] Earlier publication possible on request! communication purs. to Art. 67 EPC printer Bulletin Bulletin CD-R printer A-publication A-publication 31 Kinds of publication: A 1 : with search report A 2 : without search report A 3 : search report only day: every Wednesday Form of publication: electronic as from : 32 Date of : Bulletin 2000/51 Appl. No: Date of filing: Designated Contracting States: AT BE CH DK ES FR GB... Designated Extension States: AL LT LV MK RO SI Applicant: Spectacular Spectacles Inc. Wimbledon SW29 Great Britain Figures... EP A1 (Also A2, A3) Int Cl.: G02C7/02, G02B5/22 Inventors: Ace Lobbit London SW1, GB Representative: Drafter, Patrick 1 Holborn Street London, United Kingdom Title : APPARATUS FOR ENHANCING VISUAL... ABSTRACT: To enhance perception of a yellow tennis ball... protection After publication of the application Observations by third parties Inspection of files Online Register Request for biological material Provisional protection File inspection Fees + time limits for payment protection patent applications are open to the public following publication (Art. 128 EPC) All parts of the file pertaining to examination, opposition and appeal procedures are open for inspection protection Designation fee* : EUR 80 max. 7 = EUR 560 The parts of the file excluded from file inspection are listed in the OJ 2001, 458 Since (OJ 2003, 370), access to online file inspection is provided in the epoline area of the website ( free of charge Inspection by furnishing paper copies still possible on request: administrative fee (EUR 35) payable in advance files over 100 pages as a rule made available on electronic storage media 35 fee* : EUR 1490 DFIL < EUR 1335 DFIL > Extension fee : EUR 102 per state Time limit for payment: publication date search report + 6 months * if not paid, invitation to pay with 50 % surcharge 36 6

7 Coffee Time The procedure protection examination Examining Division protection Responsibility passes to Examining Division with validation of examination request Appointment of Examining Division protection Examining Division decides on or Refusal () Examiner 1 st Examiner Based on EPC criteria for patentability S Novelty (Art. 54) S Inventive step (Art. 56) S Industrial applicability (Art. 57) 2 nd Examiner Chairman examination examination protection 1st exam. report (4-mth time limit) Examining Division Reply / Amendments Communication under R. 51(4) or refusal protection At least two members of the Examining Division must agree that the application meets the requirements of the Convention If the Examining Division considers to refuse the application: applicant has the right to be heard can request oral proceedings Applicant If at least two members of the Examining Division are not convinced, the application is refused

8 The procedure Positive outcome - grant protection protection With the Communication pursuant to Rule 51(4) EPC the applicant : is informed that it is the intention of the Examining Division to grant a patent and is requested, within an non-extendable period of 4 months, to: file the translations of the claims in the 2 EPO official languages other than the language of the proceedings pay the fees for grant and printing and the fee for any additional claims file the translation(s) of any priority document(s) Positive outcome - grant of patent specification protection At least three months between notification of the Communication under Rule 51(4) EPC and the coming into effect of the decision to grant (Art. 97(4),(5) EPC) protection 5 weeks necessary for technical preparation for publication; no amendments / corrections to specification possible Request for acceleration possible (Art. 97(6) EPC) Date of publication is mentioned in the Bulletin and patent specification is published Day before: last chance for filing a divisional application Start of period (9 months) Start of time limit for validation with NPO s Validation before National s The procedure protection File translation of specification Art. 65(1) EPC protection Appointment of representative Pay any national fee Pay renewal fees [see National Law relating to the EPC ]

9 Possible decisions protection is a centralised EPO procedure for challenging the validity of a granted patent Article 99 EPC: It must be filed within 9 months of the mention of grant being published It can be filed by any person fee EUR 635 protection Revoke the patent in its entirety no longer exists Maintain the patent in amended form Claims are restricted Maintain the patent in unamended form Claims maintained as granted s 2005 No opposition filed protection s opposed Decisions in opposition cases s revoked 37.7% s rejected 30.1% s maintained in amended form 32.1% protection If NO notice of opposition (Art. 99 EPC) received within period of 9 months after publication of the mention of grant, patent proprietor is informed Information that no opposition filed is published in the Bulletin able decisions s procedure protection Boards of protection An appeal shall lie from decisions of the Receiving Section, Examining Divisions, Divisions and the Legal Division. has suspensive effect. Any party to proceedings adversely affected by a decision may appeal. Time limit and form: Notice of appeal must be filed in writing within 2 months after notification of decision appealed from fee EUR 1065 Grounds of appeal must be filed within 4 months after notification of decision appealed from

10 Thank you for your attention Martina Langhoff ities r EPO Munich 10