PATENT PROCEDURES. SILVIA CELLA, ALESSIA NASO Consiglio Nazionale delle Ricerche Office «Valorizzazione della Ricerca» Genoa, 18 th July 2016

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1 PATENT PROCEDURES SILVIA CELLA, ALESSIA NASO Consiglio Nazionale delle Ricerche Office «Valorizzazione della Ricerca» Genoa, 18 th July 2016

2 Remark: Some contents and examples used in the following slides were taken from Patent teaching kit of the European Patent Academy and from tutorials and guidelines provided by the European Patent Office 2

3 WHERE TO APPLY FOR A PATENT National patent offices National patent valid only in the country where it is granted Non-residents can also apply for a patent One year of "priority" for subsequent applications European Patent Office Just one application for up to 38 States, members of EP convention One Examination of novelty and inventive step If granted, the applicant chooses in which member States the patent has to be validated Via the Patent Cooperation Treaty Just one application for up to 151 countries member of PCT No examination After the initial application phase the international application leads to multiple national patent examination procedures Decisions with cost implications can be delayed until months after filing (e.g. choice of countries to file in) 3

4 GENERAL RULES AND DEFINITION IN PATENTING PROCEDURE Priority Date: A priority date is the filing date of an earlier application that you use as the effective filing date Extention Period: Within 12 months from the priority date Pubblication Date: The date on which the patent application is published (i.e. the information is available to public). This normally occurs 18 months after the priority date. Granting Date: the date when the patent office issues a patent to the applicant. On average it takes three years for a patent to be granted at the USPTO and five years at the EPO m 18 m 3-6 y 20 y PRIORITY DATE EXTENTION PUBLICATION SR + Written Opinion EXAMINATION GRANTED EXPIRED 4

5 EXTENSION PCT 18 m 30 mesi EPC (exams) USA (exams) 0 12 m EPC SR + Written Opinion 18 m NATIONAL/ REGIONAL PHASES JP (exams) 3-6 y DE FR PRIORITY/ NATIONAL PHASE EXTENTION USA SR + Written Opinion 18 m EXAMINATION GRANTED 3-6 y GB IT SR + Written Opinion EXAMINATION GRANTED 5

6 EUROPEAN PATENT CONVENTION AND UNITARY EUROPEAN PATENT 6

7 EUROPEAN PATENT CONVENTION The Convention on the Grant of European Patents (European Patent Convention, EPC) was signed in Munich 1973 and entered into force in As a result of the EPC, the European Patent Office (EPO) was created to grant European patents. UNIFIED PROCEDURE CHARACTERIZED BY protection in one single step for 38 member states currently participating, simplified registration procedure instead of 38 different applications centralized substantive examination by European Patent Office examiners Three languages for working in and for communicating with applicants (English, French, German) Centralized procedure of rejecting or granting but. validation of the patent in the designated Contracting States (where the granted patent protection has to be activated). 7

8 BASIC STEPS IN THE EUROPEAN GRANT PROCEDURE Italy Germany Filing Prior art Search Examination by the examiner Grant Validation France Switzerland Croatia. Publication of the application and search report Publication of the patent specification 8

9 FILING Filing Search Examination Grant Opposition Appeal The applicant prepares a description of the invention, one or more claims and (optional) drawings. The application is filed online, by fax or by post. The patent office checks the documentation for compliance. A date of filing is allocated. 9

10 SEARCH Filing Search Examination Grant Opposition Appeal Examiners search for the state of the art at the date of filing. They search in databases containing millions of patent and non-patent documents. They use the results of the search to determine whether an invention is new and involves an inventive step. They then issue a Search Report and a preliminary opinion on patentability. 10

11 EUROPEAN SEARCH REPORT The search report is a list of citations of all published prior The art documents search report whichincludes are relevant the to the patent application. citations Theof search relevant process, documents conducted by a patent examiner, seeks to identify prior art documents to be taken into account in determining whether the invention is patentable. The opinion provides a written analysis of the patentability of the application, based on the cited documents. 11

12 EXAMINATION Filing Search Examination Grant Opposition Appeal THE EXAMINERS A panel of three expert examiners take into account the search report and the requirements for patentability of the EPC. The examiners check that the scope of protection is limited to what is actually patentable THE APPLICANTS The applicant must respond to the search opinion, by filing amendments (changes) to the description, claims or drawings and/or filing his observations on the objections raised in the search opinion APPLICANTS AND EXAMINERS discuss between them to determine whether the invention is patentable or not 12

13 OUTCOME Filing Search Examination Grant Opposition Appeal If the requirements of the European Patent Convention are met, the patent is granted. Claims could be granted according to the original version (as filed) or to an amended (modified) one. If not, the application is refused (with the possibility of appeal). All granted European patents are published. 13

14 VALIDATION From seven founding states in 1977 to EUROPEAN 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 European extension states Bosnia-Herzegovina Montenegro 2 Validation states Morocco Republic of Moldova 14

15 A NEW PROCEDURE: EUROPEAN UNITARY PATENT SYSTEM The European unitary patent will soon guarantee supranational protection for inventions in 25 countries across Europe. Austria Belgium Bulgaria Cyprus Czech Republic Germany Denmark Estonia France United Kingdom Greece Hungary Italy Ireland Lithuania Luxembourg Latvia Malta Netherlands Portugal Romania Sweden Finland Slovenia Slovakia ratified ratified ratified ratified ratified ratified ratified ratified ratified Source Delta Patents 15

16 WHAT IS GOING TO CHANGE EUROPEAN PATENT CONVENTION, EPC Grant Deadline to enter the national phase under the traditional route in at least one of the EPC contracting states: AT, BE, BG, CY, CZ, DE, DK, EE, FI, FR, GB, GR, HU, IE, IT, LT, LU, LV, MT, NL, PT, RO, SE, SI, SK, AL, CH, ES, HR, IS, MC, MK, NO, PL, RS, SM, TK 3 m 1 m Deadline to file the unitary effect request in the following states: AT, BE, BG, CY, CZ, DE, DK, EE, FI, FR, GB, GR, HU, IE, IT, LT, LU, LV, MT, NL, PT, RO, SE, SI, SK UNITARY EUROPEAN PATENT SYSTEM Italy Germany France Switzerland Croatia. 16

17 PROS AND CONS FOR THE UNITARY PATENT Upc system: Great when you win, but disastrous if you lose Geographical coverage guarantee with the EP patent with unitary effect Reduced costs for renewal fees and validation procedure Possibility of enforcement of the patent in all the participating states with a single action to obtain a rapid decision and possibly pan-european injuctions. Risk of a single nullity action in one State having effect in all the participating States No selective patent pruning possible 17

18 PATENT COOPERATION TREATY AND PCT PROCEDURE 18

19 PATENT COOPERATION TREATY The Patent Cooperation Treaty (PCT) assists applicants in seeking patent protection internationally for their inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in 148 countries throughout the world 19

20 PATENT COOPERATION TREATY UNIFIED PATENT PROCEDURE: filing of one international application with a national or regional patent Office or WIPO, in one language and one set of fees to pay. Simultaneous request of protection for all the Contracting States. INTERNATIONAL SEARCH REPORT: an International Searching Authority (ISA) identifies the published patent documents and technical literature ( prior art ) which may have an influence on whether your invention is patentable, and establishes a written opinion on your invention s potential patentability. NATIONAL PHASE: after the end of the PCT procedure, usually at 30 months from the earliest filing date of your initial application, from which you claim priority, you start to pursue the grant of your patents directly before the national (or regional) patent Offices of the countries in which you want to obtain them. 20

21 PCT PROCEDURE AS EXTENTION OF A NATIONAL PATENT START EXAM IN JAPAN Patent Procedures START EXAM IN USA PRIORITY PCT APPLICATION PRELIMINARY PCT EXAMINATION (OPTIONAL) ENTER INTO THE NATIONAL PHASES PCT is a procedure and not a patent: NO GRANTING nor rejection Just a unified procedure to apply simultaneously almost worldwide START EXAM IN EPO START EXAM IN START EXAM in OTHER CONTRACTING STATES IT FR GB DE 21

22 Thank you for your attention 22