1 the european patent granting procedure domenico golzio european patent office [email protected]...

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The European Patent Granting Procedure

Domenico GolzioEuropean Patent Office

[email protected]

Cyberlaw TorinoTecnologie digitali e diritto nell’era della Rete

12 - 13 Luglio 2004Fondazione Giovanni Agnelli - Torino

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Domenico GolzioItalian

Degree in Physics

11 years Telecom, Car, Aerospace Industry 25 Technical Papers 3 Patents

1990 European Patent Office – Munich1997 European Patent Office – The Hague Patent Examiner: Search - Examination - Opposition

2002 Co-ordinator International Co-operation

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The Inventing Process

I have an idea!!!

How can I protect it?

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Intellectual property Rights (IPRs)

Patent

Registered Design

Trade Mark

Copyright

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What is a Patent? A contract between an inventor and a state

Inventor

1. Protection for about 20 years2. Exclusive rights to produce, use,

sell and import the invention

• to recoup investment in R&D• to strengthen market position and

competitiveness

State

1. Publication of the invention

• to spread new technical knowledge• to avoid R&D duplication• to foster innovation

Patents are granted to inventions which are Novel, Inventive (non obvious), suitable for Industrial Application when considered against the Prior Art

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Patent Rights

• Exclusive right: nobody can produce, use, sell or import your invention (patent infringement)

• Territorial right: a patent in one state does not affect patent in other states

• Timed right: protection from a certain date to another date

• Transferable right: you can assign or sell (license) your own patent/patent application to others

• One-Time right: when a patented product is put on the market the patent right is exhausted

• Passive right: prevents others to exploit your invention, does not guarantee that you will exploit it

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Patent Protection

A) National Patent Application

B) International Patent Application PCT

C) European Patent Application

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Patent Protection National Patent Application

one application for one state

one procedure for each state

one patent for one state

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Patent Protection International Patent Application PCT

one application for up to 115 PCT member States

International Search Report and International Preliminary Examination Report

EPC states can be collectively designated as a region

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Patent Protection European Patent Application

one application filed at one Office for “N” contracting states

one procedure for all “N” states

one EP patent for all “N” states

Cost –Effective (costs less than 3 national patents)

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Austria

Belgium

Switzerland

CyprusGermany

Denmark

Spain

FinlandFrance

United Kingdom

Greece

Ireland

Italy

Liechtenstein

Luxembourg

Monaco

Netherlands

Portugal

Sweden

TurkeyBulgariaBulgaria

Czech RepublicCzech Republic

EstoniaEstonia

SlovakiaSlovakia

European Patent Convention

28 Member States

European Patent Convention

28 Member States

RomaniaRomania

SloveniaSlovenia

HungaryHungary

PolandPoland

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The Actors of the PatentGranting Procedure

Inventor/Applicant Representative European Patent Office (EPO)

publishes

Unexamined Patent Applications (A)

Contract Proposal

Granted Patents (B)Final Contract

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European Patent Convention ‘EPC’

Articles

Rules

CaseCase LawLaw

* Guidelines

* Internal Instructions

Search

Examination

*

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... support innovation, competitiveness and economic growth for the benefit of the citizens of Europe.

... set patent protection standards which responds to the needs of the system’s users

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FilingFilingFilingFiling SearchSearchSearchSearch OppositionOppositionOppositionOppositionPublicationPublicationPublicationPublication ExaminationExaminationExaminationExamination GrantGrantGrantGrant

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Representative

• Professional representative Art 134 EPC• National of a Contracting State • With his place of business in a Contracting State

Who has passed the European Qualifying examination

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Where can the inventor file?Art 75(1) EPC

• EPO Munich• EPO The Hague• EPO Berlin Sub-Office• Patent Office of Contracting State

– If national law permits• All Contracting States except NL

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What languages can he file in?

• Art 14(1)EPC: EPO official languages

•Art 14(2) EPC: non-EPO language•language of Contracting State•His own language•Language of his state of residence•With translation within 3 months of filing date

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Contents of a European Patent Application

Art 78(1) EPC

• Request for grant

• Description of the invention– Disclosure of prior art– Detailed description

• Claims

• Drawings

• Abstract

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Receiving Section

• Receives application and carries out first treatment of file

• Examination on filing Art 90 EPC

• Examination as to formal requirements Art 91 EPC

• Treatment of subsequently filed documents

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What is the aim of the Search?

• To find the most relevant State of the Art

• The State of the Art is all information, relevant to the patentability, made available to the public (in writing or orally) prior to the date of filing of the patent application Art 54(2) EPC

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Where do we search?

• The EPO Database EPODOC which contains over 30 million prior art patent documents

• Other databases (WPI, PAJ, INSPEC etc.) and the Internet may also need to be consulted

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SEARCH: is it Hopeless?

I have read 2 Million documents andI still haven‘t found anything relevant!

ENORMOUSTASK!!!

HELP!HELP!

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Documentation to the rescue!

• Every prior art document in the EPODOC database is classified according to its content

• Based on its class a patent or non-patent document is physically stored in a corresponding classification unit

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SEARCH: it is possible!

• Only documents in relevant classification units need to be searched

Thank Heavens I only need to search few classes!

I‘ve got it!

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How are the classification units organized?

• In the past, paper documents were stored in special cabinets according to their classification

• But with 130000 defined classes.....

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Organization of classified documents

• Electronic storage of documents is essential

• In the year 2003 EPO documentation consisted of:– 32,1 million published patent

documents– 4,6 million technical articles– Access to 50 million abstracts of

articles

Accessible for free via esp@cenet !!!

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Who carries out the search?

• Examiners

– Carry out the search Art 92 EPC

– Classify the documents

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Search ReportArt 92 EPC - Rule 44 EPC

A search report is drafted listing the state of the art documents:

1. Publication Data (applicant, publication date)

2. A letter code (X,Y,A) which identifies the degree of relevance

3. An indication of the most relevant parts of the documents

4. International Classification (IPC) of the application

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Search Report

• No communication between Search Division and Applicant

• Applicant cannot amend content of description, claims or drawings before the Search Report R.86(1) EPC

• Search Report is sent to applicant with copies of cited documents Art. 92(2) EPC

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Publicationof a Patent Application

• All European Patent applications are published as soon as possible after the expiry of a period of 18 months after priority Art. 93(1) EPC

• Applicant can request early publication Art. 93(1) EPC

• Publication in language of Proceedings Art. 14(6) EPC

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Publication Contents Art. 93(2) EPC

• Front page with:• Bibliographical data of Application• Publication Date• IPC Classification• Designated States• Title R.33(1) EPC• Abstract R.33, R.47 EPC• Main Drawing(s) R.33(4)EPC

• Description• Claims• Drawings• Search Report if available Art. 93(2) EPC

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Publication Types

• A1 Publication – Front Page + Application + Search Report

• A2 Publication– Front Page + Application (No Search Report)

• A3 Publication (only after A2)– Front Page + Search Report

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Publication of Patent Application-vs-

Granted Patent

• Publication of the Patent Application is not the final Patent

• The granted Patent is published after the Examination and Grant Procedure (publication type B1)

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Publication of Application Legal implications

• Application contents become part of the state of the art Art 54(2) EPC

• Provisional Protection Art 67, Art 69 EPC• Third Party Observations Art 115 EPC• Application data entered in public EP

Register Art 127 EPC• Application file open for public inspection

Art 128(4) EPC free file inspection via epoline !!!

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Publication of Search Report Legal implications

• Triggers 6-month time limit for payment of designation fees Art 79(2) EPC

• Triggers 6-month time limit for filing the Request for Examination Art 94(2) EPC

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Overview

• The examination division

• The claims

• Patentability

• Refusal or Grant

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Examining DivisionArt 18 EPC

• Examining Division consists of three examiners:

- 1st Member, 2nd Member and Chairman

- 1st Member corresponds with the Applicant

- Examining Division decide together whether to grant or refuse the application

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Substantive Examination Procedure

Art 96(2) EPC

Request for examination

Examining Division Appointed

1st Examiner Applicant

Examining Division

Intention to grant

B

Decision to refuse

B

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The ClaimsArt 69 EPC

• They define the scope or extent of the protection of the patent– But the description and drawings are used to

interpret claims

• They are the most important part of the application for the Examining Division

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Introduction to Patentability

• What are the main requirements for granting a patent application?

– Novelty Art 54 EPC– Inventive Step Art 56 EPC– Industrial Applicability Art 57 EPC

• Problem Solution Aproach used to assess Inventive step

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The Grant Art 97(2) EPC

At least two members of the Examining Division agree that the application meets the requirements of the European Patent Convention

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Refusal Art. 97(1) EPC

• If the Examining Division is considering refusing the application

• The Applicant has the right to be heard• He can ask to present his arguments face to

face in Oral Proceedings Art 116 EPC before the division

• If at least two members of the Examining Division are still not convinced the application is refused

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Grant Rule 51(4) EPC

• Approval of the final text

• Fees for grant and printing

• File translation of claims in the other two official languages

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Entry into the “National” Phase

Filing of translation of the patent specification Appointment of a representative

Payment of “special” fee

Payment of “national” renewal fees

Registering a transfer, licenses and other rights

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FiFillingingFiFillinging SearchSearchSearchSearch OppositionOppositionOppositionOppositionPublicationPublicationPublicationPublication ExaminationExaminationExaminationExamination GrantGrantGrantGrant

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A Brief Introduction to Opposition

• Overview

– What is it?– Opposition Division– Revocation or Maintenance– Advantages

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Definitions

• Opposition is a centralized EPO procedure for challenging the validity of a granted European Patent

• Art. 99 EPC– It must be filed within 9 months of the

mention of grant being published– It can be filed by any person

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Why do we need opposition?

• It allows the introduction of disclosures which may not have been available to the Examining Division– Oral disclosures– Prior use– Proprietary disclosures e.g. manuals

• It also allows the public to challenge the Examining Division’s assessment of patentability

(e.g. Greenpeace opposition to the ‘Edinburgh Patent’ in 2000)

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How does it work?

Oppositions proceedings are adversarial:

- the patent proprietor and the opponent battle it out amongst themselves

- the Opposition Division arbitrates and takes the final decision

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Opposition

OpponentOpponentOpponentOpponent ProprietorProprietorProprietorProprietor

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Opposition Division

• 3 members

• At least 2 of whom did not take part in the Examination Proceedings

– Usually first examiner from Examining Division plus two others

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The Opposition Procedure Art 101(2) EPC

OppositionOpposition

DivisionDivisionOppositionOpposition

DivisionDivision

OpponentOpponentOpponentOpponent ProprietorProprietorProprietorProprietorCounter- Counter-

arguments arguments

and/or and/or

amendmentsamendments

Counter- Counter-

arguments arguments

and/or and/or


OppositionOppositionOppositionOpposition

DecisionDecisionDecisionDecision

Counter-Counter-

arguments arguments

and/or and/or


Counter-Counter-

arguments arguments

and/or and/or


OppositionOppositionOppositionOpposition

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Possible Decisions

1. Revoke the patent in its entirety: Patent no longer exists

2. Maintain the patent in amended form: Claims are restricted

3. Maintain the patent in unamended form: Claims maintained as granted

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Advantages of Opposition

• Patent is revoked for all designated states

• Cheap compared to proceedings before national courts (613 Euros)

• Possibility of appeal• Use of a ‘straw man’ is allowed• 2000 oppositions filed in year 2000

– only 5.7% of granted patents opposed

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Opposition Summary

• Centralized procedure for challenging a granted EP patent

• Allows introduction of disclosures not available to examining division

• Much cheaper than national revocation proceedings

• Revocation for all designated states

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Appeal


Boards of AppealBoards of AppealBoards of AppealBoards of Appeal

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Boards of Appeal

• Legal Board– Appeals relating to legal matters e.g. refund of fees

• Technical Board– Technical matters in examination e.g. refusal for lack

of novelty

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Appeal Procedure Art. 106-111EPC

• From decisions of – Receiving section– Examining division– Opposition division

• Any party adversely affected• Examination of Appeal

– Suspensive effect

• Decision

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Decisions in Respect of Appeal

• First instance decision upheld

• First instance decision rectified– Possible remittal to first instance with

instructions

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Enlarged Board of AppealArt 112 EPC

• Important legal questions from Boards of Appeal– During appeal proceedings

• Points of law referred by President– Conflicting decisions given by different Boards of

Appeal

• Not a further instance

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Costs for an EP (average) (01.06.2001)( 8 states; duration of 10 years)

Costs for an EP (average) (01.06.2001)( 8 states; duration of 10 years)

EPO EUR 4.300

Filing EUR 800S&E EUR 2.400Grant EUR 1.100

% of total 13 %

EPO EUR 4.300

Filing EUR 800S&E EUR 2.400Grant EUR 1.100

% of total 13 %

Professional Representation EUR 6.100

% of total 20 %

Professional Representation EUR 6.100

% of total 20 %

Translations in contracting states

EUR 11.800% of total 38 %

Translations in contracting states

EUR 11.800% of total 38 %

Yearly Taxes EUR 8.500

% of total 29 %

Yearly Taxes EUR 8.500

% of total 29 %

Total Costs

EUR 31.100

Total Costs

EUR 31.100

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Thank you!!

If you have further question, please consult www.epo.org

or write to [email protected]

1 the european patent granting procedure domenico golzio european patent office [email protected]...

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