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Distinctive Features of EP Patent Laws
Distinctive Features of EP Patent Laws
In recent times, an increased number of inventors and applicants have been aiming for patent protection in European countries. The European Patent Office (EPO) provides a path for inventors and applicants to obtain patent protection in the countries under the purview of the EPO in accordance with the rules and regulations set out in European Patent Convention (EPC).
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In 2021, a total of 1,88,600 applications, including direct applications and national phase of international applications, were filed at the EPO. Detailed statistics report of EPO for the year 2021 can be found here. The graph below demonstrates a breakdown on the basis of the origin of the patent applications:
Within the EPO countries, the most patent applications originated from Germany in 2021, followed by France and UK. Below graph demonstrates a breakdown of the top 5 EPO countries that filed the most applications in 2021.
One of the important features related to patent protection in Europe is the very establishment of European Patent Convention. Currently, there are 38 contracting states of the EPC.
Applicants developing inventions in various technological domains have different options for filing a patent application. For instance, applicants can file separate national patent application in countries where protection is desired, applicants can file an application before EPO, and applicants can file an international application in accordance with Patent Cooperation Treaty (PCT).
A few distinct features applicable for applications at the EPO are as follows:
Grant of a ‘European Patent’
The EPC regulations provide a single harmonized legal system for filing and obtaining ‘European patents’. A granted European patent, which even though by name would suggest a single unitary patent, is essentially a ‘bundle’ of individual national patents.
The granted European patent is not automatically enforceable in all contracting states of the EPC and contracting states in which enforcement is desired have to be selected as designated states. In some contracting states, the patent must be validated by filing a translation of the specification or at least the granted claims into one of the official languages of that contracting state, along with payment of fees.
Failure to do so prohibits the proprietor to enforce the patent in that designated contracting state. Applicants thus need not file separate applications in separate countries, rather, a single application can be filed at the EPO and validated in designated contracting states.
Applicants in Different Contracting States
Where the applicants for or proprietors of a European patent are not the same in respect of different designated contracting states, they are considered as joint applicants or proprietors for the purposes of proceedings before the European Patent Office.
The unity of the application or patent in these proceedings is not affected; in particular, the text of the application or patent remains uniform for all designated contracting states. However, the European Patent Office grants the European patent to each applicant in the corresponding contracting state for which they have applied.
A granted European patent can be opposed within 9 months of publication of grant at the EPO. It is important to note that a European patent is enforceable at the national level on the basis of the respective laws in the designated contracting states.
Opposition can be considered as a last attempt to invalidate the European patent, as a ‘single bundled entity’, at the EPO. After that time period, the invalidity of the patent has to be dealt at national level separately in each designated contracting state.
The official languages of the European Patent Office are English, French and German. A European patent application can be filed in one of the official languages or, if filed in any other language, translated into one of the official languages.
Throughout the proceedings before the European Patent Office, such translation is brought into conformity with the application as filed. If a required translation is not filed in due time, the application is be deemed to be withdrawn.
Certificate of Exhibition
Any use of the invention in public is considered a prior art in the proceeding of European patent application. However, applicants can get a grace period of 6 months for display or presentation of the invention in a trade show. For the same, a certificate of exhibition obtained from the authority is to be submitted to the EPO within 4 months of filing of the patent application.
Examination of Application
A patent application is published along with a search report 18 months after the date of filing or the priority date. Applicant can decide whether they want to pursue for patent application or not based on the search report. The EPO performs substantive examination for patentability of the applications for which requests for examination have been filed.
EPO also has some distinctions in terms of requirement of a patent specification and prosecution process:
No Provisional Patent filing
EPO does not support filing of provisional patent applications. However, the EPO provides a period of 2 months for filing of claims after filing the specification to the EPO.
The description should clearly explain the invention and include all essential features of the invention. Any feature which does not contribute to technical effect may be generally considered as non-essential feature.
While amending a claim, it is advantageous to have literal support for the amendments to be carried out. In some cases, implicit support may be accepted.
It is the only way of continuing a parent application. There is separate fee for renew of divisional application. There are no provisions such as continuation or continuation-in-part of the application.
Eligible Subject Matter
A patent application pertaining to a software related invention requires technical character. Inventive step of the invention should be non-obvious to a skilled person and technical in nature. The invention should address a technical problem to provide a technical solution.
Estimated cost for a patent application with EPO is around 5000 Euros. Below is provided current official fees for a European patent application.
|Parameters||Fee (in €)|
Online Filing Fees - Filing by Contracting State or National Phase Filing or International Application (35 pages, 15 claims)
For each additional page
For each additional claim from 16 upto 50
For each additional claim from 51
European or Supplementary European Search
Designation Fees (for each state)
Publication of Spec. upon Grant
Poorti Joshi & Prabhanjit Singh