How Do I Apply For A European Patent?

Filing a Patent Application:

The first stage to apply for a patent for an invention is to file a patent application for the same. To obtain an EU patent, there are three ways to file a patent application. The first way is to file an application in any country (which is a part of the Paris Convention) and claim the priority date of that country and enter the national phase by filing an application at EPO (within 12 months from the priority date) and claiming the priority from the previous country filed. 

The second way is without claiming any priority, which is directly filing an application at EPO. The priority date of this application will be the same as that of the filing date of the respective application.  

The third way is to file an application via the PCT route where an international application is filed first (at WIPO) followed by an application at EPO (within 31 months from the date of filing the international patent application). These applications can also claim priority directly from the international patent applications (PCT applications) filed previously. 

Apart from these three ways, the applicant can directly file a patent application at the respective national phase office rather than at EPO. These applications can claim priority from other countries (first way i.e., countries which are part of Paris convention & application is filed within 12 months from the priority date). However, as per current rules, if the applicant is following the PCT route then he/she can enter the EU national phase only through EPO. The applicant cannot approach a particular European country separately when taking the PCT route. 

As explained above, an EU patent application can be filed at EPO based on the three possible routes. While filing the application at EPO, the applicant must file it in any one of the official languages which are English, French & German. If filing in other regional languages, then the translated copies of the invention in any one of the official languages must be submitted along with patent application.  

Along with the request to grant application, invention description, translations, other procedural forms, and the necessary fees, the EU patent application can be filed at the EPO. Once an application is filed, a filing number is generated, and the filing date/earlier priority date is considered for the term of patent protection (which is 20 years from the date of filing/earlier priority date). Anyone who is a resident of Europe or has a legal representative in Europe can file a patent at EPO. 

Application Publishing & Examination 

If the patent application is a direct European patent application, it is generally published after 18 months and if it is a PCT application, it may be published after predetermined amount of time. Immediately after filing an application, the EPO conducts a preliminary search based on primarily the invention claims (however description and drawings are also considered if necessary) and draws up a search report named as European search report which comprises of the most relevant prior arts in the field of invention. This search report is also published along with the EU patent application at the EPO website. Along with the search report, the examiner also releases a search opinion which is a non-binding opinion and provides information on possibility or probability of obtaining grant for the submitted invention. This search opinion is not published at the time of application publishing but is available later on the website.  

A positive search opinion indicates a higher probability for a patent grant for the invention and a negative search opinion indicates that many closer prior arts are present in the field of invention. Based on the search opinion, the applicant can decide whether to proceed forward with the examination or to withdraw the application. This search opinion is highly useful in terms of reducing the cost on inventions which slim chances of getting a grant. However, as the search opinion is non-binding in nature, it is the final decision of the applicant to proceed forward with the patent prosecution. 

After the release of the search report, the applicant must respond within six months whether he/she agrees for substantive examination. Also, within this time period, the applicant must choose which are the designated countries he/she is willing to obtain the protection for the invention.  

During the examination, the examiner may raise the objections if the invention does not satisfy the patentability criteria or when the applicant does not comply with procedural or legal requirements. Once the applicant overcomes all the objections by making the necessary amendments and arguments and also complying with the other requirements, if the examiner is satisfied with the same, the examiner can recommend for the grant, and the same is published in the European patent Bulletin. 

Application Grant & Validation 

Once the grant is published in the European patent bulletin, officially there is a nine-month window where any interested party can raise an opposition stating the reasons why the patent should not be granted for the invention. If no opposition is raised within that window, then patent revoking can only done and that too with the respective national phase offices and not at the EPO.  

Also, once an application is granted, it is just a bundle of multiple applications for multiple countries. Not only the application must be granted but must also be validated in the respective national phase offices. Validation of the granted patent involves following the national patent laws of the respective patent offices and submitting the translated copies and paying the fees accordingly. 

Patent Maintenance

After grant, the patents must be maintained by paying the renewal fees regularly and followed up at the respective national phase offices. Not paying the maintenance fees may abandon the patent application in that particular country (does not affect other designated countries). In order to reduce the burden of individual follow-up, the applicant can also apply for a unitary patent once a patent gets granted. The unitary patent helps to obtain protection for up to 25 EU member states which are part of EPC.   

With the help of a unitary patent, a single application (with no multiple translations), a single maintenance fee (based on the number of designated countries), and a single legal representative (no requirement of a regional representative at each national phase office for the designated country) can be chosen and all the proceedings can be maintained at the EPO itself. Thus, an EU patent application is a single patent application with the power to obtain protection in multiple countries.