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Before entrepreneurs and startups try to protect their intellectual property rights in Europe, they must have a basic understanding of the European patent system and the ways that they can obtain European patent protection. Although European patent prosecution can be a complex and costly process, companies should certainly consider creating a European patent portfolio.
Geographically, Europe includes 45 countries. The European Patent Office (EPO), is a unified patent office located in Munich, Germany, created by the European Patent Convention (EPC) Treaty. The EPC includes 38 member states plus two extension states. The EPO offers a centralized procedure for filing a European patent application, enabling an inventor to make one patent filing in the EPO {e.g. either directly or by entering a national phase of a Patent Cooperation Treaty (PCT) application} instead of 38 national applications. Upon grant, the patentee can register and file translations of the patent in any of the previously designated individual member countries. By filing through the EPO, the local patent offices in each EPC country will not need to independently review the application. Unless the inventor is a resident of one of the EPO member countries, the inventor must file in the EPO through a European patent agent.
The process before the EPO includes the following main steps: filing, search, publication, examination, grant, opposition (if filed by a third-party), and payment of fees (until grant). If an application contains a plurality of independent claims, which is often the case when the application was originally filed in the U.S., applicants are invited to limit the number of independent claims before the search in the EPO begins. The best approach is to have one independent claim in each category (e.g. method or apparatus/system). If the number of independent claims is not so limited, the search will be carried out on the basis of the first independent claim in each category.
The EPO performs a prior art search and issues a European Search Report and Opinion. The Search Report is published within 18 months of filing of the EP application. Since 2011, search results from other patent offices are used during the search by EPO. For example, the EPO can use search results, search opinions or examination reports (i.e. at least a relevant part of the reports concerning the search) submitted by the Applicant from various origins (e.g. Japan, Korea, U.S., PCT). No translation of the foreign search results is necessary and no copies of cited prior art documents are required. Applicants can submit these search results either upon filing the EP application, at the entry of the national‐phase (PCT), or as soon as they become available. The search results from other patent offices have no binding effect and do not replace EPO search or examination.
Applicants must request examination of the EP application within six months of the filing of the European Search Report. Further, the Applicant is obligated to correct any deficiencies noted in the search opinion when requesting examination. During examination, the EPO can issue actions with various rejections or objections to the application. The Applicant can amend the pending claims of the EP application in order to overcome any such rejections presented by the EPO. After the EPO issues a decision to grant a patent, an opposition by a third-party may be filed against the application. The opposition procedure before the EPO is an administrative, inter parties procedure that allows any European patent granted by the EPO under the EPC to be opposed by any person from the public (no commercial or other interest whatsoever need be shown). An opposition must be filed within nine months from the publication of the mention of grant of the European patent in the European Patent Bulletin.
The European patent confers rights on its proprietor, in each designated country in which it is registered, from the date its grant is published in the European Patent Bulletin. Translation of a granted European patent must be filed in some EPC Contracting States to avoid a loss of that right. Therefore, filing and prosecuting an EP patent application can be expensive and requires payment of various fees. For example, annuity payments to the EPO are required each year the EP application is pending. If the inventor registers the patent in any of the EPC member countries, the inventor must pay annuities to maintain the patent in that country as well.
The European Union has plans to introduce a Unitary Patent in the near future. As discussed above, applications for a European Patent currently need to be filed with the EPO in Munich and then translated and refiled in each applicable EPO member state. Under a Unitary Patent system, applications will only be translated into the three official languages of the EPO – English, German, and French – and they will not need to be filed in each country where the patent is to be recognized. Twenty-five EU member states will participate in the Unitary Patent system, with Spain and Italy currently declining to join.
© MICHAEL BEST & FRIEDRICH LLP
