OBTAINING A EUROPEAN PATENT VIA THE EURO-PCT ROUTE
A European patent can be obtained by initiating European regional processing of an international (PCT) patent application at the European Patent Office. This is called the “Euro-PCT” route and the application is referred to as a “Euro-PCT” application.
A Euro-PCT application is examined for patentability in the same way as any other European Patent application and confers the same rights.
Generally, if you want to obtain patent protection in three or more EPC countries (listed below), then it is cheaper to do this using the Euro-PCT route than by filing at each of the relevant national patent offices.
In some EPC countries, such as France, it is only possible to obtain patent protection via a PCT application using the Euro-PCT route.
The time limit for initiating regional processing at the EPO (entering the European regional phase) is 31 months from the earliest claimed priority date of the PCT application, or from the filing date if no priority is claimed.
If you miss the 31 month time limit, then it is still possible to validly enter the European phase within a two month time limit set by the EPO shortly after the 31 month date has passed. Late entry into the European phase involves taking additional procedural steps and paying significant additional fees.
If you want the EPO to process your application before the 31-month date, then you can request early processing.
You can initiate regional processing at the EPO by:
If the PCT application was not published in an official language of the EPO (English, French, or German), then you will also need file a translation of the application into an official EPO language.
You might also take other procedural steps, such as:
It is necessary to pay:
The following fees may also be due:
The fees due on European phase entry vary.
Generally, the minimum amount of official fees (assuming the EPO is not ISA) is around €3500.
The procedural details of this next stage vary, as set out below, depending on whether or not the EPO acted as the International Searching Authority (ISA) during the international phase.
After European regional phase entry, and before examination begins, the EPO will issue its “communication under Rule 161”. This communication sets a six month time limit within which the application can be amended, if wanted.
If you amend the claims then it is important to ensure that the amended claims have basis in the PCT application.
Excess claims fees (due for every claim over fifteen) can be paid at this stage, and are based on the number of claims on file at expiry of the six month time limit. You can therefore reduce the number of excess claims fees you need to pay by amending the application at this stage to reduce the number of claims.
If the EPO as ISA has already searched the PCT application in order to prepare the International Search Report (ISR), then its “communication under Rule 161” will require you to respond to any objections in the written opinion that accompanies the ISR.
Filing a response to the written opinion within the six month time limit is compulsory, unless a response has already been filed (e.g. on European regional phase entry) or there are no objections in the written opinion.
If the EPO as ISA considered that the claims cover more than one invention, then the written opinion that accompanies the ISR will relate only to “inventions” for which a search fee has been paid in the international phase. The EPO will examine one searched “invention” per application – other inventions may be pursued via one or more divisional applications. Note that there will be the opportunity to pay for additional search(es) with further rule changes coming into force on 1 November 2014 (see here for details).
If the EPO did not search the PCT application during the international phase, then it will issue a “supplementary” search report and opinion based on the claims on file at expiry of the six month time limit under Rule 161. Note that there will be the opportunity to pay for additional search(es) with further rule changes coming into force on 1 November 2014 (see here for details).
If the EPO considers that the claims cover more than one invention, then it will search only the first “invention” mentioned in the claims. You should therefore make sure that the most important aspect of your invention appears first in the claims, and to do this it may be necessary to amend the claims in response to the Rule 161 communication. The EPO will examine one searched “invention” per application – other inventions may be pursued via one or more divisional applications.
If the original PCT claims include multiple independent claims in the same claim category (product, process, use, apparatus) then it is advisable to amend the claims at the Rule 161 stage to consist of a single independent claim per category. Otherwise, the EPO may require you to select one claim per category for search. The EPO will not examine unsearched subject matter – this may be pursued via one or more divisional applications.
Once the Rule 161 time limit has passed, the EPO will send you its supplementary search report and opinion. Shortly after this, the EPO will invite you to respond to any objections in the opinion within a further six month time limit. Filing a response to the opinion is compulsory, unless it contains no objections.
After the Rule 161 stage, examination of the application begins.
During examination the EPO may issue one or more examination reports, setting out why the invention does, or does not, meet EPC requirements for patentability. An examination report may also raise objections against formal aspects of the application.
Each examination report sets a time limit for response (usually four months), giving you the opportunity to file amendments and/or arguments to try to persuade the examiner that the invention is worthy of a patent and the application is allowable. This can take time and involve further communication with the EPO, such as further examination reports, telephone discussions with the examiner, or even a hearing at the EPO.
When the EPO agrees that your invention is patentable, your application will be allowed and your patent will be granted.
Usually, the process from European phase entry to grant takes three to five years. It is possible to request accelerated search and/or examination. This can be done by simply filing a formal request for acceleration at the EPO.
The grant procedure has two stages7:
A. Once the application is allowed, you will be required to pay further fees and file translations of the claims in order for the European patent to be granted.
B. The granted European patent will only take effect in countries where it is validated. In order to validate the patent in some, but not all, EPC countries, it is necessary to translate the full text of the patent into the official language of that country. Translating patents is expensive so, depending on where you want your European patent to take effect, this part of the grant procedure may be costly.
Within nine months of grant, the patent may be opposed at the EPO by any other person. If it is opposed, then you can defend your patent by entering into opposition proceedings.
Once the European patent has been granted, it effectively splits into a group of separate national patent rights. You can choose to let your patent rights lapse in one or more countries, without affecting rights remaining in other countries.
Once your patent has been granted it is enforceable in each of the countries in which it has been validated, assuming that annual fees are paid. Anyone using your invention without your consent in those countries will be infringing the patent.
Action can be taken by instructing attorneys in the relevant countries to act on your behalf. A separate action is necessary in each country in which you wish to enforce your patent rights.
You cannot sue for infringement until the European patent has been granted. However, once your application has been granted, it may be possible to claim damages back to the date on which your application was published.
European phase entry
Intermediate stages – Rule 161 stage and examination
* These costs are typical for cases including relatively simply technology and straightforward legal issues. In more complex fields such as biotechnology, software or electronic hardware, costs are likely to be higher due to more complicated subject matter and a more difficult legal environment.
** Our in-house renewal fee service can handle these payments for you.
Any or all of the above countries can be designated in a European Patent application.
* Liechtenstein and Switzerland together count as a single designation.
A European Patent can also be “extended” to BOSNIA & HERZEGOVINA and/or MONTENEGRO. These “extension” countries cannot be designated as such in a European Patent application, but the national law in each country provides for “extension” into that country of the rights conferred by a granted European patent.
A European Patent Attorney can handle all aspects of obtaining a European Patent via the Euro-PCT route.
Employing a European Patent Attorney may increase your costs in the short term, but it is likely to give you a more secure European Patent.
If you would like to know more about certain aspects of the procedure mentioned here, then please see contact us for more information.
This information is simplified and must not be taken as a definitive statement of the law or practice.