In this section you will find information about the European patent.
- What is the European patent
- How to file a European patent application
- Granting procedure
- Keeping the European patent alive
- Duration and protection
The European patent is valid in the European states that have adhered to the European Patent Convention of which the states of the European Union and some neighboring countries are part.
The European patent is requested and obtained with a unitary procedure directed by the European Patent Office, often referred to as EPO (European Patent Office).
Anyone can file a European application, independently of its own residence or nationality, but s/he is obliged to be represented by a qualified EP Agent in case s/he does not have residence or nationality in one of the countries adherent to the EP convention (see the list of the Contracting states).
The European patent can be filed as an autonomous patent application or can be inserted as a regional patent inside an international patent application (PCT): this is the case of the Euro-PCT.
Before filing a patent it is necessary to examine thoroughly the invention and choose how to file it. If you have not done it yet, we suggest you read the section Filing a patent, which gives useful advice on the matter.
When the preliminary analysis has been done carefully and, as always advised, with the help of an expert consultant in the field, the filing of the application can be done.
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The European patent application can be filed with the EPO or with the Italian Patent and Trademark Office, which will forward it to the European Patent Office.
To file a European patent application it is necessary to fill in a series of forms downloadable from the website of the European Patent Office, where have to be indicated the data of the applicant who will become the holder of the patent, the title of the patent, the name of the inventor and a series of other information.
The official languages of the EPO are English, French and German therefore, the application and its attachments have to be written in one of these languages, and the chosen language will be the language for the entire prosecution.
The Description, the Claims and the technical drawings have to be attached to the forms.
The Description, first of all, has to highlight the technical problem that the invention wants to solve and the advantages deriving from the usage of the invention. All the main technical-constructive features of the solution proposed have to be described, with the help of the drawings attached. According to the type of invention, the functioning or the procedure with which a certain result is obtained will be described.
“Claims” are the most relevant part of the patent. They have to reproduce in an appropriate technical jargon, the elements on which the protection is sought.To understand the importance of the claims, it is enough to consider that in general what is described but not claimed is not object of protection. The claims are intended to be formulated in a “waterfall-like manner” meaning that the first one, which encloses the core of the invention, is the most important while the subsequent ones are a sort of specification of the first.
Technical drawings also will have to be prepared in such a way as to show well which the inventive solution that wants to be protected is. Therefore, it is unadvisable to attach too much detailed constructive drawings with measures and irrelevant particulars.
In order to proceed with the filing, the filing fee and the search fee, which vary depending on the length of the text and the number of claims, have to be paid. To know the official fees in force at the moment of the filing of the application, it is advisable to consult the Italian Patent and Trademark Office website.
Preparing a good patent application is as fundamental as a good analysis of the invention before filing it since on the basis of these preliminary choices depend the possibility of defending the patent in case of counterfeiting.
Once the patent application has been filed, an application number and a filing date are obtained, and from that moment the examination of the file initiates.
European patent applications undergo a novelty search done directly by the European Patent Office and forwarded to the applicant.
- Within 18 months from filing the application is published generally together with the novelty search;
- The applicant will have to choose whether to prosecute the procedure of exam by paying the examination fee and replying to eventual objections made in the search phase within 6 months from the publication date of said search;
- At that point, the file is assigned to an examiner who, on the basis of the text of the application filed, read in the light of the documents cited in the novelty search, and on the basis of the eventual reply filed as well, decides to grant the patent or not;
- In this phase, the applicant can send his further observations and replies to the examiner in case the latter is not willing to grant the patent and can also “adjust” the application to overcome eventual objections emitted by the Office.
In this regard, it is good to remember that absolutely nothing can be added to the text of the application since the invention is crystalized as described at the moment of the filing. Nevertheless, the claims can be limited or clarified, always remaining within the limits of what has been originally described.
If the examiner considers the patent acceptable s/he issues a favorable written opinion (the so-called Intention to grant) and forwards it to the applicant, who will have to pay the grant fee and file the text of the claims in the other two official languages within 4 months.
Once this has been done, the patent is granted through the emission of a Decision to grant and a number and a date of grant are assigned to it.
Once the patent has been granted, within 3 months from the publication of the Decision to grant, the patent will have to be validated in one or more states of the EP convention, freely chosen by the holder among those indicated in the application.
As it is commonly said, after grant the European patent “branches off” in a series of national patents that will be valid only in those countries where the original patent will be validated.
The validation consists, broadly speaking, of the filing of the translation of the granted patent in the national language of the state and of the payment of the national fees foreseen. The validation procedure, however, varies from state to state, therefore it is advisable to resort to an expert to know the specific national provisions.
The person who has obtained a European patent is not obliged to validate it in all the sates initially indicated, but can instead choose to validate it in some countries of his interest, thus reducing the costs.
During the grant procedure of the European patent, the application has to be kept alive by paying the annual maintenance fees directly to the European Patent Office.
In this phase, so as not to lose the rights over the patent, it is also necessary to reply to eventual observations or objections made by the Office and pay the relative fees. For example, if the examination fee is not paid the procedure is interrupted and all rights over the application filed are lost.
After the European patent has been granted and validated in the chosen countries, official fees are not to be paid to the EPO anymore. In order to keep the patent alive, annual maintenance fees will have to be paid to the national offices, in each nation where it has been validated.
Moreover, action can be taken against an infringer also on the basis of the single public patent application, with the assistance of an attorney expert in the field, to avoid mistakes that could compromise the success of such an action.
In the case of the European patent application, if, for example, an infringement procedure wants to be initiated in Italy, it will be necessary to proceed first with the publication with the Italian Patent and Trademark Office of the translation in Italian of the text of the claims that, otherwise, are not opposable to third parties.
Even if many months are necessary before the patent application is accepted (or maybe refused), in this period the invention can be realized, sold or licensed.
The European patent is valid for 20 years starting from the filing date.
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