Europe

What to expect when filing a patent in Europe?

With the EPO (European Patent Office), the prosecution process typically takes about four years until grant from the time you file a patent in Europe. After the application is granted you will be required to translate only the claims into the two remaining official languages of French and German. Then comes the validation stage, when you will be able to validate in eligible countries, typically within 3 months. Translation requirements differ from country to country, some require no translations, some require translation of only the claims, and some require the entire application to be translated.

When is the National Phase Deadline for a patent in Europe?

The national phase deadline in Europe is extended to 31 months from the priority date.

What is the excess claims fee in Europe?

The official excess claims fee must be paid within six months after receiving the notification from the EPO. These additional fees can be paid when filing the regional stage or at a later stage, with the reply to Communication pursuant R.161 & 162. The time frame to file the reply and amend the claims usually is six months after the regional entry. If the claims set is amended to comprise of only 15 claims, no additional fees are to be paid.

When to file an amendment for a patent in Europe?

After the initial filing, the EPO will issue an R161(2) EPC notice with a deadline set to approximately 8 months after your filing date. The R161(2) notice is an invitation to either pay any excess claims fee or optionally file an amendment prior to the examination. In order to help and better the understanding of the EPO examiner, it is advisable to file the Working Copy (WC) of the amendments to be filed.  A Working Copy is a Word document showing tracked changes made from the original PCT application up to this regional phase in Europe so that the EPO examiner can easily reach the corresponding amendments.

What is a PACE Request for a patent in Europe?

A PACE request will accelerate the search and/or examination of the application, this will speed up the process until grant in Europe. A PACE request may be filed only once during each stage of the procedure, i.e. search and examination. A PACE request filed during search will not trigger accelerated examination. If the applicant wishes to have the application examined in an accelerated manner, a PACE request may be filed, once the application has entered the examination phase.

What are the PPH (Patent Prosecution Highway) requirements for a patent in Europe?

The Patent Prosecution Highway (PPH) is a programme to fast-track patent examination if you have a granted patent already.

It allows you to request accelerated processing of a European application if the claims have been deemed patentable/allowable by another office. At the same time, it enables the EPO to re-use the work done at other offices.

For participation in the PPH pilot programme at the EPO the applicant has to:

(1) file a request for participation in the PPH pilot programme. The hereby attached request form EPA/EPO/OEB 1009 (Participation in the Patent Prosecution Highway (PPH) pilot programme). We would fill it in for you.

 (2) file a declaration of claims correspondence which is included in the same request form EPA/EPO/OEB 1009. We would fill it in for you.

(3) submit a copy of the latest work product in the international phase of a PCT application, the WO-ISA or, where a demand under PCT Chapter II has been filed, the WO-IPEA or the IPER and a translation thereof in one of the EPO official languages.

(4) submit a copy of the patentable/allowable claim(s) from the OEE application(s) and a translation thereof in one of the EPO official languages.

(5) submit copies of all the documents other than patent documents cited in the OEE office action(s) or the PCT work product identified in point (3) above.

When the requirements set forth above are met, the request for participation in the PPH pilot programme will be granted and the EP application will be processed in an accelerated manner. In those instances where the request for participation in the PPH pilot programme does not meet all the requirements set forth above, the applicant will be notified and the defects in the request will be identified. The applicant will be given one opportunity to correct formal deficiencies identified in the request. If the request is not corrected, the application will be taken out of the PPH pilot programme and the applicant will be notified. It is not possible to provide you with the time it generally takes from filing until granting because it depends on the concrete cases and the backlog of the EPO. Please, bear in mind that if the ISA of the PCT is not EPO, EPO will carry out its own search.

What are the member states for a patent in Europe?

The member states of the EPO are Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Macedonia, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, and the United Kingdom.

What are the extension countries for a patent in Europe?

The “Extension States” are States that are not EPC Contracting States and, thus, cannot be “designated” in the European patent application. However, the European patent (application) can be “extended” to said States under a corresponding bilateral “extension agreement,” provided that the “extension fees” are timely paid.

The extension countries include: Bosnia y Herzegovina (BA) and Montenegro (ME)

What are the validation countries for a patent in Europe?

Since March 2015 it is possible to validate European patent applications in Morocco, where, after validation, they will confer essentially the same protection as patents granted by the EPO for the other member states of the European Patent Organization. Validation for Morocco is deemed requested for any European or international application filed on or after 1 March 2015. As with the extension states designation, the validation fee must be paid at the time of performing the entry into the European Phase.

Non-member Validation countries include: Morocco (MA) and Republic of Moldova (MD), Tunisia (TN), and Cambodia (KH)

Starting this year the Unitary patent option goes into effect which offers a broad scope of protection across multiple countries at a flat fee. For more information please refer to https://www.hyaip.com/en/news/unitary-patent-key-points-for-requesting-unitary-effect/

When to pay grant and renewal fees for a patent in Europe?

The grant fee must be paid within four months of the EPO communication. Annuities apply to pending applications and are due on the anniversary of the international filing date. In Europe, after grant, the renewals will be paid to the individual patent offices of the countries you extended your protection to and you will no longer pay a renewal to the EPO.