Conceiving the invention, quality patent drafting and effective prosecution to get the patent granted are the key steps involved in patenting process. As of today, there are three routes available to file the patent application in Europe. An application for patent can be filed directly at the European Patent Office (EPO) or directly at the European national patent office within 12 months from the priority date or earliest filing date. Another option is filing via PCT (Patent Co-operation Treaty) route. The PCT filing option allows the applicant to enter into Europe within 31 months from the first filing date or priority date.
In Europe, the patent prosecution must be carried out in one of the EPO’s official languages which are English, French or German. Patent specification drafted in other than the official language requires translation. Along with the necessary documents official fees has to be paid. In addition to the regular filing fees, EPO charges extra fees if the patent specification, which includes drawings if any, exceeds 35 pages and claim exceeds 15. At OutsourceIP, we closely work with the clients to draft high-quality patent specification and claims and the patent draft is cost effective as well.
Once the compliance of the application with the formal requirement is met, the search division carries the search and provides the search report which contains the prior art documents. The search report is accompanied by a written opinion which generally requires the application to comply with the following Articles namely; Article 52 which deals with patentable inventions, Article 54 deals with novelty, Article 56 deals with inventive step and Article 82 deals with the unity of invention of EPC. In general, the written opinion contains rejections based on novelty and inventive step. Novelty based rejections stating that the single prior art describes the invention. Inventive step based rejections involve two types; problem-solution approach and COULD WOULD approach. At OutsourceIP, we work with the clients to overcome the rejections based on novelty, inventive step, etc.
The applicant has to reply to the objections, if any, mentioned in the preliminary opinion and search report. The applicant can amend the description, claim and drawings if any in line with the scope of the application while replying to the preliminary opinion or search report. OutsourceIP patent attorney’s remedy the objections detailed in the written opinion and search report and guide the clients to file a divisional application if required.
The patent application publishes once the 18 months from the first filing date or priority date lapses. Once the patent application publishes it confers provisional patent protection to the applicant. Therefore, at the initial stage itself, it is advisable by OutsourceIP attorneys to specifically disclose the potential commercial product or process in the specification and claim the same. The examining division of EPO carries the examination of the patent application once the applicant files request for examination. Generally, the first communication from the examination division recites the written opinion and search report and informs the applicant to file observations in order to comply with the EPC Articles.
The applicant replies to the objections from the examiner by providing an amendment to the specification, claims and drawings. If the examiner found that the patent application is not in compliance with the EPC then he continues the examination procedure and provides further communications. In practice, the examiner issues 3 to 4 communications and if not satisfied with the written responses from the applicant then there is an option available to the applicant for an interview and at any time the applicant requests for oral proceedings. At OutsourceIP, we prepare the response to the objections by careful review of the objections and the necessary technical documents and also attend the oral proceedings for the clients. Further, while amending the claim or specification, OutsourceIP attorneys discuss with the clients and take due care to draft the claim covering the invention which is having the true commercial potential.
EPO provides an option to the third party to oppose the grant of a patent by means of filing third-party observations, typically known as TPO, which can be filed anonymously. OutsourceIP patent attorneys provide technical and legal inputs to the innovator to reply to the TPO in order to get the patent application granted.
The examiner grants the application once it is in compliance with the EPC Articles. Upon grant, the applicant has to file a translation of the granted claims into the remaining two official languages of the EPO in due time. OutsourceIP patent professionals provide a quality translation of patent and other documents. Once the patent granted by the EPO, it has to be validated in the desired countries according to their patent law. As of now, there are 38 states and 2 extension states are members of the EPC. Patent maintenance fees have to be paid annually in order to maintain the patent in force so that it can be enforced against the third party practising the claimed invention without the consent of the patentee. With the robust patent docketing system, we remind our clients to pay the annuity fees in due time periodically.
Currently, the unitary patent system provides uniform patent protection with a single patent across all the contracting member states. Upon grant of the patent by the EPO, the applicant has to file a request for unitary effect before the EPO. It is believed that the UPP will become operational in early 2018 as the contracting member states are working on it.
In general, the patent practitioner believes that the European patenting process involves complex procedures when compared to rest of the patent offices like the United States and India. At OutsourceIP, we work with the clients to make the European patenting process simple.