EP Patent Application

Procedure

Upon receipt of your instructions we prepare the EP patent application we will contact you first by telephone to clarify the details. It is also possible to make an appointment at our office to present your invention.

Frequently, we need further information which you can send to us by e-mail. Based on the information that you have provided and the national patent application or draft for it we prepare an EP patent application, including the patent claims, that we send to you for your perusal and approval.

Upon your approval we submit the patent application to the competent Patent Office. Upon our application for examination and the payment of the examination fee the EPO is examining whether the invention is new and inventive. If the EPO issues an office action we will repsort the office action and draft a response.

The patent is granted after about three - five years. It is made up of two main stages. The first comprises a formalities examination, the preparation of the search report and the preliminary opinion on whether the claimed invention and the application meet the requirements of the EPC. The second involves substantive examination. We will send you the certificate and inform you in good time of any pending deadlines, in particular the periods for payment of maintenance fees.

What is an EP Patent?

If patent protection is to be obtained in several European countries, an EP application should be considered. The amount of the fees is determined by the number of designated countries.

Protection of objects, such as machines and their parts, arrangements of individual parts, electronic circuits, chemical substances or medicinal products, can be protected by product claims. An EP application usually makes sense from a cost perspective if you want to designate more than 4 to 5 member states of the European Patent Convention.

Compared to national applications, the EP patent application has the advantage that it is centrally examined for patentability. The EPC has established a single European procedure for the grant of patents on the basis of a single application and created a uniform body of substantive patent law designed to provide easier, cheaper and stronger protection for inventions in the contracting states.

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

In each contracting state for which it is granted, an EP gives its proprietor the same rights as would be conferred by a national patent granted in that state. If its subject-matter is a process, protection is extended to products directly obtained by that process. Any infringement of an EP is dealt with by national law.

A published EP patent application provides provisional protection which is no less than that conferred by a contracting state for a published national application and which must at least include the right to reasonable compensation in the event of wrongful infringement.

The standard term of a European patent is twenty years as from the date of filing. Provided that the annual renewal fees are duly paid, patents remain in force for the maximum term.

Cost of patent application

The costs of a patent application are made up of the fees of the patent office and the fees of the lawyer. Our flat fee include the fees of the patent office as well as the attorney fees. The flat fee covers the attorney and official fees for drafting and filing the application, for answering office actions and for the grant of the patent.

How long does a granted patent stay valid?

The maximum term of a European patent is 20 years from its filing date. The patent may lapse earlier if the annual renewal fees are not paid or if the patent is revoked by the patentee or after opposition proceedings. In certain cases (medical or plant protection product patents) it is possible to extend the period of protection.

Should I file a national, EP or PCT application?

The EP and national patent grant procedures exist in parallel. When seeking patent protection in one or more EPC contracting states, you can choose either to follow the national procedure in each state or to take the European route, which confers protection in all the contracting states that you designate in a single procedure.

If you want to patent your invention in one particular country, you will need to contact the national patent office of the country concerned.

If you decide that you want an EP patent, you have the choice between the direct European route and the Euro-PCT route. With the direct European route, the entire procedure is governed by the EPC alone. With the Euro-PCT route, the first phase of the grant procedure (the international phase) is subject to the PCT (Patent Cooperation Treaty), while the regional phase before the EPO as designated or elected Office is governed primarily by the EPC.

Can I use the priority of my national patent application when filing an EP application?

Yes. If you or your predecessor in title have filed an application for either a patent or the registration of a utility model or a utility certificate in or for any state party to the Paris Convention for the Protection of Industrial Property (176 states) or any member of the World Trade Organization (160 states), you may claim priority when filing a European patent application in respect of the same invention. You should do so no later than 12 months after filing the first application.

If the previous application was filed in or for an EPC contracting state, you may also designate that state in the European application. The previous application whose priority you claim may also be a European or international (PCT) application.