European Patent Protection
A European patent (EP) application goes through a centralized examination within the regional phase with the European Patent Office (EPO), and, if granted, this patent has the same effect as national patents granted by all contracting states, and so being subject not only to the provisions of the European Patent Convention (EPC) but also to national laws of individual member states, provided that, after it is granted, the validation is effected in each country where it is desired to obtain national patent protection. That way, the granted European patent would become a bundle of individual national patents in Europe.
Euro-PCT Applications. A European patent with the EPO can be also designated using the international PCT patent route by entering the European regional phase on or before 31 months from the earliest claimed priority date of the PCT patent application or from its filing date when no earlier priority was claimed, considering that some countries of the EPC can only be entered via this regional Euro-PCT route. The states that cannot be designated nationally (national phase entry) from a PCT application are as follows; Belgium, Cyprus, France, Greece, Ireland, Italy, Latvia, Monaco, Malta, Netherlands, Slovenia.
Main Points of European Patent Protection
Regional Office. European patents are ruled by the European Patent Office (EPO) with headquarters in Munich, Germany as well as their branches in Berlin, Germany and The Hague, Netherlands.
Reasonable Protection Costs. Although the costs for obtaining a patent in multiple countries is always expensive, if you seek for protection in at least two or more European countries, then filing a European patent would be easier and the costs of the process considerably lower than the equivalent costs of filing individual national patents in the countries of the EPC, as you just need to file the EP application in one of the procedural languages; English, French or German.
First to File System. European patents are protected on a first-to-file basis, which means that all rights date back to the filing date and not when the invention is granted, but the right may be enforceable the publication of the mention of grant and from the period taken of publication of the European patent application.
Priority Claim. A first European patent application with the EPO will allow the applicant to claim a right of priority within a non-extendable period of 12 months (one year) from the application date, either for an international PCT patent application or in other regional or national patent Offices abroad party to the Paris Convention. Likewise, the foreign nationals of any signatory country or domiciled in a member state of the WTO may claim their one-year-right of priority from the earliest patent application when it is being extended regionally with the EPO.
Languages. Applications can be filed at the EPO in any official language of a contracting state. However, the procedure will be conducted in one of the three official languages of the EPO; English, French or German. If the application is not filed in one of these languages, a translation has to be submitted. In addition and during the final phase of the European patent grant procedure you have to translate the claims in its other two official languages.
Who May Apply? All natural persons and legal entitieswho are a resident or national of any signatory country may apply for aEP. – Representation. Natural persons or legal entities that do not have their residence or their principal place of business in a contracting state to the European Patent Convention are required to be represented by a professional representative or a legal practitioner, except for filing an application or payment of fees. We would be glad to be your agent! You can enquire us about the representation of our attorney and included associated services.
Countries. The list of national offices or contracting states covered by a EP application are currently 38, as follows:
|NationalOffices/Contracting States||Continent||Regional Office|
|BA Bosnia and Herzegovina||Europe||EPO (Country of Extension)|
|ME Montenegro||Europe||EPO (Country of Extension)|
|MK Macedonia (The former Yugoslav Rep. of)||Europe||EPO|
|SM San Marino||Europe||EPO|
|AT Austria||Europe (EU)||EPO|
|BE Belgium||Europe (EU)||EPO|
|BG Bulgaria||Europe (EU)||EPO|
|CZ Czech Republic||Europe (EU)||EPO|
|DE Germany||Europe (EU)||EPO|
|DK Denmark||Europe (EU)||EPO|
|EE Estonia||Europe (EU)||EPO|
|ES Spain||Europe (EU)||EPO|
|FI Finland||Europe (EU)||EPO|
|FR France||Europe (EU)||EPO|
|GB United Kingdom||Europe (EU)||EPO|
|GR Greece||Europe (EU)||EPO|
|HR Croatia||Europe (EU)||EPO|
|HU Hungary||Europe (EU)||EPO|
|IE Ireland||Europe (EU)||EPO|
|IT Italy||Europe (EU)||EPO|
|LI Liechtenstein||Europe (EU)||EPO|
|LT Lithuania||Europe (EU)||EPO|
|LU Luxembourg||Europe (EU)||EPO|
|LV Latvia||Europe (EU)||EPO|
|MT Malta||Europe (EU)||EPO|
|NL Netherlands||Europe (EU)||EPO|
|PL Poland||Europe (EU)||EPO|
|PT Portugal||Europe (EU)||EPO|
|RO Romania||Europe (EU)||EPO|
|SE Sweden||Europe (EU)||EPO|
|SI Slovenia||Europe (EU)||EPO|
|SK Slovakia||Europe (EU)||EPO|
Common Mistakes and Suggestions. As patent practitioners, we observe some but very often mistakes made by inventors, which can jeopardize the patent process, negatively affect its validity and protection or even can prevent the invention from being appropriately marketed or from being extended abroad. We should suggest you to:
Choose a Patent Agent. You can act on your own for patent filing, but if you have no proficiency in patent law practice, then you should be guided and represented by qualified patent professionals (a registered European patent Agent), who are specialized and skilled in the undertaking of every complex tasks with the EPO, either for the search an draft of the patent claims before it is filed, as well as for duly attending the usual arising actions throughout the examination proceedings, helping you to ensure the desired success during the process and hence on the result and strength of the enforceable right obtained, because failing to take a relevant action concerning the amendment or on the discussion of its patentability during the regional phase, it may result in high incurring expenses for attending these actions, a possible limitation on the scope or even in a refusal of the European patent.
Protect Before Disclosing. The invention should be secretly kept until the date of filing, since that prior disclosure may destroy the novelty requirement of the patent.
Search Before Filing. Before applying for a patent, it is advisable to carry out a patent search and evaluate the prior art and near patents to ensure your invention is new. Conducting a patent search is a smart first step to take before investing a lot of time and money into the patent process (not just a simple Google search to know if the product to be patented exists). Not only will you know if there are any similar patents in the prior art, you will be able to use the results to better define your invention and include only that patentable matter.
Marketability of Your Invention. You should figure out whether potential consumers will have any interest in the invention. Sometimes, inventions are not commercially attractive; they are not marketable and consumers or manufacturers show no interest on the patent for its exploitation. The solution to a given problem is not completely solved, it is too complex or the idea of the value of the invention is impractical. – Patent Promotion. Do not wait for someone to buy your patent. If you will not be directly engaged in the exploitation of your invention, then you should actively promote it towards manufacturers, distributors, retailers or to anyone operating in the particular industrial field of the invention. This task should be done continuously, from the moment you have obtained the official receipt that confirms the filing of the patent application, so you can seek meanwhile for the needed investment, co-funding from anyone who is potentially interested in participating jointly with the costs for the extension of your patent rights abroad, or in the local marketability of the invention in exchange of a license agreement.
How Abecsa can Help You. We can advise you if you are deciding on a valuable patent protection strategy and planning, you want to license your patent, or if your invention is being infringed by others and you want to take effective enforcement action in a country of the EPC through a local attorney. We would comply with the regional patent practice and smooth the prosecution step by step and will always propose and take the best solution to overcome any official objection that arises during the procedure by taking care of the scope of the invention as well as foreseeing possible situations that could happen in the future for each specific patent application. The value-added patent services we provide can be summarized as follows:
Plan Your IP Strategy. We can help you plan your IP protection strategy in the related territories, according to your needs and budget, but always with the aim to acquire the widest protection as possible by also avoiding common filing mistakes that could suppose a threat to the validity of your IP rights in the future.
Full Assistance. Our registered attorney and other in-house patent professionals can represent you and assist you during all the examination process if you want to file a European patent application (EPO), whether you want to file your EP claiming an earlier priority right or it is a first filing regionally. Our fees for EP patent filings and prosecution are fixed for each stage in this Office so you can foresee the estimated costs for your patent protection project during the European Phase.
Search Services. We may carry out an in-depth prior art search worldwide referring to the technical information you have provide us, which would allow us to find if your invention has not been patented, before we draft your specification and apply for the desired patent on your behalf. This comprehensive search with our written report and a risk assessment is conducted by using tools and databases that are not publicly available. A good patent search can save you time, and a fortune in wasted resources, efforts, incurred significant promotional costs, and evade your potential legal liability in exploiting by mistake a non-patentable invention or a very close technology to someone else’s patent rights. This is a highly skilled and complex work that should be conducted by a specialized patent practitioner.
Patent Drafting and Filing. The initial strategic steps are decisive to achieve success in the future with your invention, therefore we take particular care and assist on the following features:
- Where to Protect Your First Patent. We can plan which would be the best Office to file your first patent application (priority), either National, European or Internationally, depending on the countries where you will likely market your invention, which we will electronically file in your name.
- What & How to Protect. Our in-house patent professionals can help you identifying and protecting only what is technically valuable, from the material you provide us with, and do not waste time or resources on getting a weak patent for thoseirrelevant matters. For this purpose, the inventor must provide us with all the relevant and detailed information in his hand to help us understand how the given technical problem is solved bythe invention and allow our engineer to draft the best possible claims supporting specification, who will prepare andwrite in full, clear, concise, and exact terms of the abstract, description, backgrounds of the invention by citing and comparing the closest prior art documents, create the professional technical drawings if needed, and specify the claims that best describe your invention, beingthis the most important element of the patent draft, to be carefully considered and for which patent protection is sought. We will provide the preliminary patent draft for our client’s review and approval within 15 to 20 working days, from the date we receive the full details of your invention or after the patent search is concluded.
- When to Apply. Commonly, it should be filed as soon as possible, ensuring you are the first-to-file the patent.
- Who. The applicant(s) and hence the future ownership of the patent should be always held by person or legal entity who will likely exploit the invention in the market.
Prosecution and Management. We will monitor the whole process of your European patent application throughout thisregional phase and duly inform you of every official communication we receive from the EPO until it is finally granted, along with our preliminary advice on the step to take, if needed, as well as by sending you the publications and informing you of all deadlines to have in mind, including reminders well before the available time limits for each specific action, with the aim to avoid extra charges or a loss of rights.
Office Actions. If your patent is objected by the EPO based on formal requirements or on patentability provisions or opposed by a third party, we may study the grounds of the objection or the relevance of the prior right on which the observations have been founded and file either the amendment or an Office action response in defense of your rights within the given deadlines, by planning the adequate strategy and ensuring success insofar as possible, in obtaining an objection-free application when the national phase is entered. Assistance is also provided if you want to file relevant observations against a likely conflicting application, by preparing the needed technical and legal observations in support. We may require you to provide us relevant details or proof in support of our comments, facts or evidences to be alleged in the exchange of observations during the opposition and appeal proceedings. – Litigation. In enforcement, we can represent and assist either the plaintiff or the defendant in utility model and patent rights infringement proceedings or in a cancellation action procedure (Invalidity request) before the competent Spanish or European Courts that are conducted by our local associates.
Other Actions. We can handle any associated matter on European patents such us the recordal of licenses, change of names and ownership transfers.
Watching Services. Abecsa can provide its clients with a local watch service in the Spanish and European registers, keeping an eye on what your competitors have filed. If we find a new published application which is potentially conflicting with your prior patent, then we will send you an alert proposing you the filing observations within the statutory deadline of the Office whenever possible.
European Patent Procedure and Time Scale. The European patent grant procedure can last around three to five years from filing. However, the process can be speeded up by filing a request for accelerated examination under the programme for accelerated prosecution of European patent applications (PACE).
- European Patent Application. The application can be filed with the EPO directly, under the European Patent Convention (EPC) or, you must enter regional phase at the EPO within 31 months from the date of priority if you are following the Patent Cooperation Treaty (PCT) route for International Patent applications. The application must consist of a request for grant, a description of the invention, claims, drawings (if any), and an abstract.
- Examination on Filing and Formalities. The examination on filing involves making sure all the required basic information and documentation has been submitted to EPO, so that the application can be accorded a filing date: an indication that a European patent protection is sought, identification of the applicant(s) and designation of the inventor(s), a description of the invention, claims, a reference to a previously filed application which priority is being claimed, drawings, abstract, the appointment of a professional representative, the needed translations and the fees due.
- European Search Report. The Office will conduct a search based on the patent claims, the description and on any drawings, drawing up the European Search Report, where all documents that may be relevant to assessing novelty and inventive step will be listed, along with a copy of any cited documents and an first opinion of the examiner as to whether the claimed EP application meets the patentability requirements. The office will submit this report to the applicant or representative.
- Publication of the EP Application. The European patentapplication is usuallypublished together with the search report 18 months after the date of filing orthe priority date, if it was claimed. The applicant will have six months to decide and who may be asked to confirmwhether or not to proceed with the application by requesting substantive examination. Additionally the applicant must pay the appropriate designation fee and, if applicable, the extension fees. From the date of publication, a European patent application confers provisional protection on the invention in the states designated in the application. Nevertheless, depending on the relevant national law of each state, it may be needed to file the translated claims into the local language and wait until these are published, so the provisional protection can have effect.
- Substantive Examination. The examination on the European patent application must be requested and once made, the examining division of the European Office will assess whether the invention meets the EPC requirements and ifit can be granted as a patent.
- The Grant of a Patent. Desirably, the EPO wouldissue a communication of the intention to grant the patent, requiring the applicant to translate the claims into the other two languages of the Office and pay the fee for grant and publication within a given deadline. When these requirements are accomplished, the mention of the grant is published in the European patent Bulletin.
- Validation. After the grant of the European patent is published, the owner has to validate the patent in each of the designated states within a three-month time limitto retain its protective effect and be enforceable against infringers. This means that in many of the EPC states, the patent owner may have to file a translation of the specification in an official language of the national patent office. Depending on the relevant national law, the applicant may also have to pay fees by a certain date. You can choose the EPC countries in which you want to validate your EP as well as where you do not want to protect your EP and let your patent rights lapse.
- Opposition After Grant. When the European patent is granted and within nine months of the publication of the mention of grant in the European Patent Bulletin, the EP may be opposed by third parties that believe it should not have been granted and based on the grounds that the subject matter is not patentable, the matter extends beyond the content of the application as filed or that the invention is not sufficiently described. If the EP is opposed, the EPO will check its admissibility, send a copy of the opposition notice to the holder, and carry out a substantive examination of the grounds for opposition. During the opposition proceedings the proprietor may file his observations and defend the grant of the EP or amend the description, claims and drawings if he deems it necessary.
- Limitation or Revocation. A limitation, amendment of the claims or a revocation can be requested by the patent holder any time after the European patent is granted. If any of said requests are found admissible by the EPO, it will affect all contracting states and take effect when it is published in the European Patent Bulletin.
- Appeal. Any decision taken by the EPO may be appealed, such a refusal of an application or deriving from an opposition. Decisions will be made by the Board of Appeal.
Enforceable Patent Rights. After the grant of the European patent it can be enforced against infringers in each of the relevant countries in which it has been validated and the corresponding annual fees have been paid. This legal action can only be taken after the EP has been granted and it must be enforced separately through an accredited local attorney in each country, who must represent you during the infringement action. The period during which damages may be claimed to the infringer, may date back to the publication of the EP application.
Information and Requirements to File a European Patent Application With the EPO or an Euro-PCT.
- The full name and address of the applicant(s)-holder(s).
- The full name and nationality of the inventor(s).
- The nationality or country of establishment of the applicant(s)-holder(s).
- VAT Number (NIF/NIE), only if the applicant is Spanish or established in a country of the EU.
- Full details of the invention on how the given technical problem is solved by your invention, whenever required.
- The details of the application on which Convention Priority is to be claimed, if appropriate, within 12 months from first application date, along with the Certificate of Priority.
- Your instructions on how we should proceed and approval of the likely costs.
- Your upfront payment of issued invoice by bank transfer.
- A POA signed by the applicant (no legalization) is required by this Office.
Please do contact us via our contact form if you need advice on any patent issues such as:
- Filing your patent application with the European Patent Office.
- Entering the regional phase of a PCT in the European Patent Office (Euro-PCT).
- Validating your granted European patentin Spain or seeking for provisional protection.
- Looking for prior art searching or a freedom-to-operate opinion and report.
- Patent watching services.
- Defending your challenged European patent, from oppositions or appeals.
- Revising and/or amending your patent draft by our engineer.
- Opposing a European patentfiled by others.
- Taking legal action against another person or company who is selling or commercializing your invention in Spain or in Europe without your consent.
- Translating your patent specification into any of the three procedural languages of the EPO.
- Renewing your patent annually with the EPO or in any country of the EPC.
- Licensing the use of the invention or selling your patent ensuring the assignment to other person or company.
- Protecting your know-how and trade secrets.
Confidentiality. If this is the first filing of your invention, it is important that you do not disclose the technical characteristics of your invention before you apply for patent protection, this may mean that you cannot patent it, or your patent may be declared invalid by anyone who proves this preceding disclosure (lack of novelty or inventive step). However, you can safely discuss it with us, because as registered patent attorneys and lawyers, any information you disclose to us is legally privileged and confidential, using it strictly for the purpose or needed service we are instructed to handle in your name.