Transcript Patent Protection in Europe Heidrun Krestel Liaison Officer Member States Co-operation Programmes and INPADOC European Patent Office Seminar Industrial Property Protection Prague, 4 June 2003

Patent Protection in Europe
Heidrun Krestel
Liaison Officer Member States
Co-operation Programmes and INPADOC
European Patent Office
Seminar Industrial Property Protection
Prague, 4 June 2003
Topics of this presentation
•
•
•
•
•
•
•
•
Introduction to the EPO
General issues
Filing
Search and examination
Granting
Opposition
Appeal
Summary
Seminar Industrial Property Protection
Prague, 4 June 2003
Seminar Industrial Property Protection
Prague, 4 June 2003
3 new member states
which will join the EPC soon
PL
Poland
LT
Lithuania
Seminar Industrial Property Protection
Prague, 4 June 2003
LV
Latvia
Seminar Industrial Property Protection
Prague, 4 June 2003
DG1
Search, examination and
administration of
search documentation
DG2
Search, examination
and opposition
DG3
Boards of appeal
DG4
General administration,
finance, language service
personnel
Patent information
Seminar Industrial Property Protection
Prague, 4 June 2003
DG5
Patent law, international
affairs, PR, technical
co-operation
The EPO’s Mission
To examine patent
applications
To grant patents
To publish and disseminate
patent information
Seminar Industrial Property Protection
Prague, 4 June 2003
Applications 1995 to 2002
180000
160000
140000
120000
100000
80000
60000
40000
20000
0
1995
1996
1997
1998
1999
2000
Total number of applications
Seminar Industrial Property Protection
Prague, 4 June 2003
2001
2002
Topics of this presentation
•
•
•
•
•
•
•
•
Introduction to the EPO
General issues
Filing
Search and examination
Granting
Opposition
Appeal
Summary
Seminar Industrial Property Protection
Prague, 4 June 2003
What is a patent?
A patent is a legal title granting its
holder the exclusive right to make use
of an invention for a limited area and
time by stopping others from, among
other things, making, using or selling it
without authorisation.
Seminar Industrial Property Protection
Prague, 4 June 2003
National procedures
Invention
Application
Application
Application
Seminar Industrial Property Protection
Prague, 4 June 2003
CZ-Patent
AT-Patent
SE- Patent
European procedure (EP)
Invention
Application
EPO
Grant
European phase
Seminar Industrial Property Protection
Prague, 4 June 2003
up to 27
national
patents
National Phase
International procedure (PCT)
Invention
Application
search and optional
preliminary examination,
no patent grant as such,
entering the regional or national phase
with 30 months delay after first filing
Seminar Industrial Property Protection
Prague, 4 June 2003
179
member
states
Topics of this presentation
•
•
•
•
•
•
•
•
Introduction to the EPO
General issues
Filing
Search and examination
Granting
Opposition
Appeal
Summary
Seminar Industrial Property Protection
Prague, 4 June 2003
Filing the application
• Who can file?
• Any natural or legal person, joint
applicants
• Where to file? •
at EPO premises in Munich, The
Hague and Berlin
• at the central industrial property
office or other competent
authorities in that Contracting State
(depending on the national law)
Seminar Industrial Property Protection
Prague, 4 June 2003
Filing the application
• For which
• In countries where the EPC
• In which
• In one of the official
countries?
language?
has entered into force = the
contracting (designating)
states
languages (English, French,
German)
Seminar Industrial Property Protection
Prague, 4 June 2003
Filing the application
• Items to file
• Request for grant of a
•
•
•
•
•
European patent
Description of the invention
Claim(s)
Drawing(s) referred to the
description or the claims
Abstract
Claim to priority
Seminar Industrial Property Protection
Prague, 4 June 2003
Filing the application
• Claim to
priority
• Priority may be claimed for a
European patent application by a
person who in 12 month prior to the
filing of the European application
has filed an application of a patent
or registration of a utility model in
respect of the same invention in a
state which is party of the Paris
Convention for the Protection of
Industrial Property
Seminar Industrial Property Protection
Prague, 4 June 2003
Filing the application
Requirements concerning the presentation of
the invention
• Disclosure of the invention
• Unity of invention
• Description:
•
•
•
•
•
•
indication of technical field of the invention
background state of the art
definition of the technical problem and its solution
description of the figures
descrption of the way to carry out the invention
indication of industrial application
Seminar Industrial Property Protection
Prague, 4 June 2003
Filing the application
Requirements concerning
the presentation of the
invention
• Claims:
• define the matter of protection
• usually comprises two parts, the
prior art portion and
the characterising portion
• Drawings must correspond to
description and claims
• Abstract: summary of the
invention for technical
information purposes
Seminar Industrial Property Protection
Prague, 4 June 2003
Further detailed information
via the EPO website
www.epo.org
Seminar Industrial Property Protection
Prague, 4 June 2003
Seminar Industrial Property Protection
Prague, 4 June 2003
Topics of this presentation
•
•
•
•
•
•
•
•
Introduction to the EPO
General issues
Filing
Search and examination
Granting
Opposition
Appeal
Summary
Seminar Industrial Property Protection
Prague, 4 June 2003
Search and examination
• Examination on filing by the Receiving Section
•
•
•
•
•
indication that a European patent is sought
designation of at least one contracting state
definition of an applicant
description and at least one claim
payment of filing and search fees
• Formalities examination
• check of compliance with requirements concerning
the items to file
Seminar Industrial Property Protection
Prague, 4 June 2003
Search and examination
• Search
• on basis of the claims
• search tools:
• electronic databases (e.g. DOC d.b)
• paper collection, systematically filed according to the ECLA,
containing PCT minimum documentation
• non-patent literature
• search report
published together with the publication of the
application 18 months after the priority application
or
published separately
Seminar Industrial Property Protection
Prague, 4 June 2003
Seminar Industrial Property Protection
Prague, 4 June 2003
Search and examination
Code letters in the search report indicating:
X particularly relevant document which,
taken by itself destroys the novelty or
inventive step of the subject-matter claimed
Y particularly relevant document which,
taken together with one or more other „Y“
documents, indicates that the subject-matter
claimed does not involve an inventive step
A document gives information about the
state of the art
Seminar Industrial Property Protection
Prague, 4 June 2003
Search and examination
Substantive examination
• upon request for examination in
written form
• after payment of the examination fee
• in the light of the search report, the
EPO examines if the inventions is
patentable and meets the
requirements of the European Patent
Convention (EPC)
Seminar Industrial Property Protection
Prague, 4 June 2003
Topics of this presentation
•
•
•
•
•
•
•
•
Introduction to the EPO
General issues
Filing
Search and examination
Granting
Opposition
Appeal
Summary
Seminar Industrial Property Protection
Prague, 4 June 2003
Granting
• For an invention to be patentable it must be:
• Novel (no prior disclosure or use)
EPC Art. 54
• Inventive (not obvious to one skilled in the art)
EPC Art. 56
• Industrially applicable
EPC Art. 57
Seminar Industrial Property Protection
Prague, 4 June 2003
Granting
Not regarded as inventions:
• Discoveries, scientific theories and
mathematical methods
• Aesthetic creations
• Schemes, rules and methods for performing
mental acts, playing games or doing
business, and programs for computers
• Presentations of information
• Treatment of human or animal body by
surgery or therapy
• Plant and animal varieties
Seminar Industrial Property Protection
Prague, 4 June 2003
Granting
• Novelty
• Has the claimed invention been disclosed,
used, exhibited before? If not it is NOVEL
• Examiners use documentation and
computer searches to decide on novelty.
Seminar Industrial Property Protection
Prague, 4 June 2003
Granting
• Inventiveness
• Does the claimed invention comprise an
inventive step, attributes which are not
obvious to someone skilled in the art?
• Test: can elements of the claimed
invention be found in 2 prior art
documents?
• If yes then the claimed invention is not
inventive.
Seminar Industrial Property Protection
Prague, 4 June 2003
Granting
• Industrial Applicability
• An invention shall be considered as
susceptible of industrial application if it can
be made or used in any kind of industry,
including agriculture
• Difficult to assess
Seminar Industrial Property Protection
Prague, 4 June 2003
Granting
65% Patents granted
6.2 % opposed
10% Withdrawn after
search report
25% rejected or withdrawn
during examination
Seminar Industrial Property Protection
Prague, 4 June 2003
Topics of this presentation
•
•
•
•
•
•
•
•
Introduction to the EPO
General issues
Filing
Search and examination
Granting
Opposition
Appeal
Summary
Seminar Industrial Property Protection
Prague, 4 June 2003
Opposition
• Any person (public)
• Opposition period: nine months after mention of
•
•
•
•
•
•
publication of grant
Reasoned statement (grounds)
In written (opposition form) with facts and
evidence
Payment of opposition fees
Substantive examination of the opposition by
the opposition division
Oral proceedings
Decision of the opposition division
Seminar Industrial Property Protection
Prague, 4 June 2003
Topics of this presentation
•
•
•
•
•
•
•
•
Introduction to the EPO
General issues
Filing
Search and examination
Granting
Opposition
Appeal
Summary
Seminar Industrial Property Protection
Prague, 4 June 2003
Appeal
• Anyone adversely affected by a decision
•
•
•
•
of the EPO may file an appeal to the
Board of Appeal
time limit two months after the date of
notification of the respective decision
written statement (grounds)
last instance
case law
Seminar Industrial Property Protection
Prague, 4 June 2003
Topics of this presentation
•
•
•
•
•
•
•
•
Introduction to the EPO
General issues
Filing
Search and examination
Granting
Opposition
Appeal
Summary
Seminar Industrial Property Protection
Prague, 4 June 2003
Fees
• Application fee
• Search fee
• Designation fee
per country, maximum 7 times
• Examination fee
• Fee for grant
• Annual fee 3+4 year
Total up to grant
• Opposition fee
• Fee for appeal
Seminar Industrial Property Protection
Prague, 4 June 2003
€ 125
€ 690
€ 75
€ 1430
€ 715
€ 785
€ 4270
€ 610
€ 1020
Seminar Industrial Property Protection
Prague, 4 June 2003
Overview of the patent procedure at the EPO
Application
12 month
Further applications
(Priority)
Formalities
after
18 months
Search
Request for
Examination
max. 6 Month after
search report
Publication,
Search Report
Info
Examination
Max. life time: 20 years
+
Applicant
EPO
Third Parties
Reject
Grant
Info
Patent
national Phase
Translations
Seminar Industrial Property Protection
Prague, 4 June 2003
within
9 month
Opposition
Thank you for your
attention
Questions
Seminar Industrial Property Protection
Prague, 4 June 2003