Preparing a European patent application

How to prepare a European patent application?

The following article describes a drafting process of a European patent application. It is followed by consideration and recommendation for an applicant for a European Patent. This article does not replace, by any means, a European patent attorney’s individual and tailored advice. It is structured into three phases, the pre-filing phase, prosecution of the application at the European Patent Office and post-grant processing of the granted European Patent.

The pre-filing stage includes drafting a technical specification of a patent application, searching for prior art, and drafting claims vis-a-vis the prior art and legal aspects connected to the filing. Prosecution phase is divided into the filing stage and examination of formalities, search provided by the European Patent Office and following publication, examination of the application and grant or refusal of the patent. Post-grant processing is focused on validation of the European Patent in the Contracting states of the European Patentn Convention (EPC) or requesting a Unitary effect. This article does not describe the opposition proceeding, which may be followed by a grant of the European Patent. The basic information on the Opposition proceeding is written in this article.

This article does not focus on legal accuracy, but it is dedicated to inventors or future applications for the European patent for basic understanding.  Karel Bauer, the European patent attorney and the founder of Bauer-IP, is ready to help to draft, prosecute, and defend your patent application or already granted patent.

Description of Invention

The description of the invention contains mainly the technical description. It serves to understand how the invention is put into practice, how it is useful and what are the advantages. In the practice at the European Patent Office, the description is divided into six to eight parts.

The first part describes the technical field of the invention. Since the invention may be in any field, such as physics, electronics, computer science, chemistry, agriculture, etc., it is needed for better classification of the invention, to include a short description of the technical field. The next part is focused on prior art. It should describe the disadvantages of prior art and it should be focused on the technical problem.

The summary of the Invention is focused on the technical feature and their advantage. It must be general and must disclose the invention only in the necessary limitation. Detailed embodiments, on the other hand, describe particular examples of the invention. This is addressed to a skilled person in the art, who must understand how to construct the invention. Sometimes, the description also contains a short paragraph about industrial applicability. It is particularly demanded in the case of the biotechnological invention. Claims define the scope of protection. They have both, technical and legal aspects. Therefore, it should be drafted by a European patent attorney. The last part is an abstract describing the technical contribution of the invention to the prior art. The description may optionally contain drawings.

Search for novelty and inventive step

A patentable invention must be new and inventive, amongst the other requirements. Therefore, it is recommended to conduct a prior art search to verify that the invention idea is new. A European patent attorney can help with the assessment of novelty and inventive step requirements as practised by the European Patent Office. 

Whether the invention is novel or not must be based vis-a-vis the worldwide publicly available knowledge. The publicly available knowledge can be disseminated by a patent application, which was published by a patent office. This technical information is available through patent databases, such as Espacenet operated by the European Patent Office. However, an oral disclosure or presentation of the invention at a fair may be also used against the patentability of the invention, if it is disclosed prior to the patent application filing. 

Inventive step requirement prevents to patenting of an obvious technical solution to an easy technical problem. It is a task of the objective process to asses if the invention is too obvious vis-a-vis the prior art. The European Patent Office is using the so-called a problem and solution approach for an objective examination of the inventive step. The European Patent Attorney will certainly help you to investigate if the invetion is obvious nor not accordin to well established practice of the European Patnet Office.

Claim construction for the European patent prosecution

Once the invention and prior art is known, it is a time to draft patent claims. The patent claims define the scope of protection covered by the European patent, if granted. According to the practice of the European Patent Office and its guidelines for examination, there are certain categories of patent claims. They are a device or apparatus claim and a method claim. Under the method claims, there is sometimes a use claim. 

European Patent Attorney will help you to clarify the invention and to draft claims. 

Legal aspects of the European patent application

A right to a European patent belongs to an inventor or a successor in title. Whether the applicant is truly entitled to obtain the European patent may depend on the national law. This is true, especially in cases when the invention has been developed under an employee contract. Another way how to obtain a right to a patent is a legal succession by a transfer agreement.

Anyway, should you are not the inventor of the invention, make sure that you have the right to file a European patent application. Contact the European patent attorney as your representative before the European Patent Office for legal advice.

How to file a European patent application?

A European patent application can be filed by anyone. This means that there is no restriction on the nationality or place of business of an applicant. However, the applicant has to meet certain formal requirements to duly file it. To obtain the filing date, the application must contain an identification of the applicant, a description of the invention and a request for obtaining the European patent.

There are also filing offices which accept the application. They are the European patent offices in Munich, Berlin and Hague. The Brussels and Vienna offices are not the offices that accept the application.

Prosecution of the European patent application

Filing a European patent application and formality examination

If the application is duly filed, the European Patent Office will notify the applicant of the date of filing and the number of the European Patent Application. The next step is to pay all necessary administrative fees and check the formal requirements of the application. The formality requirements include the appointment of a professional representative before the European patent office, the European Patent Attorney. 

Search and publication of the European patent application

After a successful formal examination, the European Patent Office approaches to search for novelty and inventive step of the claimed invention. At the end of the search procedure, the European Patent Office issues a search report with the relevant prior art and patentability opinion. Usually, the search report and patentability opinion are issued within 9 months from the date of filing. Alternatively, the search report is issued within 4 months from the filing, if a priority from the first filing application is claimed.

The European Patent Application is published as soon as possible after the expiring 18 months from the filing date of the first application. It can be the priority application or the directly filed European patent application.

Examination at the European Patent Office

Applicant must ask the European Patent Office for examination within 6 months from the date of publication of the search report. Reply to the search report and opinion is obligatory in the case when it is negative. It is also allowed to amend the application, resp. the claims, to meet patentability requirements, such as novelty, inventive step, clarity, etc. The amendments, however, may not extend the technical teaching beyond the application as filed. Therefore, it is recommended to take care of the drafting of a patent application.

Grant or refusal of the European Patent (Application)

Invention can be awarded by a grant of a European Patent if the application meets all the patentability requirements EPC. The grant proceeding, at the filing stage, includes the submission of the translation of claims into the other two languages of EPO, which is not the language of the proceeding. For instance, if the language of the proceeding is English, the translation is needed to German or French. The applicant also has to agree on the text intended to grant. 

On the other hand, the application can be refused. 

Validation of the European Patent or requesting an Unitary effect

European patent does not have an automatic effect of protection in all contracting states. A certain number of states may require another step, called validation of the European patent. This procedure also needs translation claims or full patent specifications into the national language, payment of prescribed fees and appointment of the representative. If you are looking for a representative in the Czech Republic or Slovakia, contact us

The patent proprietor may also ask for a unitary effect of the European patent. 

Both require precise timing.

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