European Patent Application: Effective State Submitting Procedure

Are you confused by the process of the European patent application or you would like to learn more about it? Read our article and find out more.

Yueqiu Yu and Gnosis Li, our colleagues from Kangxin wrote an interesting article about an effective state submitting procedure upon authorization of a European patent application which we will summarize for you in the following paragraphs.

Patent applicants in Europe are more and more Chinese citizen, which keeps the competition at the market at a high level. Meanwhile the costs for a patent application are lower in the U.S., Japan or elsewhere than in Europe. When a European patent application is submitted it counts for every Contracting but is calculated separately for each country. After EPO’s authorization and the registration the applicant is able to choose the States he wants his patent to be saved in.

The applicant may need to choose the States (which need the effective procedure) from all Contracting States designated at the time of filing of the new application. This is necessary to assure effective protection and right safeguarding of the patent in these effective states. In the following this essay briefly introduces the European effective state procedure and some notes, to assist all applicants and agencies to understand the process regarding European effective states.

Submission Period for European Effective State Procedure and Choice of States

The choice of an effective state in the European effective state procedure is closely associated with the designation of a Contracting State (subject to the payment of a designation fee) upon the filing of an application.

The official fee to be collected for the European designated states is fixed. Every member of the European Patent Convention (EPC) shall be deemed to be designated upon the payment of the designation fee.

Only the designated states, which have been chosen upon the payment of the designation fee shall make choices for the authorization of a European application. Notably, because the quantity of EPC member states changes constantly, the effective states may only be chosen from the member states at the time of payment of the designation fee.

The applicant needs to finish all his tasks regarding the European patent application (incl. payment) within three months.

If the patent is not to be applied to many states and the procedure for these states is simple: three months for preparation will be enough. On the contrary, if there are many states needing to go through the effective procedure and complicated effective procedure is needed for these states, then the time for preparation will be urgent. In this case the applicant should confirm the choices of effective states upon the European application authorization in advance considering factors as market scope, production cost or protection extent of effective state.

Translation of Documents Submitted for European Effective State Procedure and Other Notes

The applicant may have the patent protected in each effective state selected upon the European patent authorization. All effective states have different requirements, formal submission procedures, fees and languages. Therefore, the application documents or claims shall be translated into the official languages required by the effective states.

States where translation is not required again

Britain, Germany, France, Switzerland, Luxemburg, Monaco, Liechtenstein, Ireland and Albania

States where translation is required for claims

1) Croatia, Denmark, Holland, Sweden, Iceland, Hungary, Finland and Norway

If the language for the European patent application of the above states is English, then you only need to translate your claims in native language at the time of entry into the effective state procedure.

2) Latvia, Lithuania, Slovenia and Macedonia

Whatever language for a European patent application is, translation (in native language) of claims must be submitted.

Conclusion

In conclusion, the effective procedure upon authorization of a European patent application involves laws and regulations of various states as well as a number of agencies. It is suggested that the applicant shall consider patent layout and consider the choice of effective states and cost estimates in advance at the time of the filing of the application, and shall actively prepare for entry into the effective state procedure upon receipt of the notice for authorization and registration, so that the agencies have enough time to prepare for the translation and effective procedure within a prescribed time limit.

If there are a large number of effective states as confirmed by the applicant for the effective procedure, the applicant may consult the approximate cost for each state in advance to know the costs in advance and to choose appropriate effective states upon overall consideration of market demands and cost estimates.
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