How to Apply for a European Patent (Part 3/4)

In our last blog post we dealt with some preliminary considerations, with the importance of a thorough patent research and informed you about some crucial aspects of filing your application for a European patent with the EPO.

Today’s part 3 of our blog series on how to apply for a European patent is about what happens after you filed your application, i.e. the examination on filing and the formalities examination, and what you have to consider when your application is published by the EPO. So today we’ll deal with steps 3 till 5.

3. Examination on Filing and Formalities Examination

After you?ve filed your application the process of granting begins.

First the EPO does an examination on filing. During this examination the EPO checks if the application is really complete, i.e. if all important documents have been included and if all required data have been supplied.

The following data are necessary:

• A note stating that you?re applying for a European patent
• Data to identify the inventor
• A description of the invention or a reference to a previously filed application

When everything important has been provided, an official application date is defined. If no patent claims have been included until this time, they must be submitted subsequently, but no later than two months, after the examination on filing.

During the formalities examination the EPO checks formalities like the contents of the request for grant, the drawings and summary. They also check if the inventor is named, a professional representative is appointed and all necessary translations have been made. And have you paid all necessary fees?

4. Preliminary Research Done by the EPO

Patents are an examined property right. This means the EPO initiates a preliminary research and collects all available documents which might be relevant for evaluating your invention?s novelty. Besides patent claims, this also includes drawings and descriptions. Later the research review is submitted to the applicant together with a note stating whether his application fulfills all necessary formalities according to the European Patent Convention. This step doesn?t include the final judgment on your invention?s novelty and inventive step! The final judgment will only be passed during the substantive examination, which takes place six months after the application has been published.

For the EPO?s research you have to pay some fees.

5. Publication of the application

Now the EPO publishes your application. This normally happens 18 months after the application date. But if your present application is a subsequent application (you already filed an earlier application which is in effect for this invention), the priority date (this is the application date of the first filing) will count as application date. But the claim to use the priority date can only be asserted 12 months after the first filing; when this time has passed even a subsequent application will take as long as any ?normal? application.

Together with the application the research review from step 4 will be published, too. After the publication date the applicant is given a time of six months to decide if he wants to go on with the patent grant procedure or if he wants to quit. If the procedure shall be continued, an additional request for a substantive examination has to be made. And all required fees have to be paid within this time frame of six months. The fees at this step include examination fees and, if needed, extension fees, if you want to get a European patent in states who aren?t members of the EPÜ, but for whom EP patents can be granted as well.

Wrap-up

• The EPO initiates a preliminary search and collects all relevant documents for evalutating the novelty of your invention. This research takes places before the actual substantive examination, in which the novelty of your invention will be ultimately judged.
• Your application will normally be published 18 months after the application date. It’ll be published together with the research review from step 4.
• After the publication the applicant is given a time of six months to decide if he wants to continue with the procedure of granting.

Next week’s blog article will be about all remaining steps, which are the substantive examination and final evaluation of your invention, granting and validating your EP patent, and what can happen after the granting as well as what can be done in case your application is rejected and no patent is granted.