2.4.001 The European procedure has not superseded the national grant procedures. So when seeking patent protection in one or more EPC contracting states you have a choice between following the national procedure in each state for which you want protection and taking the European route, which in a single procedure confers protection in all the contracting states that you designate.
2.4.002 If you decide you want a European patent, you have a further choice between the direct European route and the Euro-PCT route (see point 2.3.002 and the Euro-PCT Guide: PCT procedure at the EPO). With the direct European route, the entire European patent grant procedure is governed by the EPC alone; with the Euro-PCT route, the first phase of the grant procedure (the international phase) is subject to the PCT, while the regional phase before the EPO as designated or elected Office is governed primarily by the EPC.
2.4.003 We will now summarise the chief legal and economic factors that are likely to influence your choice between the European and national procedures.
2.4.004 A European patent is granted after an examination designed to establish whether the European patent application and the invention to which it relates comply with the patentability requirements of the EPC.
These requirements are the basis not only for the granting of a European patent, but also for the assessment of its validity by national courts. In addition, under the EPC the extent of the protection conferred by the European patent is determined uniformly for all the contracting states.
2.4.005 The grant procedure is conducted by the EPO's Receiving Section, search divisions and examining divisions; if they decide against
your application, you can file an appeal before the boards of appeal of the EPO. Once a European patent has been granted, there follows a nine-month period in which third parties are entitled to file a reasoned notice of opposition; and at the end of the resulting opposition proceedings, either the patent is maintained as granted or as amended or it is revoked. The decision taken in the opposition proceedings applies to all designated contracting states and can also be appealed before the boards of appeal of the EPO.
Once it has been granted, you can file a request for limitation or Art. 105a, 105b revocation of your own patent.
2.4.006 European patents have a uniform wording and a uniform extent of protection for all designated contracting states (but see points 4.2.027 and 4.2.039) and offer a high presumption of validity.
Patent law in the contracting states has been extensively harmonised with the EPC in terms of patentability requirements. However, as grant procedures continue to be differently structured and are conducted in parallel by several offices, the national route generally leads to national rights with differing extents of protection.
2.4.007 Processing fees in the European patent grant procedure are Art. 2 RFees staggered; so at each stage of the procedure you have a further chance to decide, in the light of the completed stages, whether your interest in obtaining patent protection is still great enough to justify paying the next fee.
In particular, the separation between search and substantive examination (see points 5.1.002 and 5.1.003) enables you to decide in the light of the European search report (see point 5.2.009) whether it is worth requesting substantive examination.
2.4.008 In certain circumstances you may be interested in having your application processed faster, at the search stage or the substantive examination stage or both.
If you file a request for accelerated processing, the EPO will make GL E-VIII, 4 every effort to reduce the usual processing times as much as it can, under the programme for accelerated prosecution of European patent applications.
2.4.009 Your application may be a first filing with the EPO.
As a rule, you will be sent the search report within five months of the date of filing.
2.4.010 Like a first filing with a national office, a European first filing gives rise to the right of priority for a national, European or international second filing made in the priority year (see points 4.1.0174.1.021).
2.4.011 Taking into account the fees levied for the European grant procedure, costs for representation by a single agent and the cost of conducting the proceedings in a single language, a European patent as a rule costs about as much as three or four national patents.
2.4.012 Information on fees and conditions for fee refunds is provided in points 4.3.011 ff.
2.4.013 The European procedure is conducted in one of the three official languages of the EPO (English, French, German), specifically the one in which you choose to file your application or a translation thereof. In addition, if you are from a contracting state whose language is not one of the EPO's official languages, you enjoy certain advantages as regards languages and fees if you use an official language of your contracting state (see points 4.1.0084.1.011).
2.4.014 In the final phase of the European patent grant procedure, however, you are required to file a number of translations. You have to provide the EPO with translations of the claims in its other two official languages. Some contracting states require you to file a translation of the European patent specification or of the claims in one of their official languages, if different from the language of the proceedings, in order for the European patent to take effect there (see point 5.4.023). Further information is available on the EPO website (epo.org).
2.4.015 The European patent grant procedure lasts about two to four years from when the application is filed. It breaks down into two main stages. The first comprises formalities examination, search report preparation and the drafting of an opinion on whether the application and the invention to which it relates seem to meet the requirements of the EPC. The second comprises substantive examination.
2.4.016 In the first of these stages there is no need for your active involvement unless the Receiving Section finds formal deficiencies or the search division requests clarification of the subject-matter to be searched. However, in the second stage – substantive examination – your application is assigned to an examining division, which usually communicates with you or your representative before deciding whether to grant the patent or refuse the application (see points 5.1.003 and 5.4.001-5.4.022).
Competent preparation of the patent application and of all procedural steps before the EPO is a crucial factor in ensuring that the examination procedure runs quickly and satisfactorily (see point 2.1.003).
2.5.001 The European Patent Organisation has signed co-operation and GL A-III, 12
European patent extension agreements with a number of
European states that are (or at the time were) not party to the EPC. Since 2010, it has concluded further agreements providing for European patents to have effect in non-contracting states. However, these "validation agreements" are not limited to European countries.
As an applicant for a European patent you thus have a simple and cost-effective way of obtaining patent protection in some countries which are not contracting states. If you request
extension/validation and pay the extension/validation fee(s) in time, you can have European patent applications (direct and EuroPCT filings) and patents extended to/validated in these countries, where they will then in principle have the same effect as national applications and patents, will be subject to national law and will enjoy essentially the same protection as patents the EPO grants for EPC contracting states. You can currently request extension to Bosnia and Herzegovina and to Montenegro, as well as validation in Morocco, the Republic of Moldova, Tunisia and Cambodia. Lists of countries which have concluded an extension/validation agreement with the EPO are available at epo.org/aboutus/foundation/extension-states.html and epo.org/aboutus/foundation/validation-states.html.
The extension and validation systems are largely the same as the designation system for contracting states. For example, the period for payment of the extension/validation fee is the same as the period for payment of the designation fee. However, the extension and validation systems are based not on direct application of the EPC but solely on the relevant national law modelled on the EPC. Hence they are subject to the national extension/validation rules of the country concerned. Further information is available at epo.org/law-practice/legal-texts/extension-validation-system.html.
