5.1.001 The European patent grant procedure is an examination procedure
beginning with a formalities examination and a mandatory search.
The first stage ends with the publication of the European patent application and the search report on the EPO publication server.
At the applicant's request this is followed by the second stage, substantive examination.
After the patent has been granted, there may be a further procedure in the form of opposition proceedings or, upon request of the patentee, limitation or revocation proceedings.
The first stage of the procedure comprises an examination on filing, formalities examination, preparation of the European search report and a preliminary opinion on patentability, and publication of the application and the search report. Responsibility for this stage rests with the Receiving Section and a search division.
5.1.003 The second stage comprises substantive examination and grant. Examining divisions are made up of three technically qualified examiners, who may if necessary be joined by a legally qualified examiner. Until a decision has to be taken on the application, its examination is as a rule entrusted to one of the technically qualified examiners. This examiner is responsible for issuing the requisite communications and for discussing the application with the applicant in writing, on the telephone or by videoconference.
If oral proceedings are requested by the applicant or arranged at the EPO's initiative, they are held before the full examining division by videoconference. The final decision on the grant of the patent or refusal of the application is also a matter for the full examining division.
5.1.004 After the grant of the patent, opposition proceedings may be initiated by third parties. Responsibility for examining oppositions rests with the opposition divisions, which are composed in the same way as the examining divisions, except that only one member of the opposition division may have been involved in the earlier grant proceedings, and that member is not allowed to chair the division. More details about opposition proceedings can be found in points 5.5.001-5.5.012.
5.1.005 After the grant of the patent, patent proprietors themselves may initiate revocation or limitation proceedings. The request for revocation or limitation may be filed at any time after the grant of the patent but not while opposition proceedings in respect of the European patent are pending. Decisions on the revocation or limitation of European patents are taken by the examining divisions. More details about revocation and limitation proceedings can be found in points 5.6.001-5.6.008.
Appeals may be filed against decisions taken by the Receiving Section, the examining divisions, the opposition divisions or the Legal Division. A decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows separate appeal.
Decisions on appeals are taken by the independent judicial body of the boards of appeal of the EPO.
5.1.007 In certain cases it may be possible to file a petition for review by the Enlarged Board of Appeal. For further details, see point 5.7.012.
5.2.001 On receiving an application the Receiving Section examines whether it can be accorded a date of filing. This is the case if the application documents contain:
– an indication that a European patent is sought
– information identifying the applicant
– a description or a reference to a previously filed application.
5.2.002 It is not necessary to file any claims in order to obtain a date of filing. You may file claims after the date of filing on your own initiative or within two months from an invitation requesting you to do so. However, you should take care that the late-filed claims do not contain subject-matter which extends beyond the content of the application as originally filed.
5.2.003 If any of the requirements mentioned in point 5.2.001 have not been fulfilled, a date of filing cannot be accorded. The Receiving Section will inform you accordingly and invite you to remedy the deficiencies found within a non-extendable time limit of two months. If you file a timely response and remedy the deficiencies, the date of receipt of your response will be the date of filing of the application. If you do not file a (timely) response, the application will not be dealt with as a European patent application. The EPO will notify you under Rule 112(1), and you may then apply for a decision under Rule 112(2) or request re-establishment of rights under Article 122 and Rule 136.
For a date of filing to be accorded, the documents do not have to meet any particular requirements as to form or presentation. It is essential, however, that they be sufficiently legible to enable the information to be discerned.
Section examines whether the filing fee, any additional fees and the search fee have been paid in due time (see points 4.3.011 and 4.3.012). If the filing fee or the search fee has not been paid in due time, the European patent application is deemed to be withdrawn (see point 4.3.014). However, see point 5.10.007 for the possibility of further processing.
5.2.005 If the application has been accorded a date of filing and is not deemed to be withdrawn, the Receiving Section checks for compliance with the provisions governing
– translations (see points 4.1.006-4.1.011)
– the content of the request for grant (see point 4.1.013)
– the presence of claims (see points 4.2.018-4.2.028, 5.2.002)
– the filing of the abstract (see points 4.1.012 and 4.2.034-
– representation (see points 4.1.023- 4.1.031)
– physical requirements of the application documents including any sequence listings and disclosure of biological material
– any priority claimed (see points 4.1.017-4.1.021)
– the designation of the inventor (see points 4.1.014-4.1.016)
– the filing of any drawings (see points 4.2.030-4.2.033)
If the Receiving Section finds any deficiencies, it invites you to remedy them in accordance with the Implementing Regulations; if you fail to do so, the legal consequences provided for in the EPC take effect, i.e. the application is deemed to be withdrawn or is refused.
