European patent application

The grant procedure at the European Patent Office is divided into the following steps:

Search

In the first few months after a European patent application is filed, an Examiner at the European Patent Office conducts a search for older inventions or other publications that may be relevant to the invention. These older documents are collectively referred to as “prior art”. In theory, this could be any type of document, but in practice, the search is primarily for older patent documents.

Because a newly filed invention must stand out from what is already known, the older patent documents are important. Firstly, what is claimed in the application must not already exist in a quasi-identical form. This is called the “novelty” requirement. In addition, the development must not be very close to what is already known in a trivial way. This is known as the “sufficient inventive step” criterion. (Don’t be too self-critical about your invention, these are very formal criteria and we will help you to overcome these hurdles with our decades of experience).

Once the search has been completed, the European Patent Office will send you a search report. First, the specific documents are sent. In addition, the documents will be classified as relevant or not relevant. In addition, a more detailed assessment of the filed invention is given, which already resembles a first (perhaps still somewhat superficial) examination report.

Publication

Almost exactly 18 months after the filing date (or, in the case of a national first filing, the priority date), the European Patent Office publishes the patent application. Today, this is only done electronically via the European Patent Office website.

Your invention, as described in the patent application, becomes public knowledge. Although you must provide detailed information about the invention in the description of the patent application, this does not mean that you must disclose all your laboratory secrets. When drafting the application, we will discuss with you what details to include and what not to include.

Publication also has significant advantages for you: Under the law of most Member States, you can claim compensation if someone copies your invention once it is published (not just once the patent is granted!). We are happy to advise you on this as well, if necessary. However, Applicants are always pleasantly surprised to find out that claims for damages are already possible at this early stage, and that the final grant of a patent is not the only relevant factor for such claims.

Examination

A few months after the search report is sent, the examination process begins. Basically, there is a back and forth between the Applicant and the Patent Office, or usually between the Applicant’s patent attorney and a particular Examiner at the Patent Office. It is common that the comments in the search report or even in the first examination report are rather critical. Usually, the Examiner’s objections can be overcome. This is often done by arguments based on the extensive case law of the European Patent Office’s Board of Appeal. Another way to overcome objections is to amend the patent claims somewhat. For example, amended patent claims can be drafted using the subclaims.

Grant

As a rule, the patents we file are granted. So, as a last step in the European patent procedure, the Examiner will inform us in advance in which form a patent can be granted. For this purpose, the texts describing the invention, in particular the patent claims, are resent in their latest version. The patent Applicant must agree to this version of the patent documents and claims. The patent is granted only with this agreement.

It is also at this stage that a decision is made on the countries to be covered. It is also possible to grant a unitary patent valid throughout the EU. An overview can be found here.