European patent

The European patent is a valuable instrument for those who develop their business in the European field. With the European patent one obtains the protection in the member states of the European Patent Organization, that are more and different from the member states of the European Union.

The European patent provides for a rather articulate phased procedure. There is a first part in which a single patent application valid for all states designated in the application is filed, followed by a single phase of search and examination. Then, once the European patent has been granted, it “splits” into several national patents, losing its unitary feature and giving protection in the single states.

In the near future, the European Unitary patent will also enter into force definitively with validity in all countries.The European patent can be filed as a first filing and in this case, it grants the purported priority right, that is the possibility to extend the application to other countries within 12 months, reconnecting to the filing date of the European patent. The procedure is possible but it requires caution if the applicant is Italian.

Filing a European patent with Studio Turini

The procedure to obtain a European patent is quite complex and in our office it is always supervised by a registered European patent attorney who knows the procedure well and can suggest the best solutions to have the patent granted.

We examine the main points of the European procedure.

  1. What is the European patent?
  2. How to file a European patent application
  3. The grant procedure of the patent
  4. Keeping the European patent in force
  5. Duration and protection
  6. Reference regulations

What is the European patent?

The European patent is valid in all European member countries of the European Patent Convention, of which some countries of the European Union and other neighboring countries are part. The European patent is requested and obtained with a unitary procedure managed by the European Patent Office, often indicated by      the English acronym EPO. The patent application can be filed immediately or within 12 months from the filing of a previous identical national or regional patent, that can be an Italian patent application (purported priority). Anyone can file a European application, independently of its own residence or nationality, but s/he is obliged to be represented by a qualified European agent if s/he does not have residence or nationality in one of the member countries of the EPO Convention (contracting states). The European patent can represent an independent patent application or can be inserted as a regional application into an international patent application: in this second case it is an Euro-PCT application. Before filing a patent application, it is necessary to examine the invention thoroughly and choose how to file it.

When the preliminary analysis has been carried out carefully and with the help of a registered European patent attorney in the field, then the application can be filed.

How to file a European patent application

The European patent application can be filed with the EPO or with the Italian Patent and Trademark Office, which will forward it to the European Patent Office.

The official languages of the EPO are English, French and German and, therefore, the application and its attachments must be written in one of the languages admitted by the office, which will be the language of the entire procedure.

The description, the claims and the technical drawings must be attached to the forms provided by the EPO. First of all, the description must highlight the technical problem that the invention aims to solve and the advantages that derive from the use of the invention. All the main technical-constructive features of the proposed solution must be described, with the help of the attached drawings. The functioning or the procedure through which a certain result is obtained will be described depending on the type of invention. The most important part of the patent are the “claims” that must reproduce, in a specific technical jargon, the elements on which the protection is sought. To understand the importance of the claims, it is enough to consider that in general what is described but not claimed is not an object of protection. The claims are intended to be formulated in a “waterfall-like” way in the sense that the first one is the most important one, which encloses the core of the invention, while the subsequent ones are a sort of specification of the first one.

The technical drawings will also have to be prepared so as to clearly show what is the inventive solution to be protected. Therefore, it is inadvisable to attach too many detailed constructive drawings with sizes and irrelevant particulars.

In order to proceed with the filing, administrative fees and official fees, which vary depending on the text length and the number of claims, must be paid. Preparing the patent application well is as fundamental as analyzing the invention well before filing it, since on the basis of these preliminary choices the possibility of defending the patent in case of counterfeiting is greater or less  

The grant procedure of the patent

Once the patent application has been filed, an application number and a filing date are obtained, and from that moment the examination of the file initiates.

European patent applications undergo a novelty search that is done directly by the European Patent Office and is forwarded to the applicant. Within 18 months from filing the application is published generally together with the novelty search. The applicant will have to choose whether to proceed further with the examination by paying the examination fee and replying to any objections raised in the search phase within 6 months from the publication date of said search. At that point, the file is assigned to an examiner who, on the basis of the text of the filed application, examined in the light of the documents cited in the novelty search, and on the basis of any filed reply as well, decides whether to grant the patent or not.

In this phase the applicant can send further observations and replies to the examiner if the examiner does not intend to grant the patent and can also “adjust” the application to overcome any objections raised by the Office. In this regard, it is worth remembering that absolutely nothing can be added to the text of the application since the invention is crystalized as described at the moment of the filing. Nevertheless, the claims can be limited or clarified, still remaining within the limits of what has been originally described.

If the examiner considers that the patent can be accepted, s/he issues a favorable written opinion (intention to grant) and forwards it to the applicant, who will have to pay the grant fee and file the text of the claims in the other two official languages within 4 months.

Once this has been done, the patent is granted through the issuance of a decision to grant and a grant number and grant date are assigned to it. 

Once the patent has been granted, within 3 months from the publication of the decision to grant, the patent will have to be validated in one or more states of the EP convention, freely selected by the holder among those indicated in the application.

As it is commonly said, after grant the European patent “splits” into a series of national patents that will be valid only in those countries where the original patent will be validated.

In general terms, the validation consists of filing the translation of the granted patent into the national language of the state and paying the requisite national fees. However, the validation procedure varies from state to state therefore it is advisable to resort to an expert to know the specific national provisions.

The applicant who has obtained a European patent is not obliged to validate it in all the states indicated initially, but can instead choose to validate it in some countries of interest, thereby reducing costs. However, states that have not been indicated initially in the patent application cannot be added.

Keeping the European patent in force

During the grant procedure of the European patent the application must be kept in force by paying annual maintenance fees directly to the European Patent Office. In this phase, in order not to lose the rights over the patent application, it is also necessary to reply to any observations or objections raised by the Office and pay the corresponding fees. For example, if the examination fee is not paid the procedure is interrupted and all rights over the filed application are lost. After the European patent has been granted and validated, official fees are no longer payable to the EPO. Instead, in order to keep the patent in force, annual maintenance fees will have to be paid to national offices state by state in each country where it has been validated.

Duration and protection

Even if many months are necessary before the patent application is accepted, in this period the invention can be implemented, sold or licensed.

Moreover, action can be taken against an infringer also on the basis of the public patent application alone, with the assistance of an attorney expert in the field to avoid mistakes that could compromise its success. For example, in the case of the European patent application, if one wants to initiate an infringement procedure in Italy, first of all, the translation into Italian of the text of the claims must be published with the Italian Patent and Trademark Office, otherwise, they cannot be opposable to third parties.

The European patent is valid for 20 years from the filing date.

Reference regulations

European Patent Convention of 1973 reviewed in Munich on 29.11.2000 (CBE 2000)

Get in touch with our expert

Ing. Mario Emmi

Head of the patent department

We are equipped with a specialized software for the management of patents, design, trademark, copyright's portfolios" Battista Software Project" - Studio Brevetti Turini s.r.l. Project co-financed under Tuscany POR FESR 2014-2020

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