Procedures before the EPO are conducted in the language of the proceedings (see 3.3). However, in written proceedings parties may use any official language of the EPO. In addition, parties from a contracting state having a language other than English, French or German as an official language may file documents in such other language, provided a translation is filed within one month. In oral proceedings, any party may use an official language of the EPO different from the language of proceedings, provided it gives notice to the EPO one month before. In that case, the EPO provides at its own expense interpretation into the language of the proceedings, if necessary.
6.1 Procedure up to publication
The first stage of the procedure comprises:
6.1.1 Examination on filing
Here it is examined whether the requirements for according a filing date are met. In accordance with the Patent Law Treaty, a filing date requires:
- an indication that a European patent is sought,
- information identifying the applicant,
- a description or a reference to a previously filed application (see 3.4).
6.1.2 Formalities examination
This includes an examination whether the request form comprises the prescribed indications
- the requirements with regard to representation are met,
- the documents making up the application meet the formal requirements to the extent necessary for the purpose of a proper publication,
- a translation of the application, fulfilling the formal requirements has been filed, if the original application was not filed in an official language of the EPO,
- the designation of the inventor meets the requirements,
- any declaration of priority meets the formal requirements.
6.1.3 The extended European search report (EESR)
The EESR comprises the European search report and a preliminary opinion on patentability (search opinion).
The search report is drawn up on the basis of the claims, with due regard to the description and any drawings. It mentions the documents retrieved by the search examiner which may be taken into consideration in assessing the requirements of novelty and inventive step.
The documents are usually older patents or publications (often referred to as “patent literature”), or scientific articles, excerpts from specialist books or the like (“non patent literature”). In fields of technology where the products have short life cycles, as for example video games, internet disclosures also play an important role.
As a rule, the search opinion should cover all objections to the application, thereby indicating the deficient part of the application, the requirement which is not met and the reason for the objection where this is not immediately apparent.
No search is conducted for a claim which is deemed to be abandoned for non-payment of any claims fees which had become due.
If the search division considers that the application does not meet the requirements of unity of invention, it draws up a partial search report for the unitary invention first mentioned in the claims. With the transmittal of the partial search report, it informs the applicant accordingly and invites him to pay further search fees for each invention other than the one first mentioned in the claims, if the search is to cover these inventions as well.
If the application contains more than one independent claim in the same category, the applicant is invited to indicate an independent claim per category on the basis of which he wishes the search to be carried out. If the applicant fails to provide such an indication, the search is carried out on the first claim in each category, unless the applicant can convince the examiner, that a plurality of independent claims is appropriate under the circumstances.
If the search division considers that the applica- tion does not comply with the requirements to such an extent that it is impossible to carry out a meaningful search, it issues a reasoned dec- laration to this effect which replaces the search report (declaration of no search). If it considers that it is impossible to carry out a meaningful search for some of the claims, a partial search report is established.
A limitation of the search has the serious consequence for the later substantive examination that the non-searched matter has to be deleted from the specification and can no longer be claimed. Thus, in particular in case of divisional applications it has to be ensured –and proven to the Search Division, if applicable – that the subject matter of the claims to be examined is supported by the originally filed version of the parent application.
The search report is an important indication for the applicant as to the chances for obtaining eventually a patent and for his decision whether or not to request substantive examination. The EPO currently has the aim of completing the EESR for all applications, including divisional applications, within six months after they were filed (referred to as “Early Certainty from Search” program).
6.2 Publication of the application
The European patent application is published in electronic form in the language of the proceedings 18 months after the date of filing or priority. From that day on the public has access to the electronic file and the applicant enjoys provisional protection.
The publication contains the description, the claims and any drawings, all as filed, plus the abstract. If the European search report is available in time, it is annexed; if not, it is published separately (A3 publication). The European patent application is not published if it has been finally refused or withdrawn or deemed withdrawn up to the end of 5 weeks before the end of 18 months after the date of filing or priority.
6.3 Substantive examination
The EPO informs the applicant of the day of publication of the search report. Within 6 months from that date the request for examination has to be filed, otherwise the application is deemed to be withdrawn. Within the same time limit, the applicant is required to respond to the search opinion unless the opinion does not raise any objections. This is the only possibility of the applicant to make amendments of his own volition without restriction. In the course of substantive examination, the admission of amendments is subject to the discretion of the examining division.
With the valid request for examination, responsibility passes from the receiving section to the examining division. The examining division consists of three examiners. However, the first examiner is entrusted to act on behalf of the division up to the point of a final decision. Oral proceedings have to take place before the full examining division.
The examining division examines in the light of the EESR and the applicant’s reply to the search opinion whether the claims meet the requirement of clarity and the application meets the formal and substantive requirements of the EPC, in particular whether the claimed subject-matter is new and involves an inventive step.
If the examiner responsible has objections, he sends a first examination report inviting the applicant to file his observations and, if appropriate, to submit amendments to the specification.
The applicant is obliged to reply within a period of at least four months. If he fails to do so in due time, the application is deemed to be withdrawn. After this reply, if there are still objections, the examiner may issue a further communication, contact the applicant by telephone, invite the applicant to an interview or summon to oral proceedings. Examiners are instructed that a final position (grant or refusal) should be reached in as few actions as possible. Refusal after the reply to the first examination report is not excluded, provided the applicant’s right to be heard is not violated.
The applicant is not allowed to improve his position by adding subject-matter to the original application. An amendment to the specification is regarded as introducing new subject-matter if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from the application as originally filed. This requirement is very strictly applied. For this reason, it is of particular importance for the European grant procedure that all necessary information with regard to the function of the invention is already incorporated into the application in the original version.
If the examining division comes to the conclu- sion that a European patent cannot be granted, it will refuse the application. The decision is issued by the examining division as a whole, and the grounds of refusal must be stated. Refusals may be based only on grounds on which the applicant has had an opportunity to comment. The decision is always given on the application as a whole and not in respect of individual claims. Thus, deficiencies in respect of a single claim or in respect of the description may result in the refusal of the application.
Refusal of the application is subject to appeal to the boards of appeal of the EPO. Decisions of the boards of appeal are final and not subject to any further review by national or international instances.
6.4 The grant stage
If any deficiencies have been remedied and the examining division is of the opinion that the application is ready for grant, it informs the applicant of the text in which it intends to grant the European patent and invites him to pay the fee for grant and publishing and any claims fees for claims in excess of 15 which have not yet been paid, as well as to file a translation of the claims into the two official languages of the EPO other than the language of the proceedings. Minor amendments, in particular the correction of obvious mistakes like typing errors, are still possible.
If the above fees are paid and the translations of the claims are filed in due time, the decision to grant is issued and some weeks later the mention of the grant is published. From the latter date, the European patent takes effect in the designated contracting states.
The EPO has the aim of issuing the mention of the grant of the patent within twelve months of the date of filing of the request for examination (referred to as “Early Certainty from Examination” program).