As an American business with an overseas reach, you may want to obtain patent coverage in Europe. It turns out you’re not the first to consider such a thing, so there are a few established ways of going about it. Some ways are faster than others, but don’t count on a quick process.
As an American company, your US patent attorney will be your point of contact for coordinating patent filings outside the country. When one of our clients pursues a utility patent in Europe, we work hand-in-hand with our European colleagues to file the application and shepherd it through the process.
However, I myself am not a European patent attorney. So I present the following broad overview as my understanding of events (and as a necessarily incomplete account), with the goal of clarifying things for folks here in the USA.
Let’s assume you’ve filed a utility patent application in the United States. Generally speaking, there are two pathways to then obtain a corresponding utility patent in a European country, and two different filing methods.
PCT Path vs. Paris Convention Path
The PCT and Paris Convention options are covered in more depth elsewhere on our site. Briefly, under the Paris Convention, if you file a corresponding application directly in another country, you can keep your US priority date as long as it’s within one year.
A PCT application, on the other hand, adds an intermediate step. Rather than filing directly in any particular country at the one year mark, you instead file a single PCT application that holds your place in line internationally for a total of 30 or 31 months. At that later point, you must decide where to continue the process.
EPO Filing vs. Direct Filing
Regardless of whether you choose the PCT or the Paris Convention path, there are generally two choices when it comes to Europe in particular: You can either file directly into the European countries of interest, or you can file a single application with the European Patent Office (EPO) and then validate it later in the countries of interest.
As the EPO states on its website, this allows you to “obtain protection . . . in up to 44 countries through a centralised and uniform procedure that requires just one application.” Both of these filing options–direct or EPO–are available at the Paris Convention deadline (12 months) and at the PCT national phase deadline (31 months).
Filing directly into any given country involves going through the patent examination process in that country, with its attendant procedures and rules. But what happens if you choose the EPO route?
II. EPO Applications: What to Expect
EPO patent applications undergo an (often lengthy) examination process completely independent of the US examination process, during which annual maintenance fees are due. If the EPO eventually allows the application, then you must decide where you’d like it to be enforceable. You pay to “validate” the EPO patent in those countries, and continue to pay annual maintenance fees in each one for the life of the patent.
A. The Patentability Search Report – Deciding Whether to Proceed
The path already taken will dictate the initial events after an EPO application is filed. The basic idea is that the EPO wants you to review a non-binding patentability Search Report prepared by them, and then decide whether you want to continue with the formal examination process.
If your application went the PCT route, then such a patentability search was already produced, although not necessarily by the EPO. Therefore, the questions are (a) did the EPO do the search, and (b) if so, did it produce a positive opinion (claims were deemed allowable). If you went the Paris Convention route, then no official search will have been done.
1. PCT Route
If your EPO filing is based on a PCT application, then an International Search Report (ISR) was prepared during the PCT phase. That ISR may or may not have been issued by the EPO.
Scenario A: The EPO Issued the International Search Report and It Was Negative
If this is the case, then you’ll be notified that you have six months to file a mandatory response to the findings of the ISR, and also to decide whether you wish to proceed with examination.
Scenario B: All Other PCT Situations
If the ISR was prepared by a different entity (e.g., USPTO, KIPO), or it was a positive opinion prepared by the EPO, then you’ll be notified that you have six months to optionally amend your claims. US applicants usually want to reduce their number of claims to 15 or less, since higher fees will apply otherwise.
At that point, if the ISR was performed by someone other than the EPO, you’ll receive a European Search Report (ESR). If the EPO issued a positive ISR, then no further search is needed. In any event, you get another six months to file a response and decide whether you wish to proceed with examination.
2. Paris Convention Route
If your application is based on a previous US filing under the Paris Convention (rather than PCT), then no ISR would have been performed. Accordingly, the first thing you’ll get is a European Search Report (ESR) about 4-6 months after filing. Then you’ll have six months to file a mandatory response to the findings of the ESR, and also to decide whether you wish to proceed with examination.
B. The Examination – Arguing With the Examiner
If you review the ESR and decide to back out, some of your application fees may be refunded. However, once you request to “proceed further,” the substantive examination process begins. As in the US, an Examiner will review the application and either (a) decide it’s allowable or (b) issue an Examination Report stating why it’s rejected. You then have the opportunity to respond to that rejection with arguments and/or amendments. This back-and-forth can continue for more than one round, and can take several years to complete.
C. The Grant – Choosing Your Countries
If the application is granted, you’ll be notified of the deadline to pay the grant fee and have any necessary translations prepared. This is also when you must decide on the countries where you’d like to validate. After the grant date, a nine-month opposition period begins, during which third parties can file an official challenge to your patent.
The initial stages of the EPO application process can seem arbitrarily complicated, and the overall process is a long one. However, the rules are fairly straightforward once you realize they’re based on the application’s filing method and previous path.
A granted European patent, validated in key countries, can be an invaluable tool to deter potential infringers and to enable enforcement of your intellectual property rights in Europe. If you have questions about this process, or how you might broaden your patent portfolio, please give us a call.
Be sure to visit our Ultimate Guide to Patents for Your Business
- This article does not cover designs or utility models
- When it comes to utility patents, the UK is still part of the EPO (despite Brexit)
Photograph © 2020 Dave Bourgeau
Blog Post © 2021 Kolitch Romano LLP
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.