Grant procedure before the European Patent Office
The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation.
[notes 1] The prosecution of European patent applications until grant typically takes several years.
[10] European patent applications can be filed at the EPO at Munich, Germany, at The Hague, Netherlands,[11] at Berlin, Germany,[12] or "if the law of a Contracting State so permits, at the central industrial property office or other competent authority of that State".
For example, in the United Kingdom, it used to be required to obtain clearance for all inventions but now it is only prohibited for a UK resident to file an overseas patent application for inventions in certain sensitive technical areas without obtaining clearance through the United Kingdom Intellectual Property Office first.
[25] If the deficiencies are not corrected, the European patent application is refused, unless a different legal consequence applies.
[26] Oral proceedings may exceptionally take place before the Receiving Section,[27] to give an opportunity to the applicant to be heard on an issue involving formality requirements.
A European patent application is published as soon as possible "after the expiry of a period of eighteen months from the date of filing or, if priority has been claimed, from the date of priority", or "at the request of the applicant, before the expiry of that period".
[30] These rights include at least the right for the applicant to "claim compensation reasonable in the circumstances from any person who has used the invention in that State in circumstances where that person would be liable under national law for infringement of a national patent.
"[31] In relation to some contracting states however, a translation of the claims is required for the provisional rights to come into effect.
[42] Currently however,[37] under new Rule 70a EPC, a reply to the search opinion is mandatory,[43] within six months "after the date on which the European Patent Bulletin mentions the publication of the European search report" (which is also the time limit for requesting examination).
[58] In such communications, the Examining Division invites the applicant to reply within a given period,[59] by correcting the "deficiencies noted and [amending] the description, claims and drawings", where appropriate.
[62] During examination, oral proceedings may take place at the EPO's own behest or at the request of the applicant.
[73] The claims must then be translated in the other two official languages of the EPO, and fees for grant and publishing must be paid.
[73] The time limit for paying the fees for grant and publishing, and for filing the translation of the claims is four months.
[75] The Examining Division is then bound by its final decision on an application, which can be set aside only following an admissible, allowable appeal.
[81] The European patent may be centrally opposed at the EPO before the expiry of a nine-month period following the publication of grant.
The request for unitary effect "must be filed within one month of the date of publication of the mention of the grant in the European Patent Bulletin".
[87] This notably means that such person has no right to attend oral proceedings before the Examining Division, which are not public.
[67] This contrasts with the filing of a post-grant opposition, wherein the opponent becomes party to the proceedings, therefore acquiring, notably, the right to be heard before any decision is taken.
[92] The grant proceedings may be stayed if national proceedings have been instituted before a national court or authority by a third party seeking a judgment recognizing its entitlement to the grant of the European patent in lieu of the applicant on record.
[93] If a final decision is issued recognizing the entitlement of the third party to the grant of the European patent, the third party may Under Rule 14(3) EPC, the European Patent Office may resume the grant proceedings at any time[95] "regardless of the stage reached in the national proceedings", taking all valid interests into account.
[98] The interruption is declared ex officio by the EPO, is retroactive (even if the EPO declares the interruption several years after the occurrence of the loss of rights), and it allows the affected party to later remedy, when the proceedings are resumed, "any loss of rights which occurred during this period".
[106] One reason for withdrawing an application may be to avoid its publication, if for instance it has been decided to keep the invention secret instead of applying for a patent.
According to the EPO Guidelines,[110] The Boards of Appeal have dealt in a great number of decisions with the question of whether the withdrawal of a European patent application can be retracted, because it was made erroneously.
All three members have a vote on any issues that have to be decided, including the main decision of whether to allow or refuse the patent application.
