A European patent application offers a centralized route to seek protection in several countries. It is an important option for businesses and individual inventors seeking to protect their R&D across Europe.
However, the process is relatively complex and there are many practical considerations to consider, such as country-specific requirements, translation and cost management. If an application is made without sufficient review, it may result in delay or unexpected additional costs.
In this article, we will organize the procedures and key points of the European patent application in the form of Q&A, so that those who are new to the scheme can easily understand the key points.
What is a European patent application and why should I use it?
The European patent (European Patent) is a system that is reviewed by the European patent office (EPO) through a single application and subsequently secured the rights through the validation process of each country. There are currently 39 countries in the European Patent Convention (EPC), and if you want to secure rights in more than three countries, it is often more efficient in terms of procedures and costs than individual national applications.
On the other hand, individual national applications may be more economical if the countries under protection are limited, so business plans and the scope of securing rights should be considered together before filing.
A PCT application can enter the European phase generally within 31 months from the priority date. Since 2023, applicants may also request unitary effect for an eligible granted European patent in participating EU states.
What inventions are eligible for European patent protection?
The main requirements of the European patent are novelty and inventive steps.
Novelty will not be accepted if the invention is published before the application is made, so the application must be completed before the product release, exhibition, and publication of the paper. When sharing content externally, such as collaborative research, it is important to conclude a nondisclosure agreement (NDA).
In addition, the invention should not be self-evident compared to conventional technology, and simple design changes or technical combinations may negate the inventive step . On the other hand, pure mathematical methods, business methods, computer programs themselves, are in principle excluded from patent applications.
How does the European patent application process work?
The European patent application process takes the following steps:
During the application phase, the patent specification, drawings, and patent claims are submitted and the application and search fees are paid. In the next three to six months, a search report will be published, which will provide preliminary assessments of novelty and inventive steps.
A European patent application is normally published 18 months after the filing date or, if priority is claimed, the priority date.
Examination must generally be requested within six months after publication of the mention of the European search report. The applicant then responds to examination objections, including through arguments and claim amendments.
Before grant, the applicant must pay the required grant and publication fee and file translations of the claims into the EPO's other two official languages.
Finally, to maintain rights in each country requires the payment of validation procedures and renewal fees by country, and strategic country selection is important as the requirements for translation by country are different.
What fees and translation costs should be budgeted?
A European patent is a complex cost structure.
In addition to the basic fees, such as application fees, search fees, examination fees, and grant fees, there is an additional charge if the patent claims exceed 15. Therefore, it is important to strategically construct a patent claim in the application phase.
Translation can be a significant part of the cost. An application filed in a language other than English, French or German generally requires a translation into an EPO official language within two months. Before grant, the claims must be translated into the other two EPO official languages. Accurate translation is important because errors can affect the scope of protection.
On the other hand, if you are a member of the London Agreement, your translation requirements will be partially relaxed, so you can use them to cut costs.
How do I enter the European stage through an international application (PCT)?
For a PCT application, European phase entry is generally due within 31 months from the priority date. Entry may require a translation into an EPO official language, payment of fees, and other prescribed steps. A supplementary European search may also be required, depending on the international search authority.
Failure to comply with the deadline may result in the application being considered withdrawn, but recovery procedures may be permitted upon meeting certain requirements. In addition, applicants residing outside of the EPC Contracting Countries must appoint a European patent agent.
What is the European patent application strategy?
When applying for a European patent, you should pay particular attention to the following:
- Applications must be completed prior to disclosure and patent claims must be properly managed to avoid unnecessary costs.
- The quality of translation has a direct impact on the scope of rights, so a thorough review is necessary.
- It is efficient to select only the countries that are needed to align with the business strategy, and it is important to plan for cost and time, as the entire process can be prolonged.
- First of all, because the process is complex and deadline management is tricky, it is advantageous to get help from an experienced European patent agent in terms of securing rights and managing costs.
European patent applications are a very effective means of expanding rights internationally. However, if procedures, costs and national differences are not taken into account, unexpected risks may arise.
Therefore, it is important to comprehensively review the confidentiality of the invention, patent claim strategy, translation management, and country selection, and to establish an optimal strategy in comparison with the unitary patent and individual state applications.
If you are systematically prepared by working with experts, you can gain more stable and efficient rights.
This article reflects the information available when it was published. Contact us to discuss your circumstances.