Applying for a #Patent in the EU

| December 3, 2018

Developing, inventing, and commercializing a new product is not a task for the faint of heart. It is an all-consuming process that involves many steps, starting from ideation and eventually leading to product-market fit if done correctly, writes Carly Klein.

Throughout this process, inventors have a lot of thoughts to keep in mind. One key consideration that must be top of mind is intellectual property protection. Specifically, inventors should look to obtain patents on their new products as early as possible. This article outlines the patent application and grant process under the European Patent Office (EPO).

The EPO Patent application

An EU patent application consists of five items: (1) a request for the grant of a European patent, (2) a description of the invention, (3) one or more claims, (4) any drawings referred to in the description or claims, (5) and an abstract.

What qualifies as an invention for the EPO?

European patents can be granted for: “any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.”

Thus, the four requirements that an applicant must prove for patentability are that their idea must qualify as (1) an invention with (2) novelty, (3) inventiveness, and (3) commercial use. The EPO has a very broad definition of ‘invention’ and does not expressly provide for what does constitute an invention; however, it does set forth what does not constitute an invention. You can find a list of what will not qualify here.

The stages of the EPO patent process

The first stage of the patent granting procedure involves the following: an examination on filing, a formal examination, preparation of the European search report, a preliminary opinion on patentability, and publication of the application.

The second stage is the substantive examination phase and, if applicable, the patent grant. This process is comprised of examination by three technically or legally qualified examiners. Examiners are responsible for issuing the necessary communications and for keeping the applicant up to date with the application.

Whether or not there are more steps depends on the invention and the controversy of the application. For example, after the grant of the patent in the second stage, third parties may come forward for opposition proceedings. The patent applicant may also initiate revocation or limitation proceedings.

Where and how to file a patent application with the EPO

The most efficient way to file a European patent application is online using the EPO Online Filing software.

Alternatively, you may use the EPO case management system (CMS) or the EPO web-form filing service. The EPO provides both of these options free of charge.

Tips for a first-time inventor

Most importantly, the EPO strongly advises applicants to read the explanatory notes carefully before completing the patent grant request form. In completing this form, an inventor represents that he or she meets all of the mandatory requirements for a request for a grant. This request must be signed by the inventor and any legal representative, if applicable.

Additionally, J.D. Houvener, founder & CEO of Bold IP, says that a good tip is to “Seek patent protection on your product with enforcement in mind. Work with the right patent attorney from day one. Don’t just try to work with any old patent agent, or try to do it yourself to just get the patent through. If you’re going to do the process, do it right, and work with an attorney to think through how you will monetize it and enforce your rights. The time may come to prevent infringers and copycats from trying to rip off your idea, and it is best to be prepared rather than caught off guard.”

Another best practice for an inventor is to keep products secretive before filing for a patent. If an inventor must disclose an invention in the marketplace prior to filing, it is recommended to have at least a provisional patent.

You can find the EPO guide for EU patent applications here.

Carly Klein is a law student at Loyola Law School in Los Angeles. A graduate from Boston University with a B.A. in Political Science & Philosophy, she has previously served an Americorps term at the American Red Cross in Los Angeles on the Service to the Armed Forces & International Services Team.


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