European Patent Office - general presentation

EPO @ TechHub Bucharest - 11 Sept. 2014

Koen Lievens

Andrei Stefan(September 2014)

The European Patent Office and the patent system

The European (EP) grant procedure and the International (PCT) route

Patentability and Interacting with a patent examiner: Granting and

refusing of patent applications

File inspection examples

• Introducing the speakers

Koen Lievens

Telecom Director

Concetta Larcinese

Telecom Examiner

Franck Adkhis

Telecom Examiner

Andrei Stefan

Telecom Examiner

Radu Apostolescu

Telecom Examiner

Georgios Orfanos

Telecom Examiner

EPO @ Tech hub 11 September 2014

The European Patent Office

An introduction to the EPO and the European patent system

• The European Patent Office and the patent system

• The patent system

• Basics

• About us

• Granting and publishing patents

• Quality patents

• Patents for the public

• Training and awareness-raising events

• The unitary patent

• Statistics

• Contact

Exceptions to patentability as defined by the EPC1)

Plant or animal varieties

Inventions whose commercial exploitation would be contrary to

"ordre public" or morality (e.g. processes for cloning of

human beings)

Methods for treatment of the human or animal body by surgery

or therapy and diagnostic methods

1) See Article 53 and Rule 28 EPC.

• One product = multiple patents and other IP rights

13

EPO @ Tech hub 11 September

2014



• Basics

• About us


• Quality patents




• Statistics

• Contact

• The EPO

• As the patent office for Europe, we deliver the services defined under the European Patent Convention (EPC). The EPC provides the legal framework for the granting of European patents via a centralised procedure.

• We provide patent protection in up to 40 European countries based on a single application in either English, French or German, our three official languages.

• We are:

– the second largest intergovernmental institution in Europe

– not an EU institution

– self-financing, i.e. revenue from fees covers

operating and capital expenditure

• The EPO has offices at five different locations.

Its headquarters are in Munich.

• The European Patent Convention

• 1973 – Diplomatic Conference in Munich ► EPC signed by 16 countries

• 1977 – EPC enters into force in seven countries

• 2011 – 38 member statesAlbania • Austria • Belgium • Bulgaria • Croatia • Cyprus • Czech Republic • Denmark • Estonia • Finland •

France • Germany • Greece • Hungary • Iceland • Ireland • Italy • Latvia • Liechtenstein • Lithuania • Luxembourg

• Former Yugoslav Republic of Macedonia • Malta • Monaco • Netherlands • Norway • Poland • Portugal •

Romania • San Marino • Serbia • Slovakia • Slovenia • Spain • Sweden • Switzerland • Turkey • United Kingdom

European Union

28 members

European Patent Organisation

38 members + 2 extension states

• Structure of the European Patent Office

Directorates-General

Operations

DG 1

Guillaume

Minnoye

Administration

DG 4

Željko Topić

Legal/International

Affairs

DG 5

Raimund Lutz

President

Benoît Battistelli

Presidential area

DG 0

Patent Administration

Quality Management

Information Management

Human Resources

General Administration

Central Procurement

European

and

International Co-operation

Patent Law

and

Multilateral Affairs

Legal Services

Search

Substantive Examination

Opposition

Business Services

Operational

Support

DG 2

Alberto Casado

Cerviño

Appeals

DG 3

Wim van der

Eijk

Patent Information

and

European Patent Academy

• Our staff

Total

Munich

The Hague

Berlin

Vienna

Brussels

3 746

2 650

272

105

4

6 777

Around 60% are patent examiners

Source: EPO data 2013



• Basics

• About us


• Quality patents




• Statistics

• Contact

• Three ways to start the European procedure

European

search and

examination

procedure

Applicant files a direct European application

= 1st filing

Applicant files a

national application

Applicant files a

PCT application

Applicant files a

European application

= 2nd filing1)

Application enters

European phase

European route

National route

International route

European route

National route

International route

1) By claiming priority of an earlier application filed with a national office within 12

months

• The role of the EPO in the European grant

procedure • We provide patent protection

– in up to 40 European countries

– based on a single application

– in one of the three official languages

(English, French, German)

• We are also responsible for

– limitation and revocation proceedings

by patentees

– opposition proceedings by third

parties

– appeal proceedings before the

boards

of appeal

• The EPO makes all patent documents

available to the public

• The EPO also processes international (PCT)

applications

• We act as a receiving office for

international applications (PCT)

• We carry out approximately:

– 40% of all international search

procedures

– 48% of all international preliminary

examinations

• The EPO delivers the international

search report within 3 months*

* From the date of receipt of the application by the International Searching Authority.

• Basic steps in the European grant procedure

Filing Search GrantExamination Opposition Appeal

Publication

of the

application

and search

report

Publication

of the patent

specification

Filing Search



• Basics

• About us


• Quality patents




• Statistics

• Contact

• Number one patent office for quality

Annual IP benchmarking survey 2012 conducted by IAM and

Thomson Reuters

• Sample:

700 patent attorneys working in private practice or industry

• Private practice:

For 68%, the EPO's quality is "very good" or "excellent"

• Industry:

For 92%, the EPO's quality is either "good", "very good" or

"excellent"

• Key components of the EPO's patent quality

policy• Highly skilled examiners

• State-of-the-art searches

• Thorough procedures and review

processes

• Quality controls and an ongoing

commitment to improvement

• Highly skilled examiners

• Top-level engineers and scientists

– high degree of technical expertise and

personal responsibility

– knowledge of the EPO's three official languages

• Training during first two years

– extensive legal and procedural training

– individual coaching by experienced examiners

• Continuing professional development throughout career

• State-of-the-art searches

• World's largest collection of documents

– 800 million records of patent and non-patent

literature documents in over 120 databases

– more than 7 000 journals

– databases updated daily

• High-performance EPOQUE search tool

– used by examiners

– a worldwide benchmark

– used by over 40 patent offices, including Australia,

Brazil, Canada and China

• Machine translation to extend the range of easily

accessible information

• Thorough procedures and review processes

• Single procedure

– The EPC provides the legal framework for the

granting procedure.

• Systematic approach

– Each application is examined by a division of

three technically qualified examiners.

• Review processes

– Oppositions are examined by three technically

qualified examiners, at least two of whom will not

have been involved in the grant proceedings for

the patent.

– Appeals are heard by an independent second-

instance judiciary (boards of appeal).

• Quality controls and commitment to improvement

• Guidelines and instructions for examiners

• Spot-checks on search reports and examination quality

• Internal quality audits

• Preparation for ISO 9001 certification



• Basics

• About us


• Quality patents




• Statistics

• Contact

• All patent documents are accessible free of

charge on www.epo.org

Espacenet

over 88 million

patent documents,

easily searchable

Patent Translate

Automatic translation

between English and

31 other languages,

including Chinese,

Japanese, Korean

and Russian.

Key facts about Espacenet

• Most visited area of our website

– around 20 million visits every year

• A worldwide collection of patent data

• For beginners and experts

– smart search using key words

– advanced search using combined search information,

classification, etc.

• Translation of documents in one click

– covers now translation between English and 31 other

languages, including Chinese, Japanese, Korean and

Russian.



• Basics

• About us


• Quality patents




• Statistics

• Contact

• Training organised by the European Patent

Academy• Training on IP and our services

and tools for

– applicants and attorneys

– judges

– patent office staff

– universities and research

centres

– businesses and SMEs

• An extensive collection of free

e-learning materials on

www.epo.org/learning

http://www.epo.org/learning



• Basics

• About us


• Quality patents




• Statistics

• Contact

• Objectives of the unitary patent

A less expensive

and less cumbersome

patent system for Europe

Facilitates access to patent protection

for SMEs and research centres

Makes Europe more attractive for

innovation and investors

Boosts Europe's competitiveness

• The unitary patent and the EPO member states

Unitary patent states

Austria • Belgium • Bulgaria • Cyprus •

Czech Republic • Denmark • Estonia •

Finland • France • Germany • Greece •

Hungary • Ireland • Latvia • Lithuania •

Luxembourg • Malta • Netherlands •

Poland • Portugal • Romania •

Slovakia • Slovenia • Sweden •

United Kingdom

Other EPO member states

Italy • Spain • Iceland • Switzerland •

Norway • Turkey • Monaco • San

Marino • Liechtenstein • Croatia •

Serbia • Albania • Former Yugoslav

Republic of Macedonia

• Basic principles of the unitary patent

• A European patent, granted by the EPO under the EPC

• Unitary effect extends to the 25 EU member states currently

participating, at the patent proprietor's request

• Registered by the EPO in one single administrative step

• An additional option for patent proprietors, alongside the existing

European and national patent systems

• Can be combined with the European patent to cover up to

40 European countries

• Uniform litigation system

• Concrete benefits

• Protection in one single step for the 25 states currently

participating

• Simplified registration procedure instead of 25 different

validations

• Simplified and cost-effective renewal fee payment

• No post-grant translation required (after initial transition period)

• Centralised register maintained by the EPO

• Uniform litigation system affording greater legal certainty

• Language arrangements for post-grant translations

• For a transitional period of up to 12 years:

– If the patent is granted in French or German,

a translation into English will be required

– If the patent is granted in English,

a translation into one of any of the EU languages will be

required

• At the end of the transitional period:

– No translation required anymore

– Patent Translate will provide free machine translation in

32 languages

• Language arrangements for applications

Translation costs will be reimbursed

for SMEs, universities, public

research organisations from the EU

if the application is filed in an EU

language other than English, French

or German

• The European patent with unitary effect

European

patent

application

Filing and

formalities

examination

Search report

with preliminary

opinion on

patentability

Grant of

European

patent

Refusal or

withdrawal

of

application

Substantive

examination

At the

request

of the patent

proprietor

Limitation/

revocation/

opposition

proceedings

Appeal

proceedings

Same grant procedure as for classic European patent

The unitary patent replaces

the individual effects of the European patent

in the 25 participating states

Unitary patent

for the territories of the

25 participating states

• The Unified Patent Court

Court of First Instance

Central Division

Seat

in

Paris

Office of

President

Section

in

Munich

Section

in

London

Local Divisions

LD

LD

LD

LD

LD

set up in individual

member states

LD

Regional Divisions

set up by groups of

member states

RD

RD

RD

RD

Court of Justice

of the

European Union

Requests

for

preliminary

rulings

Revocation actions Infringement actions

Appeals

LD

LD

Court of Appeal

with seat in Luxembourg

• When will it all start?

• European applications already "in the pipeline" today

might be given unitary effect if granted after the system

starts

• Minimum of 13 states − including GB, France, Germany

− must ratify the agreement on a Unified Patent Court

(expected 2015)

• First unitary patents will cover only the states which have

ratified the agreement, then more as states accede



• Basics

• About us


• Quality patents




• Statistics

• Contact points

• Total European patent filings1)

1) Direct European filings under the EPC and international filings under the PCT.

• Origin of European patent filings (2013)1)

Others 6%

DE 12%

FR 5%

CH 3%

NL 3%

GB 2%

Other EPO states 10%

US 24%

JP 20%

CN 8%

KR 6%

DE: Germany I FR: France I CH: Switzerland I NL: Netherlands I GB: United Kingdom

US: United States I JP: Japan I CN: P.R. China I KR: South Korea I EPO: European Patent Organisation

1) Direct European filings under the EPC and international filings under the PCT.

• Technical fields1)

with the most applications

(2013)2)

1) Classified according to the IPC and technology concordance table as revised

in January 20132) Based on European patent applications filed with the EPO.



• Basics

• About us


• Quality patents




• Statistics

• Contact

• Need more information?

• Visit www.epo.org

• Follow us on

www.facebook.com/europeanpatentoffice

twitter.com/EPOorg

www.youtube.com/EPOfilms

www.linkedin.com/company/european-patent-office

• Contact us via www.epo.org/contact

Thank you

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European Patent Office - general presentation