European Patent Prosecution

• Published date: 07 June 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Haseltine Lake Kempner LLP
• Author: Haseltine Lake Kempner LLP

The path to obtaining a European patent can be viewed as a multi-stage process. Firstly, at the filing stage, the applicant must provide the European Patent Office (EPO) with sufficient information to be awarded a filing date for the application. This filing date acts as a stake in the ground because the application will be assessed for novelty and inventive step based on what was in public domain before this date. As such, it is possible to publicly disclose the invention from this date onwards without compromising its patentability.

The second stage is a formalities examination, during which the filed documents will be examined against a series of formal requirements. If these requirements are met, the application will move to the third stage, where the EPO performs a search for prior art deemed relevant to the patentability of the invention, and the application is published on the EPO website.

During the final (and usually the most extensive) stage, the application will undergo substantive examination. This is essentially a conversation that takes place, mostly in writing, between the applicant and an EPO Examiner. The applicant (or more commonly, their European patent attorney) must persuade the Examiner that the application meets the European patentability requirements. To achieve this, the applicant will need to overcome the Examiner's objections by setting out a convincing argument or amending the application. Once the Examiner's objections are overcome, the application proceeds to grant.

Filing

A filing date for a European patent application can be obtained by filing a description of the invention and the applicant's contact details at the EPO.

It is not necessary to include claims at this stage, but it is worth noting that the European approach to assessing added matter can make it difficult to include claims of the desired scope after filing. With this in mind, it is generally recommended to include claims when filing the application.

The description can be filed in any language, although a translation will be required later if the application is not filed in French, German or English. There are various ways of filing applications at the EPO, including online, by fax or by post. Filing by e-mail is not permitted.

Any person can file a European patent application. However, it is advisable to consult a European patent attorney before filing to give the application the best chances of success. After a filing date has been established, applicants...