Grant procedure before the European Patent Office
Encyclopedia
The grant procedure before the European Patent Office (EPO) is an ex parte
, administrative procedure, which includes the filing of a European patent application
, the examination of formalities, the establishment of a search report
, the publication of the application, its substantive examination, and the grant of a patent
, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention
(EPC). The grant procedure is carried out by the EPO
under the supervision of the Administrative Council of the European Patent Organisation
. The patents granted in accordance with the EPC are called European patents.
In other words, the grant procedure before the EPO is the procedure leading to the grant of a European patent or to the refusal to grant a European patent. The procedure starts with the filing of an application and ends with the grant of a European patent or the refusal of the patent application by the EPO, or the withdrawal of the application by the applicant, or its deemed
withdrawal. The prosecution of European patent applications until grant typically takes several years.
European patent applications can be filed at the EPO at Munich
, Germany
, at The Hague
, Netherlands
, at Berlin
, Germany, or "if the law of a Contracting State so permits, at the central industrial property office or other competent authority of that State". This latter provision is important in some countries. 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 invention
s in certain sensitive technical areas without obtaining clearance through the United Kingdom Intellectual Property Office first. European patent applications cannot be validly filed at the EPO in Vienna
, Austria
.
Within one month after the filing of an application, a filing fee and a search fee must be paid. Additional fees may also be due depending on the size of the application and the number of claim
s. Namely, if the application comprises more than 35 pages, an additional fee is due (of 12 Euros, as of April 2009) for the 36th and each subsequent page. Furthermore, if the application contains more than fifteen claims at the time of filing, claim fees are due. As of April 2009, a claims fee of 200 Euros is due for the 16th and each subsequent claim up to the limit of 50, and a claims fee of 500 Euros for the 51st and each subsequent claim.
European patent applications must be filed in one of the three official languages of the EPO, in English
, French
or German
. However, some applicants are allowed to file European patent applications in "admissible non-EPO languages", provided that a translation in English, French or German is filed in due time, "within three months after the filing of the European patent application, but no later than thirteen months after the date of priority
". In the case of a European divisional application, or in the relatively rare case of a new European patent application under , "the translation may be filed at any time within one month of the filing of such application". The official language of the EPO in which the application is filed, or the language used when the application was filed in an "admissible non-EPO language", is used as the language of the proceedings.
Oral proceedings may exceptionally take place before the Receiving Section, to give an opportunity to the applicant to be heard on an issue involving formality requirements.
in the timely publication of the application.
Before the search, communications between the search division and the applicant were not foreseen, before April 1, 2010. However, under new Rules 62a and 63 EPC, if there are more than one independent claim per claim category (and if the provisions of are considered not to be met) or if the search division considers that it is impossible to carry out a meaningful search based on the subject-matter claimed, communications between the search division and the applicant are possible. Under however, no amendments to the application can be made before the search "unless otherwise provided".
Along with the search report, a search opinion is also established. The search opinion and the search report form together the so-called extended European search report. Before April 1, 2010, a response to the search opinion was optional. Currently however, under new Rule 70a EPC, a reply to the search opinion is mandatory, 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). If no reply is filed to the search opinion, the application is deemed to be withdrawn. The search opinion is therefore a conventional office action
with a given time period to respond.
mentions the publication of the European search report. For applications filed on or after April 1, 2009, the designation fee is 500 Euros whatever the number of designated Contracting States.
of the claimed invention
, i.e. whether the invention is not excluded as unpatentable subject-matter by policy, whether the invention is new
, involves an inventive step
, and is susceptible of industrial application
. In addition, the invention must be sufficiently disclosed
in the application, and the claims must be clear and concise
.
Unless the application is directly ready for grant, communications under are issued by the Examining Division and notified to the applicant or the appointed representative. In such communications, the Examining Division invites the applicant to reply within a given period, by correcting the "deficiencies noted and [amending] the description, claims and drawings", where appropriate. If amendments are filed, the amendments must not extend the content of the application as filed, or, in other words, there must not be any added subject-matter. In that context, the applicant is master of its own application in that the decision to amend or not, and how to amend the application, is a decision of the applicant alone (although the Examining Division may apply pressure to have amendments made).
During the examination phase, oral proceedings may take place at the request of the EPO or at the request of the applicant. They are held before the Examining Division itself, in Munich or the Hague, and are not public, in contrast to oral proceedings in opposition
, which are public unless very particular circumstances apply. The right to oral proceedings is a specific and codified part of the procedural right to be heard. A decision is often taken at the end of the oral proceedings.
Decisions by Examining Divisions to refuse a European patent application, like any other final decisions of first instance divisions, are appealable
.
The decision of the Examining Division to grant a European patent takes effect on the date on which the mention of the grant is published in the European Patent Bulletin
. The Examining Division is then bound by its final decision on an application, which can be set aside only following an admissible, allowable appeal. The decision to grant ends the examination procedure. Nevertheless, linguistic errors, errors of transcription and obvious mistakes in the decision to grant may be corrected, as in any decision of the European Patent Office.
) from the date of grant, the patent must be translated in an official language of each country in which the patentee wants patent protection. If the translation of the European is not provided to the national patent office
within the prescribed time limit, the patent "shall be deemed to be void ab initio
in that State".
in respect of pending European patent applications in respect of the third year from the date of filing. These fees are paid in advance of the year in which they are due (such that the renewal fee for the third year falls due two years from the date of filing) and fall due on the last day of the month containing the anniversary of the date of filing.
. A person filing observations during examination proceedings does not however become party to the proceedings. This notably means that such person has no right to attend oral proceedings before the Examining Division, which are not public. 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. Observations by third parties, which must be filed in writing, may be filed by post or online.
. The filing of a European divisional application with a national authority has no effect in law.
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. In particular, the Boards have held that the "withdrawal of a European patent application can only be retracted as long as the public has not been officially informed about the withdrawal". In other words, in the interests of legal certainty, it is generally too late to request retraction of a notice of withdrawal after the withdrawal has been registered and notified to the public in the European Patent Bulletin, since in that case the retraction of withdrawal would adversely affect the public interest or the interests of third parties.
Ex parte
Ex parte is a Latin legal term meaning "from one party" .An ex parte decision is one decided by a judge without requiring all of the parties to the controversy to be present. In Australian, Canadian, U.K., Indian and U.S...
, administrative procedure, which includes the filing of a European patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
, the examination of formalities, the establishment of a search report
Search report
In patent law, a search report is a report established by a patent office, which mentions documents which may be taken into consideration in deciding whether the invention to which a patent application relates is patentable...
, the publication of the application, its substantive examination, and the grant of a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC). The grant procedure is carried out by the EPO
European Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
under the supervision of the Administrative Council of the European Patent Organisation
Administrative Council of the European Patent Organisation
The Administrative Council of the European Patent Organisation is one of the two organs of the European Patent Organisation , the other being the European Patent Office . The Administrative Council acts as the Organisation's supervisory body as well as, to a limited extent, its legislative body...
. The patents granted in accordance with the EPC are called European patents.
In other words, the grant procedure before the EPO is the procedure leading to the grant of a European patent or to the refusal to grant a European patent. The procedure starts with the filing of an application and ends with the grant of a European patent or the refusal of the patent application by the EPO, or the withdrawal of the application by the applicant, or its deemed
Legal fiction
A legal fiction is a fact assumed or created by courts which is then used in order to apply a legal rule which was not necessarily designed to be used in that way...
withdrawal. The prosecution of European patent applications until grant typically takes several years.
Filing
Munich
Munich The city's motto is "" . Before 2006, it was "Weltstadt mit Herz" . Its native name, , is derived from the Old High German Munichen, meaning "by the monks' place". The city's name derives from the monks of the Benedictine order who founded the city; hence the monk depicted on the city's coat...
, Germany
Germany
Germany , officially the Federal Republic of Germany , is a federal parliamentary republic in Europe. The country consists of 16 states while the capital and largest city is Berlin. Germany covers an area of 357,021 km2 and has a largely temperate seasonal climate...
, at The Hague
The Hague
The Hague is the capital city of the province of South Holland in the Netherlands. With a population of 500,000 inhabitants , it is the third largest city of the Netherlands, after Amsterdam and Rotterdam...
, Netherlands
Netherlands
The Netherlands is a constituent country of the Kingdom of the Netherlands, located mainly in North-West Europe and with several islands in the Caribbean. Mainland Netherlands borders the North Sea to the north and west, Belgium to the south, and Germany to the east, and shares maritime borders...
, at Berlin
Berlin
Berlin is the capital city of Germany and is one of the 16 states of Germany. With a population of 3.45 million people, Berlin is Germany's largest city. It is the second most populous city proper and the seventh most populous urban area in the European Union...
, Germany, or "if the law of a Contracting State so permits, at the central industrial property office or other competent authority of that State". This latter provision is important in some countries. For example, in the United Kingdom
United Kingdom
The United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
, 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 invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
s in certain sensitive technical areas without obtaining clearance through the United Kingdom Intellectual Property Office first. European patent applications cannot be validly filed at the EPO in Vienna
Vienna
Vienna is the capital and largest city of the Republic of Austria and one of the nine states of Austria. Vienna is Austria's primary city, with a population of about 1.723 million , and is by far the largest city in Austria, as well as its cultural, economic, and political centre...
, Austria
Austria
Austria , officially the Republic of Austria , is a landlocked country of roughly 8.4 million people in Central Europe. It is bordered by the Czech Republic and Germany to the north, Slovakia and Hungary to the east, Slovenia and Italy to the south, and Switzerland and Liechtenstein to the...
.
Within one month after the filing of an application, a filing fee and a search fee must be paid. Additional fees may also be due depending on the size of the application and the number of claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
s. Namely, if the application comprises more than 35 pages, an additional fee is due (of 12 Euros, as of April 2009) for the 36th and each subsequent page. Furthermore, if the application contains more than fifteen claims at the time of filing, claim fees are due. As of April 2009, a claims fee of 200 Euros is due for the 16th and each subsequent claim up to the limit of 50, and a claims fee of 500 Euros for the 51st and each subsequent claim.
European patent applications must be filed in one of the three official languages of the EPO, in English
English language
English is a West Germanic language that arose in the Anglo-Saxon kingdoms of England and spread into what was to become south-east Scotland under the influence of the Anglian medieval kingdom of Northumbria...
, French
French language
French is a Romance language spoken as a first language in France, the Romandy region in Switzerland, Wallonia and Brussels in Belgium, Monaco, the regions of Quebec and Acadia in Canada, and by various communities elsewhere. Second-language speakers of French are distributed throughout many parts...
or German
German language
German is a West Germanic language, related to and classified alongside English and Dutch. With an estimated 90 – 98 million native speakers, German is one of the world's major languages and is the most widely-spoken first language in the European Union....
. However, some applicants are allowed to file European patent applications in "admissible non-EPO languages", provided that a translation in English, French or German is filed in due time, "within three months after the filing of the European patent application, but no later than thirteen months after the date of priority
Priority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
". In the case of a European divisional application, or in the relatively rare case of a new European patent application under , "the translation may be filed at any time within one month of the filing of such application". The official language of the EPO in which the application is filed, or the language used when the application was filed in an "admissible non-EPO language", is used as the language of the proceedings.
Formalities examination
The examination of whether the requirements for the accordance of a filing date and other formal requirements are satisfied is carried out by the EPO, in accordance with . If a date of filing cannot be accorded, the application is not be dealt with as a European patent application. If the European patent application has been accorded a date of filing, but if there are other formal deficiencies, the applicant is offered an opportunity to correct these deficiencies. If the deficiencies are not corrected, the European patent application is refused, unless a different legal consequence applies.Oral proceedings may exceptionally take place before the Receiving Section, to give an opportunity to the applicant to be heard on an issue involving formality requirements.
Publication
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". While early publication of a European patent application can be requested, there are no provisions in the EPC which would permit any delaying of the publication. There is indeed an overriding public interestPublic interest
The public interest refers to the "common well-being" or "general welfare." The public interest is central to policy debates, politics, democracy and the nature of government itself...
in the timely publication of the application.
Search
The Search Divisions of the EPO establish search reports, named "European search reports", on the basis of the claims, "with due regard to the description and any drawings". The European search report established for a patent application is transmitted to the applicant together with copies of any cited documents.- "The search is an essential element of the grant procedure, being designed to identify prior artPrior artPrior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
relevant to the application. The intention is to make it possible to determine, on the basis of the documents mentioned in the search report, whether and to what extent the invention is patentablePatentabilityWithin the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
(...). Knowledge of the prior art forms the basis for examination of the application by the examining divisions. It is also important for applicants, giving them a basis for deciding whether to continue prosecuting their applications and have them examined. Lastly, it is also important for the public and especially for competitors, enabling them to gain an idea of the scope of any protection that might be granted."
Before the search, communications between the search division and the applicant were not foreseen, before April 1, 2010. However, under new Rules 62a and 63 EPC, if there are more than one independent claim per claim category (and if the provisions of are considered not to be met) or if the search division considers that it is impossible to carry out a meaningful search based on the subject-matter claimed, communications between the search division and the applicant are possible. Under however, no amendments to the application can be made before the search "unless otherwise provided".
Along with the search report, a search opinion is also established. The search opinion and the search report form together the so-called extended European search report. Before April 1, 2010, a response to the search opinion was optional. Currently however, under new Rule 70a EPC, a reply to the search opinion is mandatory, 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). If no reply is filed to the search opinion, the application is deemed to be withdrawn. The search opinion is therefore a conventional office action
Office action
An office action is a document written by an examiner in a patent or trademark examination procedure and mailed to an applicant for a patent or trademark...
with a given time period to respond.
Designation of States and request for examination
Under , all the Contracting States party to the EPC at the time of filing of a European patent application are deemed to be designated in the request for grant of a European patent, i.e. upon filing of the application. Under and , designation fees must be paid within six months of the date on which the European Patent BulletinEuropean Patent Bulletin
The European Patent Bulletin is a weekly trilingual publication of the European Patent Office , generally issued every Wednesday. It contains "entries made in the Register of European Patents, as well as other particulars, the publication of which is prescribed by [the European Patent Convention ]...
mentions the publication of the European search report. For applications filed on or after April 1, 2009, the designation fee is 500 Euros whatever the number of designated Contracting States.
Substantive examination
The substantive examination of European patent applications includes the examination of patentabilityPatentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
of the claimed invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
, i.e. whether the invention is not excluded as unpatentable subject-matter by policy, whether the invention is new
Novelty under the European Patent Convention
Under the European Patent Convention , European patents shall be granted for inventions which inter alia are new. The central legal provision explaining what this means, i.e. the central legal provision relating to the novelty under the EPC, is . Namely, "an invention can be patented only if it is...
, involves an inventive step
Inventive step under the European Patent Convention
Under the European Patent Convention , European patents shall be granted for inventions which inter alia involve an inventive step. The central legal provision explaining what this means, i.e. the central legal provision relating to the inventive step under the EPC, is...
, and is susceptible of industrial application
Industrial applicability
In patent law, industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is susceptible of industrial application, i.e. for an invention which can be made or used in some kind of industry. In this...
. In addition, the invention must be sufficiently disclosed
Disclosure of the invention under the European Patent Convention
Article 83 of the European Patent Convention relates to the disclosure of the invention under the European Patent Convention. It prescribes that a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in...
in the application, and the claims must be clear and concise
Claims under the European Patent Convention
Article 84 of the European Patent Convention defines the function of the claims under the European Patent Convention, the function being to define the matter, i.e. the invention, for which patent protection is sought. This legal provision also imposes that the claims must be clear, concise as well...
.
Unless the application is directly ready for grant, communications under are issued by the Examining Division and notified to the applicant or the appointed representative. In such communications, the Examining Division invites the applicant to reply within a given period, by correcting the "deficiencies noted and [amending] the description, claims and drawings", where appropriate. If amendments are filed, the amendments must not extend the content of the application as filed, or, in other words, there must not be any added subject-matter. In that context, the applicant is master of its own application in that the decision to amend or not, and how to amend the application, is a decision of the applicant alone (although the Examining Division may apply pressure to have amendments made).
During the examination phase, oral proceedings may take place at the request of the EPO or at the request of the applicant. They are held before the Examining Division itself, in Munich or the Hague, and are not public, in contrast to oral proceedings in opposition
Opposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
, which are public unless very particular circumstances apply. The right to oral proceedings is a specific and codified part of the procedural right to be heard. A decision is often taken at the end of the oral proceedings.
Decisions by Examining Divisions to refuse a European patent application, like any other final decisions of first instance divisions, are appealable
Appeal procedure before the European Patent Office
Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...
.
Communication under Rule 71(3) EPC and grant
If the Examining Division considers that a European patent may be granted, it issues the communication under Communication under . By issuing such communication, the Examining Division informs the applicant of the intention to grant a patent based on the prosecuted application. The claims must then be translated in the other two official languages of the European Patent Office, and fees for grant and publishing must be paid. If the applicant pays the fees for grant and publishing and files the translation of the claims in due time, he is deemed to have been approved the text intended for grant. If not, the European patent application is deemed to be withdrawn. The time limit for paying the fees for grant and publishing, and for filing the translation of the claims is four months. This time limit is non-extendable.The decision of the Examining Division to grant a European patent takes effect on the date on which the mention of the grant is published in the European Patent Bulletin
European Patent Bulletin
The European Patent Bulletin is a weekly trilingual publication of the European Patent Office , generally issued every Wednesday. It contains "entries made in the Register of European Patents, as well as other particulars, the publication of which is prescribed by [the European Patent Convention ]...
. The Examining Division is then bound by its final decision on an application, which can be set aside only following an admissible, allowable appeal. The decision to grant ends the examination procedure. Nevertheless, linguistic errors, errors of transcription and obvious mistakes in the decision to grant may be corrected, as in any decision of the European Patent Office.
After grant
Once granted, a European patent is enforceable on a country-by-country basis. In addition, once the 9-month opposition period is terminated, third parties wanting to invalidate a European patent must institute revocation proceedings in each country where the patent is in force. In addition, once a European patent is granted or more precisely within three months (or six months for IrelandIreland
Ireland is an island to the northwest of continental Europe. It is the third-largest island in Europe and the twentieth-largest island on Earth...
) from the date of grant, the patent must be translated in an official language of each country in which the patentee wants patent protection. If the translation of the European is not provided to the national patent office
Patent office
A patent office is a governmental or intergovernmental organization which controls the issue of patents. In other words, "patent offices are government bodies that may grant a patent or reject the patent application based on whether or not the application fulfils the requirements for...
within the prescribed time limit, the patent "shall be deemed to be void ab initio
Ab initio
ab initio is a Latin term used in English, meaning from the beginning.ab initio may also refer to:* Ab Initio , a leading ETL Tool Software Company in the field of Data Warehousing.* ab initio quantum chemistry methods...
in that State".
Renewal fees
Renewal fees are payable to the European Patent OfficeEuropean Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
in respect of pending European patent applications in respect of the third year from the date of filing. These fees are paid in advance of the year in which they are due (such that the renewal fee for the third year falls due two years from the date of filing) and fall due on the last day of the month containing the anniversary of the date of filing.
Observations by third parties
After the publication of a European patent application, anyone can file observations regarding the patentability of the invention which is the subject of the application or, after grant, subject of the patent. This is a form of public participation in the examination of patent applicationsPublic participation in patent examination
The involvement of the public in patent examination has been proposed and is currently used in some forms to help identifying relevant prior art and, more generally, to help assessing whether patent applications and inventions meet the requirements of patent law, such as novelty, inventive step or...
. A person filing observations during examination proceedings does not however become party to the proceedings. This notably means that such person has no right to attend oral proceedings before the Examining Division, which are not public. 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. Observations by third parties, which must be filed in writing, may be filed by post or online.
Divisional applications
A divisional application of a European patent application can be filed, as long as the latter is still pending, and subject to specific time limits. The specific rules regarding the time limits for filing divisional applications were significantly amended in 2010. European divisional applications must be filed directly or by post with one of the filing offices of the EPO, i.e. at the European Patent Office at Munich, The Hague, or Berlin. It may also be filed using the so-called epoline online filing softwareEpoline
epoline is a set of web-based software programs and services enabling applicants, patentees and their representatives to file patent applications online before the European Patent Office , as well as to monitor the status of patent applications during their prosecution and patents during an...
. The filing of a European divisional application with a national authority has no effect in law.
PACE programme
The programme for accelerated prosecution of European patent applications, or PACE programme, "enables applicants who want their applications processed rapidly to obtain the search report, the first examination report and any communication under within tight deadlines". A written request ("PACE request") must be filed. The PACE requests are excluded from public inspection, provided that they are filed on the appropriate form or on a separate sheet of paper. As of 2009, accelerated processing under PACE was reported to be requested in only 6.3% of files.BEST programme
Under the so-called "Bringing Examination and Search Together" programme or BEST programme (also referred to as "BEST system"), the EPO's examination procedure was reorganized in 1990, with the primary examiner of the Examining Division being the examiner who had carried out the search.Withdrawal of an application
Withdrawal of an application is the gravest procedural step that can be taken, since the application becomes dead without possibility of revival. A European patent application may be withdrawn at any time by the applicant, except when a third party has initiated proceedings concerning entitlement to the grant of the European patent. 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. To avoid publication, the withdrawal must occur before "the termination of the technical preparations for publication". Another reason for withdrawing an application may be to obtain a refund of the search fee and/or examination fee, if it has been decided not to pursue the application further. According to the EPO Guidelines,- "The application may be withdrawn by means of a signed declaration, which should be unqualified and unambiguous (...). The applicant is bound by an effective declaration of withdrawal (...), but may make it subject to the proviso that the content of the application is not made known to the public."
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. In particular, the Boards have held that the "withdrawal of a European patent application can only be retracted as long as the public has not been officially informed about the withdrawal". In other words, in the interests of legal certainty, it is generally too late to request retraction of a notice of withdrawal after the withdrawal has been registered and notified to the public in the European Patent Bulletin, since in that case the retraction of withdrawal would adversely affect the public interest or the interests of third parties.
Responsibilities within the EPO
An Examining Division is made up of three people; the search report is drawn up by the Primary Examiner from the Examining Division.Statistics
The EPO received its first application in 1978. The one millionth application was published on May 17, 2000, and two millionth one on December 10, 2008.External links
- European Patent Convention, Part IV, Procedure up to grant (Art. 90 to 98)
- Guidelines for Examination before the EPO