European Patent application

The European patent application initially designates 38 countries which are members of the European Patent Convention; these countries include all the 28 countries of the European Union plus the following countries; Albania, Croatia, Island, Liechtenstein, Monaco, Switzerland, Turkey, San Marino, the Republic of Macedonia and Serbia. Bosnia Herzegovina and Montenegro can be included in the designation by paying an extra fee. Recently, European patents can be validated also in Morocco, Republic of Moldova, Tunisia and starting from 1.3.2018 in Cambodia.

The general procedure provides for a prior art search, a validity examination, and – should the patent be granted – a validation phase in some or all countries initially designated. During the validation phase, the patent is nationalized only in the countries actually selected by the owner among the 38 initially designated.

More in detail, the filing and search fees are to be paid at the time of filing. The Search Report and the examiner's patentability opinion are issued after about 6-8 months from the date of filing. Should one decide to prosecute the application, the designation fees for the countries of interest and the examination fees have to be paid within about 24 months after filing.

During the examination, the examiner may issue one or more technical briefs, referred to as Official Actions, which bear objections against the patentability of the invention claimed in the application. A response to all objections raised in the official letters must be provided.

At the end of the centralized procedure before the European Patent office, the patent is granted or rejected.

Should the patent be granted, the European patent has to be validated in one or more countries of interest among the 38 designated initially, within 3 months from the grant. The validation in each country should be completed by a chartered patent attorney; most of the times it is required to file the translation of the granted patent in the national language. Our firm relies on a network of experienced agents in all the European countries for the validation and the litigation of patents.

In other words, after the grant – which is the outcome of the unified procedure before the European Patent Office – the patent is transformed into a bundle of national patents, each of which is subject to the law of the relative country.

Third parties may file an opposition with the EPO against the grant of the patent, within nine months from the date of grant. Regardless of such centralized procedure before the European Patent Office, the validity of national patents can be challenged any time separately before the competent Courts in each country wherein the patent has been validated.

The European procedure implies the great advantage of reaching up to 38 countries through a single filing and examination procedure, deferring the actual choice of the countries of interest and the relative costs to the time of grant.