Quick Navigation

 

Guide for applicants, Part 1: How to get a European patent

 
 
Stages of the procedure
160
Once you have filed the request for examination, the EPO examines, in the light of the search report, the preliminary report on patentability and your response to them, whether the application and the invention to which it relates meet the requirements of the Convention, and in particular whether the invention is patentable (see points 27-37).
After receiving the search report and before receiving the examiner's first communication, you must file substantive observations on any objections raised in the search report; you may also amend the description, claims and drawings (see points 159 and 172).
161
If the examiner responsible within the examining division has objections to the application, he sends you a first reasoned communication inviting you to file your observations and, if necessary, to submit amendments to the description, claims and drawings (see points 171-176).
Guid. C-IV, 3,
Guid. C-II and C-III Guid. E-I, H-III
If you fail to reply in due time to this or any further communication, the application is deemed to be withdrawn (but see point 225).
If your actions are clearly indicative of an interest in speedy substantive examination, the examiner will make every effort to issue the first communication within three months of the examining division's receipt of the application or the request for accelerated examination (see Annex II, point 9).  
OJ 2010, 352
You might also be invited to provide information on prior art taken into consideration in the examination of national or regional patent applications and concerning an invention to which the European patent application relates. If you do not provide this information within a specified time limit, the application is deemed withdrawn (but see point 225). It is recommended that you file any search results relating to a previous application from which priority is claimed as soon as they are available.
162
You must try to deal with all the examiner's objections, the guiding principle of the examination procedure being that the decision to grant a patent or refuse the application should be reached in as few actions as possible.  
Guid. C-V, 1
If, after examining your response, the examiner considers that the application is not yet grantable, he will continue with the examination procedure by issuing a further written communication or talking to you in person or on the telephone.  
Guid. C-IV
Guid. C-VII
You may at any time request oral proceedings.  
163
The examiner may seek the advice of other members of the examining division whenever he sees fit. At the latest he will refer the application to them when a decision has to be taken.  
Guid. C-IV, 4
Guid. C-VIII
If the examining division is of the opinion that a European patent cannot be granted, it will refuse the application. The decision is issued by the examining division as a whole, and the grounds of refusal must be stated. Refusals may be based only on grounds on which you have had an opportunity to comment.  
164
If the application and the invention to which it relates meet the requirements of the Convention, the examining division will proceed to the grant stage. 
165
The examining division informs you of the text in which it intends to grant the European patent, and invites you to pay the fee for grant and publishing and any claims fees for claims in excess of 15 which have not yet been paid, as well as to file a translation of the claims into the two official languages of the EPO other than the language of the proceedings within a non-extendable period of four months. You are also recommended to check the bibliographic data at this stage. 
If you pay the prescribed fees and file the necessary translations of the claims in due time, you are deemed to have approved the text intended for grant. If you do not respond to the invitation, the application is deemed to be withdrawn (but see point 225).
166
Upon reviewing the proposed text for grant, you may wish to make minor amendments, and/or you may discover mistakes. In that case you have an opportunity to file amendments or corrections within the period set under Rule 71(3) (see point 165). If the examining division consents to the amendments or corrections, it will issue a new communication under Rule 71(3). It can then proceed to grant, provided you have filed the translations of the claims and paid the fees for grant and publishing within the time limit set. If you file amendments or corrections and translations of the claims in due time, but do not pay the fees or file the translations, the application is deemed to be withdrawn (but see point 225).
Guid. C-V, 4
OJ 2010, 637
OJ 2012, 52
167
If the examining division does not consent to the requested amendments or corrections, it will resume the examination proceedings. Depending on the circumstances of the individual case, the examining division may for example issue a communication under Art. 94(3) and Rule 71(1),(2), summon you to oral proceedings or refuse the application.
168
If you fail to meet the objections raised, the examining division will refuse the application under Article 97(2) because it does not meet the requirements of the Convention. If you fail to pay the fee for grant and publishing and any claims fees due, the application is deemed to be withdrawn (but see point 225). If you have paid said fees but ultimately no patent is granted, the fee for grant and publishing will be refunded.
OJ 2012, 52
Before a patent can be granted, you must also have paid any renewal fee and, if applicable, any additional fee due (see point 213 et seq.). If a renewal fee falls due before the expected date of publication of the mention of grant of the European patent, you will be informed accordingly. The mention of grant will not be published until you have paid the renewal fee. If you fail to pay the renewal fee and any additional fee in due time, the application is deemed to be withdrawn.
169
If you overrun the period set under Rule 71, you may request further processing under Article 121 (see point 225).
170
The grant does not take effect until the date on which it is mentioned in the European Patent Bulletin. At the same time as it publishes this mention, the EPO publishes a European patent specification containing the description, the claims and any drawings. The European Patent Bulletin is published electronically on the EPO’s publication server (www.epo.org).
The certificate issued for a European patent shall be communicated to the proprietor in paper form. Certified copies of the certificate with the specification annexed, will be issued to the proprietor upon request and payment of an administrative fee. 
OJ 2013, 418