Application and grant procedures explained with reference to the example of a first application at the European Patent Office (EPO):
- Filing at the EPO – Payment of fees: application and search fees.
- Confirmation of the receipt of the application by the EPO – Assignment of the date of application which is the priority date of the application. – Start of the priority year.
- Approximately 6 months after the priority date: delivery of a European search report. – Result of the report: basis of decision for the continuation of the proceedings, in particular with respect to subsequent applications.
- 18 months after the priority date: publication of the application by the EPO.
- Note: the application can be withdrawn up to approximately 16 months after the priority date without being published.
- Start of the examination phase by applying for examination and designating all or some of the signatory countries. – Payment of the examination fee and of the designation fees.
- In the course of the substantive examination, office actions are issued by the EPO (official letters concerning the patentability of the application); responses must be filed to these.
- The application documents (description / claims) are amended as necessary.
- Annual fees are due for the third year and each subsequent year after the date of application.
- Final phase: Payment of a grand fee - The finalized claims must be filed in English, German and French..
- Granting of the European patent (EP patent); validation of the EP patent in the designated contractual states. Filing of translations (where necessary) in the respective local languages.
- If required: acceleration of the grant procedure possible by a corresponding request to the EPO.
- National patents from the EP patent: costs are incurred for associate attorneys, translations and fees.
Subsequent applications
- As a rule, the client should make a decision 9 months at the latest after the priority date (date of the first application) as to the further countries in which a patent application should be made for the invention ("subsequent applications").
- To maintain the priority date of the first application, subsequent applications must be made before the end of the priority year.
For subsequent applications in non-European countries or in countries which are not EPC signatories (e.g. Norway), translations are required / filing via associated attorneys in Norway, the USA, Japan, …
- A subsequent application can also be filed at the EPO to extend the term (20 years from the date of application of the subsequent application, or 20 years from priority date). The annual fees are thus also due correspondingly later.
- The final designation on the countries can be delayed by up to at least 30 months from the priority date by making an international application under the PCT.
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