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Obtaining a European patent. Subtleties and nuances

24 Jan 2022 (updated at 18 Mar 2022)
#Patenting abroad
Head of Department / Patent Attorney / Mechanics Engineer

Russian applicants tend to turn to patent attorneys even more frequently with regard to the matters regarding obtaining a European patent. So, let us consider a procedure for obtaining the European patent by the Russian applicants.

It should be noted at first that it is not possible for the Russian applicant to file the first application directly to the European Patent Office, which headquarters are located in Munich. According to the patent legislation of the Russian Federation, the first application must be filed in the own country as a national or an international PCT application, the Russian Patent Office shall be indicated as a receiving office, and only subsequently it will be possible to expand the effect of the national application on the territory of the foreign states, in particular, to file the application to the European Patent Office (EPO), before the expiration of 12 months from the date of filing the national application or to transfer the international PCT application to a regional phase in the EPO before the expiration of 31 months from the earliest date of filing the application.

The requirement for filing the first application in the Russian Federation is due to the fact that all technical solutions filed in the Russian Federation, as inventions and utility models, shall be checked for state secrets and may be classified as secrets in the interests of the state. In this case, obtaining a patent abroad will be impossible.

Currently, the European Convention encompasses 38 countries of the European Union, including Great Britain.

The EPO's official languages are English, French, and German. If the European patent application is filed in another language, for example, in Russian, it will be necessary to submit its translation into one of the EPO official languages within two months after filing the application.

The peculiarity of the European patents is that once granted, they obtain national significance in the countries for which they have been requested.

A person, who is not the resident of the member countries of the European Patent Convention, for example, the resident of the Russian Federation, may file the application independently to the EPO, however, only professional representatives – European patent attorneys, whose list is maintained by the EPO, are entitled to carry out the office work with respect to the application.

Fees must be paid to the patent office within one month from the date of filing the application. The amount of the fees for the applications, which contain no more than 35 sheets, and which claims run to not more than 15 claims will be 3,785 EUR (for electronic filing), including the fee for filing the application, for specifying countries, the fee for searching and carrying out a substantive examination. The fee for the substantive examination may be paid later, within 6 months from the date of publishing a search report.

One nuance should be noted separately, according to which the European applications, starting from the 3rd year, must be maintained in effect by paying the annual fees for maintaining the application. If the above-mentioned fee is not paid, the application will be deemed withdrawn.

The European patent applications must contain:

-       an application (EPO Form 1001)

-       a description of the invention

-       the claims

-       any drawings mentioned in the description or the claims

-       an abstract.

The office work with respect to the application shall last from two to five years and consists of the following steps:

-       a formal examination;

-       a patent search;

-       a publication of the application;

-       a substantive examination;

-       a grant of the patent and its validation in the member states.

After making a decision on readiness to grant the patent and subject to the timely payment of the required fees and the submission of the translations of the claims into two other official languages of the EPO, other than the language of filing (for example, if the application has been filed in English, it is necessary to submit the translation of the claims into German and French), the examination shall make a decision on the grant of the European patent.

Currently, the peculiarity of the procedure for obtaining the European patent is that the obtained protection document does not grant final protection in the majority of the member countries of the European Patent Convention. In order to finish the procedure of patenting, it is necessary to undergo the so-called validation – submitting the translations of the materials of the application (in part or in full, depending on the country) into the appropriate national language to the national patent offices. Maintaining the European patent, all other legally significant actions, as well as legal proceedings shall take place in each of the countries chosen by the applicant, where the application is in effect, according to the national procedure.

After the grant of the European patent, it will be automatically in effect in the following countries: Germany, France, Great Britain, Switzerland, Monaco, and Luxembourg (this does not exempt from paying the annual fees in these countries).

In all other EPC member countries, the obtained patent shall be subject to validation.

After the grant of the European patent, the annual fees for maintaining the patent in effect shall be paid to the national offices of the chosen states. The patent shall be in effect within 20 years.

Head of Department / Patent Attorney / Mechanics Engineer