Procedure, time path, and costs of patent applications

Hans-Rainer Jaenichen
Vossius & Partner Patentanwälte
Siebertstrasse 4
81675 Munich
Germany

The lecture I would like to give today deals with some elementary aspects of patenting. Of course, it matters how much money you have to spend for patenting a certain invention. However, especially for universities it normally is paid off to try to patent inventions. By patents the innovations that come out of the universities are protected against use by third parties. If third parties are actually interested in using these innovations, they would have to pay royalties

  1. Patentability requirements
  2. Parts of a European patent application
  3. The prosecution in the EPO.
  4. Area covered
  5. From filing to grant
  6. The fees

1. Patentability requirements

Before talking about costs, I will briefly explain the patentability requirements in the European Patent Office (EPO). The first issue, of course, when you have invented something, is wether it is patentable.

Patentability requirements
Statutory subject matter (Article 52, 53 EPC)
Novelty (Article 52, 54 EPC)
Inventive step (Article 52, 56 EPC)
Industrial applicability (Article 52, 57 EPC)
Enabling disclosure (Article 83)
Clarity (Article 84)

1) What can be patented? In US terminology this is called ‘statutory subject matter’. Article 52 and 53 of the European Patent Convention (EPC) regulate what we can actually patent.

For instance, therapeutic methods carried out on the human and animal body are not patentable. More importantly is that Article 53(b) EPC stipulates that animal and plant varieties cannot be patented. This was a real issue in the European Patent Office (EPO) in the last few years. I am involved in a test case, T 1054/96, that deals with the question whether a broad claim covering plant varieties is actually allowable under the EPC and not in conflict with Article 53(b) EPC. With this decision, the Technical Board again rejected such claims, but submitted questions on points of law to the Enlarged Board in the EPO. In view of the forthcoming new EU Directive and its specific regulations we can expect that the practice of the EPO will change. It means that it is likely that we will eventually be able to get a broad claim for transgenic plants and also probably for transgenic animals even if it covered plant varieties. People that invent broadly applicable technical contributions in the field of making transgenic plants can only protect their intellectual property by having such claims, because what is being put on the market is actually plant varieties.

2) Novelty is an important patentability requirement. For those of you who work in the universities: what you should know is that, if you go to a conference, if you are showing abstracts, or talk about your invention, then all of this is a disclosure of the invention. If somebody to whom this disclosure is directed is able to repeat what you are talking about, this is an enabling disclosure and than it would be detrimental to novelty. We do not have a grace period. We have the absolute novelty principle in the EPO and in its contracting states. The patent acts in all contracting states of the EPC are harmonized and incorporate the absolute novelty requirement. All disclosures, including abstracts, posters and so on, are novelty destroying. It is different in the USA where sometimes, when you have spoken about something, you might still be able to get a patent in the USA. However, this is no longer the case in most other countries in the world. Japan also has a grace period.

3) Inventive step. The principle for the assessment of inventive step is the question whether something was obvious to try with a reasonable expectation of success. There is much to say about this patentability requirement, but it would go too far to address this subject much further.

4) „Industrial Applicability" means that something that is the subject matter of a claim, must be exploitable in an industrial enterprise. Normally, that is the case. Once a chemical compound, or a pharmaceutical composition, can be made in industry, nobody will doubt industrial applicability of that. The EU Directive might be interpreted so as to contain some limitations in this respect as far as certain types of DNA inventions are concerned.

5) Enabling disclosure. The philosophy of the patent system is that you provide something to the public, and, as a compensation, the public gives you a monopoly for a limited period of time. The period of time for which the monopoly is granted by the EPO is twenty years from the European filing date. Enabling disclosure means that, if you explain your invention in the patent application, you have to explain it in a way that would allow an expert reading the patent application and later on the patent, to actually reproduce what you have disclosed and what you are claiming.

6) „Clarity" requires that, if you write the patent application, the language you are using has to be conceivable to a person skilled in the art. There is a lot of case law on clarity. Again this is a topic that could be covered in much more time.

 

2. Parts of a European patent application

What does the European patent application look like? You have a description, claims, an abstract and figures.

In the description you have

    an introduction;

    the technical background;

    the technical problem;

    a detailed description of the invention according to the order of the claims (Here you discuss in detail the invention and how it works. Normally, you have a certain set of claims. In the detailed description you talk about the invention, explained in the terminology of the claims and in the order of the claims. It is an occasion to explain and define terms that are used in the claims, such as „hybridization", which is a conventional term used for the claiming of DNA sequences in a broad form);

    legends to the figures (comparable to scientific publication);

    examples (the actual data);

    and a sequence listing (for sequences of more than 4 amino acid residues or 10 nucleotides);

    the claims define what has to be protected and the scope of protection;

    the abstract;

    and the figures.

 

3. The prosecution in the EPO.

The following Table I lists the EPO's steps in handling a European patent application and in its prosecution. The time periods given are either stipulated by the EPC or based on statistical reviews.

Table I

From filing to grant

(procedure without request for accelerated prosecution „PAGE")

Time (months)
Procedural steps
0
Priority; e.g. US or JP filing date
12
Filing of application
Minimal requirements (Art. 80):
- request for grant
- designation of at least one contracting state
- information identifying the applicant
- description and at least one claim in English, French or German/ the official language of one of the contracting states of the EPO („declaration of priority; Article 87, Rule 38)
Preparation of search report (Article 92) after search fee has been paid, and:
18
Publication of application (Article 93)
EP-A1 ... (with search rep.)
EP-A2 ... (no search rep.)
EP-A3 ... (just search rep.)
~24 within 6 from publication
Request for examination (Article 94)
Payment of Designation Fees
48 first examination report after 24 months
Examination (Article 96, Rule 51)
(Office actions, interviews)
63 examination completed after 39 months
Communication pursuant to Rule 51(4)
information on the text for grant
65 2 to 4 (+2)
Approval (or disapproval)
67 2 to 3 (inextensible)
Communication pursuant to Rule 51 (6)
- fee for grant
- fee for printing
- fee for claims
- translation of claims
72 5 from the issuance of Rule 51(6) (this period can significantly shortened as from January 1, 1996, upon request. Mention of grant may be expected within two months)
Mentioning of grant in the European Patent Bulletin and publication of patent (Article 97(4) (5)),
and (simultaneously):
- disintegration into national patents
- each „national" European patent confers the same rights on its proprietor as a national patent granted in that state (Art. 64(1)).

      Overall ~ 72 months

81 (9 months after grant)
Opposition

 

4. Area covered

The EPC provides simplification and cost saving means for people that are interested in having a patent in several European countries. Before, we had the EPC, it was necessary to nationally file and prosecute patent applications. Since the EPC, this is no longer necessary. If you file European patent applications for less than three or less than four countries, it will be more expensive than filing it nationally. The current contracting states of the EPC, and the list is growing, are the Federal Republic of Germany (1977), United Kingdom (1977), France (1977), The Netherlands (1977), Switzerland (1977), Belgium (1977), Luxembourg (1977), Sweden (1978), Italy (1978), Austria (1979), Liechtenstein (1980), Spain (1986), Greece (1986), Denmark (1990), Monaco (1991), Portugal (1992), Ireland (1992), Finland (1996), and Cyprus (1998). These are the contracting states you can reach with a European patent. The designation fee per contracting state is DM 150.

When you file the European application, which is in fact a bundle of applications, and when the patent is granted, it disintegrates into national patents. A patent granted for, e.g., Denmark via the EPO will have the same effects as a patent granted by the national Danish Patent Office. And that applies to all countries.

There are some countries that are not yet members of the EPC, e.g., Slovenia, Lithuania, Latvia, Albania, Romania, and Macedonia. However, you can extend the European Patent to these six other countries for a fee of DM 200 per extension state.

 

5. From filing to grant

When filing the EP application, one can also request accelerated prosecution. In this case, the time line looks about as follows.

Table II

From filing to grant

(procedure with request for accelerated prosecution „PACE")

Time (months)
Procedural steps
0
Priority
12
Filing of application
less than 18 months
Preparation of search report
18
Publication of application
Request for accelerated examination
(can also be filed at other procedural stages)
21
First examination report
25,5
Examination completed / Communication pursuant to
Rule 51(4) EPC;
Immediate request for grant in accordance with Art. 97(6) EPC
only valid if the following is effected:
- payment of the fee for grant and the fee for printing,
- filing of translations of the claims,
- payment of fees for any additional claims, and
- filing of a translation of the priority document where necessary or the corresponding declaration (Rule 38(4) EPC)
27,5
Mentioning of grant

      Overall ~27,5 months

 

6. The fees

The fees that become due at the EPO are indicated in the table below. For an example, the fees for filing a European patent application, designating all contracting states (no extension states) and containing twenty claims, will be DM 5,450.00. The request for examination will be another DM 2,800.00.

Table III

The EPO Fees

Official Fees
Amount
Due Date
Filing fee
DM 250.00
within 1 month after the date of filing
Search fee
DM 1,700.00
within 1 month after the date of filing
Designation fee
(for each designated country)
DM 150.00
within 6 months after the date of publication of the search report
Extension fee
(for each „extension" state)
DM 200.00
within 6 months after the date of publication of the search report
Claims fee (for each claim in excess of 10)
DM 80.00
within 1 month after the date of filing
Fee for an additional copy of the documents cited in the European Search Report
DM 40.00
together with search fee
Examination fee
DM 2,800.00
within 6 months from the publication of the search report
Fee for grant including fee for printing the European patent specification, where the application documents to be printed comprise:
- not more than 35 pages
- more than 35 pages
 
DM 1,400.00
DM 1,400.00 plus DM 20.00 for the 36th and each subsequent page
within the term specified in the Communication according to Rule 51(6) EPC
Min: 2 months
Max: 3 months
Claims fee (for each claim in excess of 10, only if there are more claims than in the originally filed application)
DM 80.00
Fee for further processing (if the application is deemed to be withdrawn)
DM 150.00
within 2 months of the notification of loss of rights according to Rule 69(1) EPC
Fee for re-establishment of rights
DM 150.00
within 2 months of the removal of the cause of non-compliance with a time limit
Surcharge on the filing fee, the search fee or a designation fee (50% of the relevant fee or fees, but not to exceed a total of:)
DM 1,400.00
Opposition fee
DM 1,200.00
within 9 months of the publication of the mention of grant
Appeal fee
DM 2,000.00
within 2 months after notification of the appealed decision
Renewal fees, calculated in each case from the date of filing of the application
- for the 3rd year
- for the 4th year
- for the 5th year
- for the 6th year
- for the 7th year
- for the 8th year
- for the 9th year
- for the 10th and each subsequent year
 
DM 750.00
DM 800.00
DM 850.00
DM 1,400.00
DM 1,450.00
DM 1,500.00
DM 1,900.00
DM 2,000.00
on the last day of the month containing the anniversary of the filing date for the coming year


The purpose of the renewal fees listed in the above Table III is to encourage people not to insist on maintaining patents that they do not need anymore. If renewal would be inexpensive, there would be more incentive to keep the patent even if there is no commercial need for doing so any more. If renewal is expensive, one thinks about it more carefully.

I would like to add one extra source of costs. Once a patent is granted and disintegrates into national patents, maybe the highest amount of cost arises, because translations have to be made and paid. A granted patent has to be translated into the official languages of the contracting states of your EU patent in order to become effective. Suppose you need ten translations for a EU patent. A translation is, roughly, DM 70 - 100 per page per language. That is actually where you have to spend a lot of money too.

 

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