According to Article 115 of the European Patent Convention, any person can submit their observations regarding a European patent application, or a European patent pending before the European Patent Office (EPO), in order to contribute relevant information to the examiners at the EPO. Such submissions are called third-party observations (TPOs) and serve as a valuable tool in the patenting process.
TPOs have an accelerating effect on a patent application. Submitting non-anonymous, well-supported observations pursuant to Article 115 and Rule 114 EPC substantiating a lack of patentability during examination can expedite the next Office Action from the EPO. This mechanism differs from the submission of a PACE request, as it only accelerates the next substantive communication from the EPO.
TPOs, which are sent to both the examiner and to the applicant for consideration and comment, not only help to prevent a patent from being wrongly granted, but can also lead to the amendment of patent claims. s Alongside the possibility of amendments to the patent claims, a TPO may also result in the granting of a patent with a lesser scope of protection.
Third-party observations can relate to patentability, novelty, inventive step, sufficiency of disclosure, lack of clarity, or amendments that are not allowed as per the rules. Observations must be filed while the proceedings are still ongoing to effectively influence the examination. TPOs filed after a patent has already been granted will be neither considered nor made available for file inspection.
TPOs are typically submitted using an online form via the EPO website, with no official fee required to be paid for the submission. They must be filed in one of the official languages of the EPO (English, German or French) and explain the grounds on which they are based. The supporting documents may be filed in any language, although the EPO may request the translation within a prescribed time period.
TPOs may be submitted anonymously, yet it is important to note that the submitting party mustn't already be a part of the proceedings and are not permitted to join the proceedings following the filing of the TPO. The EPO will not directly inform the filing party of any further action that was taken in response to their TPO, however the outcome will be confirmed in the office actions and published by the EPO.
Third-party observations are important in ensuring that the patent examination process is strong and accurate. By welcoming contributions from external parties, the EPO gains diverse knowledge and expertise, enhancing the examination process and making sure that granted patents meet high standards within the European Union.
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The European Patent Office (EPO) is a regional intellectual property office which contributes to a unified patent system across member states, streamlining the process for the protection of patents across the region. It is headquartered in Munich, Germany, with several other branch offices present in cities across Europe.
The EPO is the executive arm of the European Patent Organisation, an intergovernmental structure established on October 7, 1977, on the basis of the European Patent Convention (EPC) signed in 1973. The organization has grown to include all 27 member states of the European Union, alongside other non-EU states, bringing the total number of EPO member states to 39 inclusive of 44 respective countries.
The EPO operates alongside the EPC, a treaty which provides a legal framework for the granting of European patents by way of a single, harmonized procedure before the EPO. This mechanism allows the EPO to function as a centralized patent office for European member states, allowing applicants to file for protection of their inventions via a more simplified route when compared with filing for patent protection separately in each respective country. As such, the EPO plays a pivotal role in the intellectual property field of the region.
The EPO operates in three official languages, namely English, French and German, and patent applications may be filed in any of the three official languages.
One of the core functions of the EPO is to provide for the examination and granting of patents for inventions, with examiners from the Office assessing applications as per the necessary criteria such as a patent possessing novelty, industrial applicability and an inventive step.
Further establishing its role in the international IP landscape, the EPO is also actively involved in multiple international patent co-operations, with the office notably constituting one of the members of the Patent Cooperation Treaty (PCT). The PCT streamlines the process for the filing of international patent applications and facilitates the exchange of information and prior art. Moreover, the EPO has forged further collaborations with approximately 75 IP offices and regional IP organizations across the globe.
The Office has also formed cooperative validation agreements with five non-member states, namely Cambodia, Georgia, Moldova, Morocco and Tunisia. These agreements allow applicants to file for patent protection via the harmonized procedure before the EPO as they would when seeking patent protection in member states (either directly or via the Euro-PCT route), however applicants may request patent validation in the 5 aforementioned states despite them being non EPC members. The validation of a European patent in such states will have the same effect as a national patent would in each state respectively, and is available upon paying the corresponding fee.
Applications for patents in validation states are subject to the national laws of each respective state, however the state itself will not conduct examination, with the examination results conducted by the EPO being utilized instead.
The EPO plays an important role in the IP sphere on both an European regional level, and on an international level. Beyond its patent granting function, the EPO supports innovation by providing access to extensive patent databases and resources. As well as applicants and inventors, others such as researchers and policymakers can utilize data produced by the EPO to analyze and monitor patterns and trends in the field of technology to make informed decisions with respect to their patent portfolio, prospective applications, and future innovation.
Further, the work produced by the EPO and the quality of examination of patents has a direct impact on economic development and innovation in Europe. The EPO therefore aids in facilitating the encouragement of investment in research and development, fostering economic growth and technological advancement in the European region.
If you are interested in filing for patent protection by way of the EPO or Euro-PCT, or simply would like to learn more, contact us via our website or social media platforms.
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A patent application should detail in-depth information pertaining to the invention claimed and corresponding subject-matter. Each country/region has its specificities as to the application form (request to grant a patent). Navigating the specifics of what information should be detailed in a patent application can be difficult, but this handy guide will delve into the key components.
All patent applications should contain general details, including the applicant name(s), address, and information pertaining to the agent acting on behalf of the applicant(s), as well as more technical information regarding the invention. This technical information comprises the patent specification of an application. The specification for a patent application should include:
Patent Title
The patent title detailed in the application will be the name assigned to your protected invention, and should be both short and factual. Due to the fact that the title will enter the public domain upon submission of your application, it is important to avoid disclosing confidential data or detailing novel methods relating to your invention in the title. Disclosing such information could risk your ideas being copied by other individuals or entities, who may use your unprotected, novel idea to produce analogous concepts or similar ideas of their own.
Field of the invention
The type of invention, or area of technology, to which to patent subject matter relates, otherwise known as the ‘field of invention’, should be depicted briefly in the patent specification. Such description should include a definition of both the class and subclass of the invention, for example "the invention pertains to technology for heating, specifically, for heating and cooling systems."
Background to the invention
The background to your invention is an important element in a patent application. It should detail any prior art that the applicant is aware of, although there is no obligation on the applicant for this information to be entirely comprehensive or accurate. The purpose of the background to the invention in an application is to provide a general overview of what the novel invention brings to the market that other, similar or prior art may not. It may also assist with the assessment of claim validity of the patent.
Statements of the invention
A patent specification should also detail the statements of the invention, which provide formal definitions as to what the invention is, and the intended scope of protection. Such statements should generally comprise broad definitions of the subject matter to which the patent application relates, and will be similar in nature to the claims section of the application.
Drawings
A patent application can typically include as many drawings as needed to accurately describe the invention. Any drawings contained within an application do not need to be highly technical, however they must be clear and adequately depict the patent.
A list of all drawings should also be included alongside corresponding descriptions of what each drawing depicts and shows. The drawings themselves should have precise labeling, with the numbers on the drawings establishing a connection between the illustration and the description.
Abstract
The abstract should comprise an understandable and clear description or overview of the main features of the invention(s) contained within a patent application and specification, which offers a useful overview of the patent's essence. The abstract is primarily used as an aid in patent searches, allowing others to find your patent application when searching for related inventions. The abstract must align with the rest of the patent specification and maintain accuracy, excluding any information which is not contained within the rest of the application. For this reason, it is typically composed after the completion of the patent application to ensure that the abstract accurately encapsulates the patent's content.
Description
The description should encompass an explanation of the innovation and its operational principles, depicting how the invention may be put into use, otherwise known as "specific embodiments” of an invention. It must encompass all the essential information for someone with expertise in the relevant field to replicate the invention. For instance, if the patent pertains to heating and cooling technology, fundamental details about assembling and running such technology, which a proficient heating engineer would reasonably be aware of, would not be required for them to replicate.
It is important to incorporate every aspect that makes the invention unique and explains its operational basis, as omission of the same may lead to the rejection of the application, or issues upon grant later down the line.
Patent claims
The patent claims are the most crucial sections within a patent application as the patentability of an invention will largely be determined by assessment of the claims. The claims should detail the scope of the application, defining exactly what will be protected by the patent if granted. The invention defined within the claims will typically be examined against, and compared with, existing inventions in order to assess patentability, therefore meticulous drafting of the patent claims is crucial. The claims should also outline the intended exclusive rights of the patent holder once granted, and the extent to which third parties will be able to utilize the invention. It is important to ensure that the claims encompass all possible versions of the invention that could possibly be created, as failure to do so may result in third parties creating similar versions of your invention if the claims do not limit them from doing so.
Each patent claim should consist of one sentence. Patent claims are separated into two categories, namely independent claims and dependent claims. Independent claims set forth the protection which is sought for the invention, outlining the necessary features for achieving the intended effect of the invention. The dependent claims, on the other hand, assist in limiting the scope of independent claims, providing additional details and context with reference to previous claims. The first claim detailed should typically be the most fundamental for the essence of the patent, and each subsequent one adding additional features. Each claim should be complete in and of itself.
The drafting of a patent application and specification is a complex and vital part of obtaining IP protection for an invention. It is therefore recommended that applicants seek legal advice or instruct a patent attorney to assist with the patent application process, particularly with the intricate drafting of claims. If you would like further details on applying for patent protection, or to file an application through the IP-Coster platform, contact us via social media, email, or our website contact page!
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The time limit for entering the PCT national or regional phase in most jurisdictions is typically 30 or 31 months from the earliest filing date, or priority date, of your PCT application, depending on the individual country(s) or region(s) in which you are seeking patent protection. After this deadline, your patent application will be considered by the respective IPO's of each individual designated country and/or region.
In addition to varying national phase deadline time periods of 30/31 months, many jurisdictions possess nuances such as the possibility of deadline extensions, corresponding fees etc. See below for details on the PCT national phase time limits pertaining to each jurisdiction:
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Filing for patent protection can be a complex and time-consuming process, but knowing where to start can alleviate some of the pressure for new applicants.
Initial Stages
One of the most crucial elements in the early stages of filing is grasping an understanding of the patent system itself, particularly in each country or region that you wish to obtain protection in.
As both individual countries and states, as well as regional patent systems, possess varying filing requirements and regulations, one of the most important first steps to consider are the jurisdictions in which protection would be sought for your invention. In order to do so, it may be necessary to consider the invention itself and the potential market(s) in which it could be placed.
In order to effectively evaluate and consider the IP legislation and regulations of any jurisdiction of interest, it is advisable to consult with a patent attorney or agent who is well-versed in the patent laws of that particular state. The greater understanding of the requirements of each country or region that you wish to obtain protection in, the better, as a more comprehensive and thought out application may prevent potentially time consuming and costly office actions later on.
Searches
A vital part of the initial stages of the patent protection process is the conducting of patentability and prior art searches. Such comprehensive searches should be undertaken prior to the drafting of a patent application to ensure that your invention is unique (novel) and does not infringe on existing patents. Moreover, you will be unsuccessful in obtaining a patent if your invention has already been publicly disclosed, however most jurisdictions have a grace period during which disclosure is disregarded. This period will vary from country to country.
The requirement of novelty is one of the most crucial criteria of patentability for a patent, thus a comprehensive search and comparison of inventions similar to yours can provide a more solid basis for a patent application and in turn, provide for a higher chance of successful outcome.
Such searches can be conducted through the IPO in which protection is sought, or via patent databases, publications, and other relevant resources. Moreover, the undertaking of a search can be a pivotal moment in the decisions an applicant takes in terms of filing and defining the scope of protection, as the results can indicate whether an applicant should be filing for a patent for an invention or utility model, for example.
Patent Application Drafting
Once you have considered the initial elements of your invention and have some understanding as to what may be required in the potential jurisdictions you wish to file for patent protection, the next vital step is the drafting of a patent application itself.
In order to have the best chances of success, patent applications should be detailed and well-written, and a solid understanding of what is required from each jurisdiction in which you wish to file is helpful. A patent application should typically include an abstract, a written description of the invention, drawings or diagrams (if applicable), and a list of the claims that define the scope of protection further given to your invention.
Depending on the invention itself, applicants should also consider the type of patent protection or patent application offered in varying jurisdictions. For example, some countries offer the option of filing for either a utility model or patent, whilst others offer the opportunity for applicants to file a provisional application or a non-provisional one.
Consulting with a patent attorney can greatly simplify the process and potentially increase the chances of a successful patent application by assisting with the drafting of an application as well as reviewing for any discrepancies.
Filing
The filing of the patent application itself will involve the completion of all necessary forms, which are commonly found on the official Intellectual Property Office website or the relevant jurisdiction, as well as payment of the corresponding official fees and the submission of any obligatory accompanying documents, such as a Power of Attorney, for example. These requirements, as well as being complex, can require a patent attorney's expertise to achieve, for example the payment of certain fees, filing of documents, and in some countries, the mandatory requirement of foreign applicants to have a local patent attorney representative in the jurisdiction.
It is also helpful to consider the subsequent results of filing a patent application, even in the early steps of assessing how to file an application.
How do I start?
The IP-Coster platform can facilitate the beginning of your patent protection journey once you have drafted an application and are ready to begin the filing process, allowing you to obtain fee quotations for patent filing worldwide and providing professional advice from our wide range of international patent professionals. If you would like further assistance on the aforementioned crucial first steps, please contact us here.
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The process of obtaining intellectual property protection in multiple countries simultaneously can be a long and arduous task. With every jurisdiction enforcing their own respective legislation, the filing requirements, as well as procedures regarding the post-grant maintenance of IP, can vary greatly between countries.
Various treaties have been introduced across the globe to assist in the facilitation of a more efficient process for world-wide IP protection. The most poignant international conventions that assist in this regard are the Patent Cooperation Treaty (PCT) and the Paris Convention Treaty. Whilst they are different in nature they are closely linked, with states obliged to first become a member of the Paris Convention before they are able to join as a Contracting State of the PCT.
The Paris Convention Treaty was signed in 1883, and among a broad range of common rules, it provides for the right to national treatment and the right to priority. The concept of national treatment is a vital one, and ensures that Paris Convention member states afford the same level of patent protection and legal remedies to international applicants and right holders as they would to state nationals, preventing different countries from treating non-nationals unfavorably in relation to IP protection.
The right to priority is also of great importance, ensuring that if applicants file an initial application in one contracting state, they have a period of 12 months to file an application regarding the same invention in any other member state(s) without forfeiting the novelty of the invention, and retaining the priority date from the moment of first filing.
The PCT, on the other hand, provides for an efficient method for the filing of patent applications in multiple countries simultaneously via an "international" application. The PCT does not provide for an "international patent", since patent protection can only be valid within a given national/regional territorial jurisdiction. Rather, it serves as a basis for further national patent proceedings in the countries of the applicants interest, meaning a patent obtained via the PCT route is still national or regional in nature. Subsequently, it is possible for applicants to file an initial application with a PCT receiving office which acts as a basis for subsequent filings in any other designated PCT member states in which the applicant wishes to file. A patent filed via the PCT will have the same effect in the designated states as if it had been filed directly in that jurisdiction.
On balance, there are advantages when it comes to the consideration of whether to utilize the Paris Convention or PCT routes for patent filing and protection.
Whilst both routes typically include the filing of a local application with an office of first filing to obtain a priority date, the Paris Convention affords a period of twelve months for applicants to assess which countries they wish to file in before having to commence the national route of protection. The PCT route on the other hand, means that applications won't enter the international phase until 18 months from the date of first filing, and typically take up to 30/31 months, depending on the designated jurisdictions, for the entering of the national phase.
As such, the Paris route may be beneficial for those who wish to obtain patent protection in a few countries in a smaller amount of time. On the other hand, the PCT may benefit those who wish to make use of a longer time period before they must fulfil the national requirements of the designated states for protection, and to utilize this time period to estimate the chances of successful registration of the invention.
Moreover, whilst the PCT allows for applicants to further file in all PCT signatory member states stemming from the one international application, applicants must file separate, individual applications in the countries of choice if utilizing the Paris route. Additionally, the formality criteria, international search, preliminary reports and international publications are centralized and standardized by the PCT system, whereas the same is not the case when filing through the Paris Convention. It is worth noting, however, that the formal requirements of each member state designated will still need to be met during PCT national phase entry.
When considering whether to file via the Paris route or the PCT, the costs involved may provide a good indication as to which an applicant should choose. Overall, the fees incurred for the PCT may prove more cost efficient if an applicant wishes to file in several different states at the same time, however the upfront costs related to the PCT are relatively high.
Subsequently, if an applicant is only planning on filing for protection in a small number of countries, the Paris route is likely to prove less expensive than the costlier PCT and therefore more cost-efficient. On the other hand, if an applicant intends to file in multiple countries, the PCT may result in a cheaper outcome by incorporating many of the fees all at once. For context, PCT applications typically incur three fees: an international filing fee of 1,330 Swiss francs; a search fee which can range from approx. 150 - 2,000 Swiss francs (ISA dependent); and a transmittal fee depending on the Receiving Office.
Both the PCT and Paris Convention each offer their own advantages for those considering filing patent applications in more than one jurisdiction.
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