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Granting of European Patent

When the European Patent Office (EPO) agrees that an application is ready to be granted, there are various procedures that must be followed and actions to be completed within certain time limits. The purpose of this page is to explain the procedure and give you an idea of the likely time scale and costs. Basically, for a European Patent (EP) to proceed, two matters must be dealt with:

  1. The European Patent Office must grant the patent

  2. The patent must be "validated" in whichever of the designated countries are now required by the applicant - for almost all countries this requires the preparation and filing of a translation of the entire patent specification into an official language of that country. A more detailed explanation of each step is given below.

COMMUNICATION UNDER RULE 51 (4)

This is a letter from the European Patent Office which indicates that the application is acceptable in principle. A copy of the specification is attached to the communication, usually including amendments proposed by the Examiner. The applicant must reply to the European Patent Office to indicate either that the text of the specification is approved, or that it is not approved, or that it is not approved and proposing amendments. In the latter case, if the amendments are not acceptable, further examination is likely. Once the text has been approved, it is extremely difficult to make further amendments.

At this stage, we will also give you a detailed estimate of the likely cost of proceeding in each of the designated countries you wish to proceed. You may choose not to proceed with some countries in order to reduce expense.

"FURTHER PROCESSING"

If no reply is sent, the European Patent Office will set a further deadline of two months in which to fulfil these requirements, but extra "further processing" fees will be incurred. If this deadline is not met, the application will be irrevocably withdrawn.

COMMUNICATION UNDER RULE 51 (6)

  1. Following the response to item (1), the European Patent Office will issue the communication under Rule 51 (6) EPC. This sets a deadline of three months for paying the official grant and printing fees, and filing a translation of the claims into French and German. This deadline may also be extended using "further processing".

  2. If the European application claims priority from an application which is not in English, then the European Patent Office will also request a translation of the priority document into English if one has not previously been filed. The deadline for doing this will also be three months and is inextensible. If the deadline is not met, the priority claim will be lost. We will report this deadline to you and request that you send us the required translation in good time before the due date.

DECISION TO GRANT

Once the official fees have been paid and the translations of the claims into French and German filed, the European Patent Office will issue another communication, the "Decision to Grant". This is not issued until at least five months after the issuance of the "communication under Rule 51 (6) EPC", and informs us that the EPO will now issue the "Certificate of Grant" and publish details of grant of the patent in the European Bulletin. The "Decision to Grant" advises us of the date on which this will happen.

ISSUE OF THE GRANT CERTIFICATE AND OPPOSITION PERIOD

Once the certificate of grant of the patent has been issued, it will be sent to you. There is also an opposition period of nine months from the date of grant in which third parties may file an opposition to your patent. If this were to happen we would inform you immediately.

VALIDATION OF THE PATENT IN THE SELECTED DESIGNATED COUNTRIES

Within three months of the date of the grant, all necessary action must be taken in order to give effect to your patent. By this time, we would expect to have already received your instructions regarding which countries you are still interested in, and we will have sent you any necessary powers of attorney.

TRANSLATIONS

Almost all EPC countries require full translations of the specifications to be filed at their Patent Office in one of their national languages. Countries that require a full translation of the specification are:

           Austria
           Belgium
           Denmark
           France
           Germany
           Greece
           Italy
           Netherlands
           Portugal
           Spain
           Sweden
           Switzerland

A French translation can also be filed in Belgium and Switzerland; a German translation can also be filed in Austria and Switzerland; and an Italian translation can also be filed in Switzerland.

Countries that do not require a translation (of a specification in English) are:

           Ireland
           Luxembourg
           Monaco
           United Kingdom

POWERS OF ATTORNEY

Many countries also require a Power of Attorney signed by the applicant to be filed.

Countries that require a Power of Attorney are:

           Austria
           Belgium
           Ireland
           Italy
           Monaco
           Portugal
           Spain
           Sweden

Luxembourg will require a Power of Attorney for non-UK applicants, Greece will require a notarised Power of Attorney for the first validation of a European Patent application in Greece by an applicant. If you choose not to use our usual attorneys in Switzerland and the Netherlands, then these two countries will also require a Power of Attorney.

Countries that do not require a Power of Attorney are:

           Denmark
           France
           Germany
           United Kingdom

PUBLICATIONS

Austria, Denmark, Germany and Sweden will also publish the completed grant text in their national language.

RENEWALS

Once everything has been done, your patent will then be in force in each of your selected countries. It must then be renewed each year and we can of course deal with this for you if you wish.

ACCELERATED GRANT PROCEDURE

The EPO is prepared to accelerate the grant procedure of the patent application if you wish. If you choose this, then issue of the grant certificate can be achieved within three months rather than, on average, nine to twelve months. If you are interested in this procedure, let us know and we can request it for you.

The requirements are as follows:

  • When we inform you of receipt of the "communication under Rule 51 (4) EPC", you must immediately give approval of the text (as long as the text is satisfactory) and send us your instructions to accelerate the grant.

  • On receipt of your instructions, we will immediately send approval of the text to the European Patent Office and begin the translation of the claims into French and German. Within about two weeks we will file these translations and pay the grant and printing fees, simultaneously requesting "Accelerated Grant".

  • The European Patent Office will then issue the "Decision to Grant" within four to six weeks. We will monitor receipt of this to ensure that the Accelerated Grant is taking place.

  • Six weeks later the Certificate of Grant will be issued and the patent then needs to be validated in the required countries, as explained above. Naturally, the sooner you tell us of your selected countries the sooner we can begin preparation of the full translation.

 

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