Patent application procecution
The patent granting procedure is divided into four sections.
These are the patent application, the formal examination and search, the examination of the application for novelty and inventive step as well as the grant of the patent and publication.
1. patent application
The patent application usually consists of the request for grant of the patent, a patent description, the patent claims as well as drawings of the so-called execution examples and a summary of the patent application. The German Patent Act and the European Patent Convention applicable to EP applications provide that the application is already granted the filing date if the application contains the name of the applicant, the request for grant with a short designation of the invention and a description of the invention. In some jurisdictions, such as the USA, it is possible to file a so-called Provisional Application for Patent. These do not yet have to contain any claims. A patent application with claims, but must be filed within 12 months of the filing date of the Provisional Application.
For the drafting of a patent application, a patent attorney should be consulted who ideally performs the application procedure as the applicant's representative before the relevant patent office.
If patent applications for the invention have already been filed in other countries, make sure that you only have 12 months to file subsequent applications at other trademark offices. If you have not yet decided in which countries you would like to file subsequent applications, a PCT application should be considered. In this case, you have 30 months from the application for priority to select the countries and submit the requests for examination.
A German patent application must be filed either at the German Patent and Trade Mark Office (DPMA) or at a Patent Information Centre.
An EP application is filed at the European Patent Office or its filing offices.
A PCT application can either be filed at the patent office at the applicant's registered office or directly at WIPO.
2. formal examination and research
The Patent Office first examines whether the formal requirements of the patent application have been met. This includes that the patent application contains the name of the applicant; a request for grant of the patent, in which the invention is briefly and precisely described; one or more patent claims indicating what is to be protected as patentable; a description of the invention; and drawings to which the patent claims or the description refer.
A so-called search report can be requested at the same time as the formal examination. This search report lists the prior art relevant for the assessment of novelty and inventive step. These include older priority patents and other publications. The search report gives the applicant an idea of whether or not his patent application will be successful.
The patent application is disclosed after 18 months from the filing date. The search report is also disclosed if it was requested.
3. examination of novelty and inventive step
The examination of the patent application requires the filing of a request for examination. The request for examination must be filed within 7 years from the filing date (for Germany, other countries may vary). If the request for examination is not filed, the patent application is deemed withdrawn.
In the case of an EP application, the request for examination must be paid within 6 months after publication of the patent application. The designation fees for the designated states must also be paid within this period. Subject to a request by the applicant, the EP application will be published 18 months after filing. The deadline for filing the request for examination is therefore 24 months.
In the case of a PCT application, a request for preliminary international examination may be filed after 3 months from the transmission of the international search report or 22 months from the priority date. The submission of this request for examination is optional and non-binding.
After 30 months at the latest from the priority date, the national phase must be initiated. The deadline for entering the European phase is 31 months from the priority date.
For Tanzania, Uruguay and Luxembourg, the national phase must be submitted no later than 20 months after the priority date.
4. grant of patent
Once the patent has been granted, it is published.
In Germany, opposition to the patent may be filed within 9 months of the publication of the patent division. With the exception of the so-called wrongful removal, anyone may object. The opposition may be based, inter alia, on lack of patentability.
In the case of an EP application, the opposition must be filed within 9 months of the publication of the reference to the grant of the European patent.
If the time limits are missed, only actions for invalidity can be filed with the national patent courts. This is particularly unfortunate with the EP patent, as it must then be attacked separately in each designated country. In contrast, a reasoned opposition leads to the complete invalidity of the EP patent.