Prosecuting A Patent Application. When a patent application is filed, the United States Patent and Trademark Office begins a process of review against statutory standards to determine if the invention described in the application merits an award of a patent.  Once the review is complete, the examiner typically sends the applicant an “office action.”  The  exchange that occurs between an applicant and a patent examiner in response to the office action is commonly referred to as the “prosecution” of an application.  This is the basically the same patent prosecution process practiced throughout the world.

Patent Examiner. A patent examiner in one of the technical centers of the Patent Office is assigned to review the application.  This examiner is usually technically cognizant of the field of the invention.

Patent Application Components. The patent examiner will first determine if the application contains all of the formal matters required under the law, e.g., specification, drawing, oath and fee.  These are requirements of section 111a, title 35 of the United States Code.

Claims have to be translated to one of their official languages if a European patent has been granted in English, or has been translated into English and filed under Article 65(1) EPC: Croatia, Denmark, Finland, Hungary, Iceland, the Netherlands and Sweden. Except for Croatia, the European patent specification can also be filed in these countries in the respective country’s language.

The former Yugoslav Republic of Macedonia, Latvia, Lithuania and Slovenia only require a translation of the claims into their respective official languages, regardless of the official language in which the EPO has granted the patent.

London Agreement to Change Translation Requirements. The London Agreement took effect on May 1, 2008 and it alters the translation requirements for some of the European countries when EP patents issued after that date. A list of signatories may be found on the EPO web site. See the EPO site for more translation information.

When a European patent issues, the owner needs to take no action to make the grant effective in the following member states: United Kingdom, France, German, Switzerland, Luxembourg, Liechtenstein and Monaco. For these states and except when a patent is revoked or limited, a European patent takes effect as a national patent on the date on which the mention of the grant is published in the European Patent Bulletin. Thus, for an application filed in English, French or German, no translations will be required for the United Kingdom, France, German, Switzerland, Luxembourg, Liechtenstein and Monaco.

As of February 2012, there are 18 European countries that do not require a translation of the description unless an infringement action is brought in the state. These countries are signatories to London Agreement and include: Croatia, Denmark, Finland, the former Yugoslav Republic of Macedonia, France, Germany, Hungary, Iceland, Latvia, Lithuania, Liechtenstein, Luxembourg, Monaco, the Netherlands, Slovenia, Sweden, Switzerland and the United Kingdom.

Other countries of the EP may join the London Agreement, which is downloadable in pdf format from the EPO site.

European Patent with Unitary Effect (EUP). Beginning no sooner than 01-JAN-2014 (but probably a year or two later if 13 states have not acceded to the Agreement), up to 25 of the 27 European states will participate to offer a single patent right covering all those member states of the European Union that are participating in the new Agreement on a European Patent with Unitary Effect.

This right will not be not automatic but must be requested by the patentee. Within a month after a grant of a European Patent, the patentee will be able to file a request with the European Patent Office to register the European Patent as having Unitary Effect. The resulting European Patent with Unitary Effect will be maintained by payment of a single annual renewal fee to the European Patent Office.

If no such request for Unitary Effect is filed within one month of European Patent grant, the European Patent will continue as a bundle of ‘national’ patents to be validated in designated states as desired. Normal European Patent Validation will be required in any case in any designated states which are not participating states, particularly including designated states which are not members of the European Union.

Registration of a European Patent as a European Patent with Unitary Effect will be available only if the European Patent is granted with identical claims for all European Patent with Unitary Effect states. Italy and Spain are not participating in the European Patent with Unitary Effect and Switzerland and Norway, which are not members of the European Union, cannot participate.

A Unified Patent Court is to be set up to provide a single court forum to have (eventually) exclusive competence over all disputes relating to European Patents and in particular those with Unitary Effect. The Unified Patent Court will have a Court of First Instance and a Court of Appeal.

The Patent’s Legal Coverage. A European patent confers on its owner from the date of publication of the mention of its grant, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State.

  • Note that the granted patent may be enforced or revoked in the countries specified in the application in accordance with national laws of those countries.  Multiple litigation is costly but fostered when each nation must adjudicate independently.
  • Note also that anyone can file an “opposition” to the patent grant within nine months from the publication of the mention of the grant of the European patent.  This re-litigates the validity of the patent before the “Opposition Division” of the EPO and can result in its amendment, revocation or affirmation. Oppositions happen for about 6% of the patents.  Each party to an opposition proceeding bears the costs he has incurred.

Non-Patentable Subject Matter. The following are not patentable by the EPO: discoveries; scientific theories; mathematical methods; aesthetic creations; schemes, rules and methods for performing mental acts, playing games, doing business, and computer programs; presentations of information; methods for the medical treatment of animals and humans; diagnostic methods applied to animals and people; inventions contrary to public order or morality; plant or animal varieties; and biological processes for the production of plants or animals (except that microbiological processes or to the products thereof, are patentable).

Patentable Subject Matter. Inventions that don’t fit into the categories above and have industrial application, are new and which involve an inventive step are patentable under the European Patent Convention.  Generally, the claimed subject matter must have a physical presence, that is a technical character, which is directly linked to a problem solved by the invention. See Article 52 of the EPC.

The Origin of the European Patent. A European patent became an available option as a result of an agreement between participating European countries first reached in 1977.  The agreement is the European Patent Convention (EPC) and it enables the filing of a single application in or translated to one of three languages (English, French, or German).

The Entity Involved. The European Patent Office (EPO) is a legal entity headquartered in Munich, Federal Republic of Germany.  The EPO is independent of the European Union and is administratively and financially autonomous.  The EPO’s Receiving Section for applications is located at a branch office at The Hague.

Filing the European Patent Application. Patent application filings may be made either in the EPO or in one of the national offices, except that a resident of France must usually file in France.

Attorney Required. After the initial filing and payment of fees, an applicant from a country not a party to the EPC is required to have an attorney or agent licensed to practice before the EPO. The EPO publishes a searchable online database of authorized representatives.  Selecting an attorney that is also licensed in a European state where you want protection may help reduce local counsel costs after the patent grant when it comes time to locally file and publish a translation.

Unusual Filing Fees. European filers be alert: The European Patent Office fee schedule (effective as of 14-JUL-2019) adds an extra charge of EUR 235 for each claim in excess of 15 through 50 claims and EUR 585 for each claim in excess of 50.  So, cost-conscious filers may want to pare down their claims to 15  before filing either an original application or a national stage PCT application.

The EP charges extra for more than 35 pages in an application, at a rate of EU15 per excess page.  Application pages that are considered in the total page calculation include the description, claims, drawings and abstract.

The EP charges a flat designation fee of EUR 585 (effective 14-JUL-2019 for designating more than one of the states that are part of the European Patent Convention.

The Search and Exam. The EPO performs the search and examination of the patent application and grants a patent.  The patent application and search report are published at 18 months from the filing or priority date. Then, upon request of the applicant within 6 months of publication of the search report and payment of an examination fee, the patent office examines the application for eligibility for a patent.

Patent Issuance. A patent grant becomes effective when published in the European Patent Bulletin and the owner receives a certificate for the European patent, with the specification annexed.

The Down Side. Translations, local counsel, and disparate enforcement standards can lead high costs and sometimes to enforceability in one country but not in others.

Costs. EPO costs are lower than filing in individual countries of Europe if more that 3 countries are selected.  Patent application renewal fees are due in the third year and each subsequent year, calculated from the date of filing of the application.   Persons not having either a residence or their principal place of business within the territory of one of the Contracting States must be represented by a professional representative and act through him in all proceedings.  Thereafter, local counsel is needed in each state where translations and publication fees must be paid.

Full Disclosure in the Application. The examiner considers whether the submitted application fully discloses and distinctly claims the invention.  This is a requirement of section 112, title 35 of the United States Code.

Best Mode Disclosed in the Application. The application must disclose the “best mode,” or preferred way, that the applicant knows to practice the invention.  This is a requirement of section 112, title 35 of the United States Code.

Utility of the Invention. The examiner must decide whether or not the claimed invention is useful. The requirement of usefulness, or utility, is satisfied if the invention is operable and provides a tangible benefit. This is a requirement of section 101, title 35 of the United States Code.

Novel Invention. The examiner must evaluate whether or not the claimed invention is novel.  To be judged novel, the invention must not be fully anticipated by a prior patent, publication or other knowledge within the public domain. This is a requirement of section 102, title 35 of the United States Code.

Nonobvious Invention. The examiner must evaluate whether or not the claimed invention is obvious considering the prior art.  In order to make an informed judgment, the examiner searches existing patents and other published documents for disclosures of analogous art and art matching the claimed invention.  A nonobvious invention must not have been within the ordinary skills of a competent artisan at the time the invention was made.  For an invention to be obvious, a suggestion, teaching, or motivation to combine relevant prior art teachings may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.  There must also be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations.  This is a requirement of section 103, title 35 of the United States Code.

An Art Form. Patent application drafting and the method of claiming an invention is akin to an art form, which is informed by the legal standards set forth in the history of patent approval.  Claiming an invention is not simply setting down the metes and bounds of an invention.  Rather, it is ensuring that the statutory standards are met using the accepted terminology, which has specific and well accepted meanings in patent law.   It is also providing meaningful protection to the invention against those who would design around the invention and bring competing products to the marketplace.  Achieving the broadest protection to the invention often involves creating a set of claims with very broad to very narrow scope.  This enables the broadest possible response to the examiner’s office actions objecting to, or rejecting, an application.

Examiner Action. Within about 24 months of filing an application, the examiner will send out a first office action objecting or rejecting the application on various grounds using the above statutory standards.  It happens, but not too often, that an application is accepted without any objection or rejection  from the Examiner.  A “rejection” is the refusal to grant claims because the subject matter as claimed is considered unpatentable.  An “objection” is made when the form of a claim is improper, such as dependency on a rejected claim.

Applicant’s Response. The applicant, usually through his representative, will then analyze the office action and determine the best approach to respond to the objection and eliminate it.   The response must be within the confines of what is already disclosed within the application and may start with a meeting with the examiner.  The written reply will usually be a clarification, an explanation, an affidavit, an amendment, a petition, a terminal disclaimer, a request for reconsideration based upon some missed point, or a suite of other potential replies conforming to the requirements of the regulations in title 37 of the Code of Federal Regulations.  A second office action may result, which provides further objections or rejections, or the examiner may find the applicant’s answer unresponsive and make his prior objection or rejection final.  At some point an objection or rejection may be made final.  Then, an appeal is possible or another application is filed with new matter, or the application is abandoned and the process stops.

Patent Issuance. If the applicant’s answers are accepted and there are no further objections, the patent will be accepted for issuance, pending payment of issuance and publication fees by the applicant.  The applicant’s responses become part of the history of patent application and are available to all who may later need to understand exactly what was patented and what was not patented.

Engage a Professional. Consider engaging the Law Firm of Louis Ventre, Jr. to represent you.  If your invention is worth patenting, it is worth the cost of a professional.

patent%20attorney%20starCost. The cap or ceiling charge (see “Patent Prosecution” on the utility patent page) offerred by The Law Firm of Louis Ventre Jr. for responding to office actions up to a final decision on the application can be an important consideration for limited budget small entity clients. Business Week published an article on 09-AUG-2012, titled “Startups’ New Creed: Patent First, Prototype Later,” and it quotes an attorney with a California patent law group stating: “Unlike most large Silicon Valley law firms, Schox Patent Group charges clients a flat $15,000 fee per patent application, rather than by the billable hour. That means Schox doesn’t charge for things like e-mails or brain-storming sessions, making him more like a partner to his clients. Law firms typically charge an average of $40,000 to get a patent approved, says Schox.” Schox’s average cost estimate may include action beyond a final office action decision, so there is not a direct one-to-one correspondence on costs, but this amount is considerably beyond the average overall charges you would expect from The Law Firm of Louis Ventre, Jr.

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