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European patents can be granted for the following 34 contracting states: Austria, Belgium, Bulgaria, Switzerland, Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, United Kingdom, Greece, Croatia, Hungary, Ireland, Iceland, Italy, Liechtenstein, Lithuania, Luxembourg, Latvia, Monaco, Malta, Netherlands, Norway, Poland, Portugal, Romania, Sweden, Slovenia, Slovakia, Turkey, and the applicant's request can be extended to Albania, Bosnia and Herzegovina, Croatia, the Former Yugoslav Republic of Macedonia and Serbia.
Procedures and Time Frame
The European proceedings comprise four phases as follows: the formal examination, the substantive examination, the grant procedure and the validation in the designated states after grant. The entire proceedings average to about five years.
a) Formal examination
The time frame for formal examination is 18 months from earliest priority date or from the application date if no priority is claimed. After filing the application, the formal examination is carried out.
If there are no formal deficiencies, the European patent application will be published. The publication takes place 18 months after the filing date or, if a priority is claimed, 18 months after the earliest priority date. Around the same time, the European Search Report will be established. The Search Report will be published too.
Within 6 months from the date on which the European Patent Bulletin mentions the publication of the European search report, the request for substantive examination has to be filed and the designation, examination and extension fees have to be paid. Please note that within the same deadline, it is also possible to amend the designations, meaning that you can cancel or add new countries which should be covered by the European patent application.
b) Substantive examination
The time frame for substantive examination is 3 to 4 years, depending on the workload at the search or the examining division, respectively.
After the examination fee has been paid, the substantive examination proceedings will commence. The first office action may be expected within a time period of between 5 months and 2 years, depending on the workload in the European Patent Office. It is also possible to request accelerated examination. In this case, the first office action will most probably be issued within 3 months from the request and all subsequent office actions will also be issued within the same time frame.
Please note that no official fees fall due for the acceleration request. This is a cheap and effective way to a quick examination procedure.
Following the issuance of an office action, a response to the same is to be filed within the time limit indicated in the office action, which is, in most of the cases, 4 months.
In the prosecution this office action response cycle can occur more than once, again depending on the question whether the Examiner is ready to grant a patent based on the arguments and new claims, if necessary, filed in response to the office action.
c) Grant proceedings
The time frame for grant proceedings is about six months.
As soon as the examiner considers the application documents to be in order for grant, he will issue a communication under Rule 51(4) EPC, with the text intended for grant attached thereto. In reply to this communication, within four months the grant and printing fees have to be paid and the claim translations in the official languages other than the file language have to be filed (as mentioned above, the official languages are: German, English and French).
Once these formalities have been dealt with, the decision to grant a patent on this application will be issued. The mention of grant will be published in the Official Bulletin and the Letters Patent will be issued shortly thereafter.
Please note that within 9 months from the publication of the grant, third parties have the opportunity to file an opposition against the grant of this patent.
d) Validation of the patent in the designated states
The time frame for validation of the patent in the designated states is three months.
Within 3 months of the publication date of the grant, the patent has to be validated in the designated states. The national requirements differ from state to state and may include the translation of the patent specification into the official language, the registration of a local representative and the payment of corresponding official fees.
However, please note that no further examination, especially no further substantive examination, will be carried out by the patent office of the respected countries in which the European patent is to be validated. Accordingly, this validation process is rather a matter of formality, but is coupled with significant costs due to the translation requirements.