Filing Tips

EPO applications can be filed and prosecuted in English. This is highly recommended, among other things because it eliminates translation costs between the US and EPO patent attorneys. Applicants can request expedited examination without giving any reason.

EPO generally enforces an absolute novelty bar, but does provide a six month grace period for improper disclosure by another.

When filing in the EPO a patent attorney should usually designate all countries. The applicant doesn't enter national phase until after the EPO patent is granted, and at that stage each of the designated countries must accept the patent. I have never had an applicant enter national phase in all member countries of the EPO. Usually the applicants only validate the EPO patent in Great Britain, Germany, France, Spain, and Italy.

Use lots and lots of examples. The EPO is loath to allow claims that are broader than the reach of the specific examples. In U.S. practice, for example, we commonly provide one or two examples in a class, and then claim the class. But that is usually a no-no under European practice. In U.S. practice we can also commonly enable a chemical composition in the most general manner, and where the yields or usefulness of the compounds are just terrible. The claims are broad, however, so the patent tends to be blocking In European practice the EPO will often try to limit the scope of the claims to the poorly enabled and substantially useless compounds that are listed in the Specification. Thus, an applicant may want to develop the invention to a greater degree of completion before filing in the EPO.

Make sure that the originally filed Specification and Claims clearly define how the invention improves the technology in the field, and do so in terms of how the hardware will use the software to solve a particular problem. The EPO regularly rejects attempts to amend the claims during prosecution to define an invention that was not clearly set forth in the originally filed patent application. This practice should not be particularly problematic for those who follow the guidelines set forth in this book, because the main focus is on defining the invention in terms of solving a problem. But it is a huge problem for the vast majority of patent attorneys who write their patent applications as longwinded discourses, without ever figuring out what the invention is.

The EPO requires that the claims reference figure numerals. Unfortunately, the EPO examiners are not so generous as those at the PCT in identifying the numerals themselves, so the patent attorney must do that for himself. In any event a word to the wise – make sure that every element that is amenable to a drawing figure is included in a drawing figure, and that the element has a numeral. I have often seen that a software patent omits any drawing of a "computer readable medium", a claim to the software is rejected because there is no physical embodiment, but the applicant cannot go back and add the medium element because it is not in the drawing. Inclusion of element numbers in the Abstract and Claims when the application is first drafted goes a long way in preventing that problem.

The 20 year term for EPO patents always runs from filing date, not from priority date.