EU Patent Translation Service
We’ve blogged about legal document translation in the context of trademark protection in the EU. Although your client has patent protection in the US, this doesn’t mean their product or invention is protected in the EU. To ensure international protection it is important to obtain a patent outside the home jurisdiction too. Here’s a brief overview of how to obtain a patent in the European Union:
EU Patent Definitions
Before one applies for an EU patent it is important to understand how EU law defines inventions and patents. According to legislation, an invention can include a product, process or apparatus. However, to be patentable, it must be new, industrially applicable and involve an inventive step. Further, there is no such thing as an ‘EU patent’ as patents are valid in individual countries for specified periods of time and thus are typically granted by a national patent office.
According to EU law, a patent confers the right to prevent third parties from making, using or selling the invention without the owners’ consent.
Applying for a European patent
There are different routes for obtaining a patent, and the best route will depend on the type of invention your client has and the markets they operate in. For example, if you are seeking protection only in a few countries, it if often best to apply direct for a national patent with each of the national offices (as opposed to the European Patent Office).
If applying for a European patent, your application must consist of:
• A request for grant
• Description of the invention
• Drawing (if applicable)
All applications made by a non-EU resident must be made in coordination with legal representation.
Patent Translation and Filing
The next step is the examination on filing, which involves checking whether all the necessary information and documentation has been submitted and thus accorded a filing date. This is followed by an examination relating to certain formal aspects of the application such as, for example, the form and content of the request for grant, designation of the inventor, appointment of a professional representative and the necessary patent translation services.
While conducting the formalities examination a European search report should also drawn up. This step involves searching (and listing) all documents that may be relevant to assessing novelty and inventiveness.
Next, the application and search report will be published – although this typically happens 18 months after the date of filing. Once published, applicants have six months to decide whether or not to pursue their application by requesting substantive examination. However, if the applicant has previously requested examination, they will then be invited to confirm whether the application should proceed. Within this same time period the applicant must also pay the designated fee(s). More so, once published an invention is entitled to provisional protection.
If the substantive examination comes back indicating that a patent can be granted, the office will issue an official decision stating this, which is also published in the European Patent Bulletin (following the foreign language translation of the claims and their filings). A granting of a European patent bundles all individual national patents.
Once the granting is published, in order to retain its protective effect and enforceability against infringement, the patent must further be validated in each of the designated states within a specific time limit. Often times individual states will require the filing of a foreign language translation in the official language of the national patent office.
Even after the patent has been granted it can still be opposed by third parties. However, notice of opposition must be filed within nine months of the patent’s granting.
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