There Is A Risk To Request For An Early Grant

Authors: Birute Dauderiene, Patent Consultant at METIDADr. Jacekas AntulisAssociated Partner, Head of Patent Division at METIDA

laikrodis2Clients who encounter the procedures of obtaining a patent for the first time become surprised by the amount of time required for the patent to be granted. In Lithuania this period varies between eight and 22 months from the application date and is probably one of the shortest terms of granting the patent. In other countries, where examination of patent application is processed, the period lasts from three to five years. On the applicants’ requests the term can be extended or shortened depending on the laws of a designated country. For example, a national patent and trademark office in Germany allows an applicant to request for the examination only after seven years from the date of filing an application. Accordingly, the examination of the application lasts half of the patent’s validity term (20 years).

However, in some cases the applicant can file a request for early grant to accelerate the procedures of the patent granting. Such possibility is provided in many countries and also is possible according to one of the article of the European Patent Convention (EPC) which states that it is possible to grant the European patent earlier than 18 months after the filing or priority date.

Recently a decision has been made by the Boards of Appeal (BoA) of the European Patent Office (EPO) to decline applicant’s request of an earlier grant of the patent, in particular earlier than 18 months after the filing date.  This decision was influenced by the Examining Division of the EPO which monitors whether the patent application meets all the requirements of the EPC and whether the patent can be granted. Although this decision contradicts with the EPC article the main argument was quite weighty: when granting the patent before the 18 month term, the expert cannot proceed the novelty examination with respect to those applications which has been filed earlier, but published later.

After the grant of the patent the EPO does not foresee any additional procedures of the patent examination. The article we talk about would not lose its importance, if there were an additional search after the grant of the patent, as this is defined, for example, in the UK: after the earlier grant of the patent, the expert can proceed the examination with respect to the applications published later and suggest the applicant that she or he should amend (most often narrow) the claims .

Another important reason, why this decision has been made and why the applicant should carefully think in advance before requesting the early grant is the partially conducted examination for the application, the granting of the weak patent and its acknowledgement as invalid. Currently, one of the main grounds for the appeal is patent’s dispersing from the novelty requirement defined by the EPC. The expertise to define the novelty criteria has to be conducted subject to the known technical level, yet in this case the aforementioned unpublished applications are not considered. Thereby, upon request the patent can be granted earlier, but with relatively weak rights and with partially conducted examination. Currently, the claims often filed in accordance to the EPC have probably encouraged the Examination Division to make a stricter decision and not to permit to obtain an earlier grant on the grounds that in this case the examination in terms of the technical level has not been fully conducted. Thus, in case of the appeal, the applicant cannot fully refer to the EPC requirements subject to his/her application’s expertise.

On the other hand, if the European patent is granted earlier than 18 months after the priority date, third parties, being allowed to appeal against the filing of the application, also do not have the access to the information of the technical level and lose the right to oppose the patent.

All earlier filed applications also comprise the known technical level. The transformation from the international to the European application phase may last up to 31 months and all invention’s translations including Asian countries can be accessed later. Due to this, these applications are not examined when defining the novelty criteria. Not to mention the fact, that if the EPC does not conduct the patent search in the international phase, the Examination Division gets the whole picture only 18 months after the filing or priority date.

It surely only depends on the applicant’s will whether to choose a faster way of getting a patent or stick to the normal route. Nevertheless, the designated country, the selected patentability way and risks to loose the patent should be taken into account. The EPO has expressed their opinion in this matter.

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