Formal examination and the parts of the patent application

In this article, you can learn about the parts of a European patent application and the requirements regarding these different sections according to the European Patent Convention (EPC). If you would like to obtain information about the content and role of patent applications in more general, please read our article “What a patent application should contain”.

What parts must every European patent application contain?

1. A request for the grant of a European patent (EPO Form 1001)

   There is a prescribed form, called EPO Form 1001, that you have to fill in and file with the application. (The forms can be found here, on the EPO's website.)

2. A description of the invention

   The purpose of the description is to "disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art".* The application has to contain sufficient technical information to enable a skilled person to put the invention into practice.

   The description starts with a title, which should clearly and concisely state the technical designation of the invention. The content and sections of the description are described in Rule 42(1) EPC:

   “The description shall: 
   (a) specify the technical field to which the invention relates; 
   (b) indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art; 
   (c) disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art;  
   (d) briefly describe the figures in the drawings, if any; 
   (e.g. "Figure 1 is a plan view of the transformer housing; Figure 2 is a side elevation of the housing, etc.")
   (e) describe in detail at least one way of carrying out the invention claimed, using examples where appropriate and referring to the drawings, if any; 
   (f) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is industrially applicable."

   Read more about the description on the EPO's website.

3. At least one claim

   The claims are the most important part of a patent application, since they determine the scope of the protection conferred by a European patent. It is very important that the claims are drafted professionally and clearly, as they define the matter that you want to protect.

   According to Art. 84 EPC, the claims must:
   (i) "define the matter for which protection is sought"; 
   (ii) "be clear and concise"; and 
   (iii) "be supported by the description". 

   All applications will contain one or more "independent" claims that include the essential features of the invention. Any such claim may be followed by one or more dependent claims concerning "particular embodiments" of that invention.

4. Any drawings referred to in the description or the claims

   The presence of drawings is not mandatory. Their purpose is to help understand the invention.

   The drawings should be clear, help understand the invention, be black and white and without text. Furthermore, reference signs used in the drawings should be consistent with the signs used in the claims and description, and they all should be explained. Reference signs not mentioned in the description and claims must not be used in the drawings, and vice versa. The same features, when denoted by reference signs, must be denoted by the same signs throughout the application.

5. An abstract

   The abstract is only used as technical information, it may not be taken into account for any other purpose, such as interpreting the scope of the protection sought. It should start with the title of the invention, and contain a concise summary (preferably no more than 150 words long) of the invention, the summary including the technical problem, the gist of the solution and the principal use of the invention.**

   Reading the abstracts of other patent applications is very useful – when conducting prior art search – for evaluating whether it is worth considering the whole content of an application.

According a filing date

The first step in the European patent procedure is the examination on filing. This involves checking whether all the necessary information and documentation has been provided, so that the application can be accorded a filing date.

Only a few requirements have to be met in order to receive a filing date:

• an indication that a European patent is sought,

• information identifying the applicant, and

• a description or a reference to a previously filed application.***

However, it is not allowed to add new subject matter later.**** So, unless you only need a filing date without proceeding with the application, you definitely should file the full application on the filing date. (There are some cases when only a filing date is desired, and the applicant does not need the application to be continued. One example is when the first application is filed with the sole purpose of claiming its priority. In order to claim priority, a valid filing date suffices. It is not a problem if the application has lapsed.)

Read our article "What happens after filing a European patent application?” to find out what you can and what you should do after filing.

Formalities examination

After a filing date is accorded, a formalities examination will follow relating to certain formal aspects of the application.

The requirements relating to the content of the description, claims, drawings and abstract are set out in Articles 83 to 85 and Rules 42, 43, 47 and 48.

The followings will be checked by the EPO during the formalities examination*****:

• Representation

  If you have neither a residence nor your principal place of business in a contracting state, you must appoint a representative and act through him in all proceedings before the EPO other than in filing your European patent application and paying the fees.
  If you have not appointed a representative, you will be invited to do so in a non-extendable period of 2 months. If you fail to remedy this deficiency, your application will be refused.

• Physical requirements of the application

  A European patent application has to include a request for the grant of a European patent, a description of the invention, one or more claims, any drawings referred to in the description or claims, and an abstract. (These will be described in more detail below.)

• Abstract and the presence of at least one claim

  The presence of an abstract and at least one claim is mandatory for every patent application. According to the EPC, the claim and the abstract are not required to be present in order to obtain a filing date, but they are required afterwards. If either an abstract or at least one claim is not filed, you will be invited to file it in a non-extendable period of 2 months. If you fail to remedy this deficiency, your application will be refused.

  Although you can file the claims later, it is not advised, since, after the filing date, you cannot add new matter to the application.**** So, if you do file the claims after the filing date – which is allowed –, they cannot include any information that was not contained in the application as filed.

• Request for grant

  A request must be filed on a form prescribed by the EPO (EPO Form 1001) with the details of the applicant.

• Claim to priority

  You must file the European patent application no later than twelve months after filing the first application. You may claim multiple priorities in respect of one European patent application, even if they originate from different countries. If you claim multiple priorities, time limits which run from the date of priority are computed from the earliest priority date. To claim the priority of an earlier application you must indicate the date, country and file number of the earlier application. 

  Additionally, though not necessarily at this point, you will have to file a certified copy of the priority document and a copy of any search results in respect of the earlier application.

  Read more about priority here: “Everything about priority”

• Designation of the inventor

  The person designated as the inventor will be mentioned in the published European patent application. If you do not designate the inventor when you file the European patent application, you will be invited to correct this deficiency within sixteen months after the date of filing. If you fail to submit the designation of inventor within the specified period, your application will be refused. 

• Translations, where required

  The official languages of the EPO are English, French and German.****** If you file your European patent application in any other language, you need to file a translation into one of the official languages of the EPO within two months of filing the application. (If you do not file it within this period of time and neither for the EPO's invitation, your application will be deemed to be withdrawn.)

  The language in which you file the European application (or its translation, if not filed in English, French or German) will be used as the language of the proceedings during the whole process.

• Filing and search fees

  The filing fee has to be paid together with the search fee within 1 month of filing the European patent application.******* If not paid, the application shall be deemed to be withdrawn.

After formalities examination, the preparation of the European search report and a preliminary opinion on patentability follows.

* This is defined in Art. 83 EPC.
See the full legal text here.

** This is defined in Rule 47 EPC.
See the full legal text here.

*** This is defined in Rule 40 EPC.
See the full legal text here.

**** This is defined in Art. 123(2) EPC:
”The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.”
See the full legal text here.

***** This is defined in Rule 57 EPC.
See the full legal text here.

****** This is defined in Art. 14 EPC:
See the full legal text here.

******* This is defined in Art. 78(2) EPC:
”A European patent application shall be subject to the payment of the filing fee and the search fee. If the filing fee or the search fee is not paid in due time, the application shall be deemed to be withdrawn.”
See the full legal text here.

Author: Zsofia Pintz
Published: August 2020
Updated: July 2023