Grant/refusal

A grant or a refusal is one of the final steps in the European patent application procedure. After the substantive examination of your application and invention, the examining division decides if a patent can be granted or if your application should be refused.

Grant

If the application and the invention to which it relates meet the requirements of the European Patent Convention (EPC), the examining division will send you the text in which it intends to grant the European patent, and invites you:

• to pay the fee for grant and publishing,

• to pay any claims fees for any claims from the 16th – only if there are more than 15 claims and if the claims fees have not yet been paid,

• to file a translation of the claims into the two official languages of the EPO other than the language of the proceedings (if your application was filed in English, you have to translate the claims into German and French)

within a non-extendable period of four months. 

You are also recommended to check the bibliographic data at this stage.

A mention of the grant is published in the European Patent Bulletin once the translations of the claims have been filed and the fee has been paid. 

European Patent Validation

The traditional granted European patent is a "bundle" of individual national patents. Once the mention of the grant is published, the patent has to be validated in each of the designated states within a specific time limit to retain its protective effect and be enforceable against infringers.

Unitary Patent

Alternatively, now that Unitary Patent entered into force (as of 1 June 2023), you can also request Unitary effect instead of in addition to validation.

Why is “instead of “crossed out? Well, the Unitary patent only includes 17 countries now, in 2023. So, you still have to use the traditional validation system if you wish to have a valid patent in the remaining countries, such as Cyprus, Czech Republic, Greece, Hungary, Norway, Romania, Poland, Spain, or Turkey. Switzerland and the United Kingdom will never be part of the Unitary patent either as they are not EU countries.

Once the decision to grant a European patent has been issued, the proprietor can file a "request for unitary effect" at the EPO to obtain a Unitary Patent. The request must be filed no later than within one month of the date of publication of the mention of the grant in the European Patent Bulletin.

After the grant of the patent, opposition proceedings may be initiated by third parties. Moreover, after the grant the patent proprietor himself may initiate revocation or limitation proceedings. 

Refusal

The European Patent Office (EPO) can refuse your application for several reasons: if you have not appointed a representative (although you would be required) or your application does not include at least one claim or an abstract, etc. However, in this article we wanted to mention the refusal of the patent application on the basis that it does not satisfy the substantive patentability requirements.

In this regard, a good news is that an application cannot be refused without a first communication in examination having been sent. Therefore, your application cannot be refused before you had an opportunity to respond to the objections raised and amend the application. After that however, if the objections persist – and there is no pending request for oral proceedings – a refusal can be issued.

Another good news is that according to the "Right to be heard" principle* of the EPO, a refusal can only be issued on grounds that was presented to you before and you had the chance to comment on them.

Appeal

Decisions of the European Patent Office (EPO), like the refusal an application, are open to appeal.

In order to appeal the refusal, you need to:

• file a notice of appeal must be filed within two months of the date of notification of the decision,

• pay the fee for appeal also within two months of the date of notification of the decision, and

• file a written statement describing the grounds of appeal within four months after the date of notification of the decision.

The board of appeal examines whether the appeal is admissible, and, if it is, whether it is allowable. It then rules as to whether it will correct the decision or remit the case to the relevant department for further prosecution.

* This is defined in Art. 113 EPC.
"The decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments."
Read the full legal text here.

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