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European patent prosecution

European patent application

The European patent system is a procedure by which a single patent application my be filed at the European Patent Office under the European Patent Convention (“EPC”) to obtain patents in a number of European countries.

European Patent may be filed through our firm directly to the European Patent Office in Munich or at the Czech Patent Office in Prague. On completion of the central grant procedure the patent has to be validated in the individual designated countries by submitting translations if necessary.

Within nine months as from the grant a European patent may be opposed centrally at the European Patent Office, later only in the individual designated countries. The maximum period of protection is 20 (+5) years; maintenance in the individual countries is realized separately.

A European patent application with effects for the Czech Republic (thereinafter “European patent application”), which has been accorded a date of filing shall have the same effect in the Czech Republic as an invention application filed before national Office on the same date. If the European patent application enjoys a priority right from a date preceding the date of filing the European patent application, the earlier date shall apply for according the effects of the application. If the European patent application was withdrawn or if it is considered to be withdrawn, it shall have the same effects as the termination of the procedure on the invention application under national regulation. If the European patent application was rejected, it shall have the same effects as the rejection of the invention application under national regulation.

The reestablishment of rights by the European Patent Office to the applicant of the European patent application, or to the proprietor of the European patent with effects for the Czech Republic (thereinafter “European patent”) shall also apply in the Czech Republic.

European patent validation – Application extension and validation

European patent – application and filing Czech translation of European patent application claims as published, publication of the European Patent application claims

Office allows filing claim(s) translation before granting, after filing date of European Patent. If the EP application is refused, it is still possible to file a utility model application in the Czech Republic.

If the European patent application has been published by the European Patent Office, the applicant has presented the translation of patent claims to the Czech language and paid the administrative fee for making the translation available under the special rules, the Office makes the translation available to the public and announces this fact in the Bulletin. The applicant can then claim a reasonable compensation, if the patent, granted by the European Patent Office has effects in the Czech Republic.

The content of the European patent application, determined by the wording of the European patent in the language, in which the European patent application has been proceeded before the European Patent Office, shall be decisive for the interpretation of the scope of protection conferred by the European patent application; if the protection conferred by the European patent is larger than the protection conferred by the published European patent application, the protection shall only be granted in the scope, which is conferred both by the published European patent application and the granted European patent. If the translation of patent claims does not comply with the wording of the claims in the language of proceedings, the protection conferred by the European patent application can only be claimed in the scope, which is obvious from its translation to the Czech language.

If the applicant files with the Office the corrected translation of patent claims to the Czech language, the corrected translation shall have effect instead of the original translation since the day of the mention of its publication in the Bulletin; the applicant shall pay the administrative fee for the publication according to special regulativ. The rights of the third persons, which in good faith have used or have made serious and effective preparations for using the subject-matter of the European patent application which according to the translation presented by the applicant was not covered by its scope, are not affected by the delivery of the new translation.

Validation European Patent in the Czech Republic requires translation of the publication of the European Patent and filing in respective Industrial Property Office.

To allow cost reduction and most effective uniform translation, European or International Patent Applications can be extended and validated in the Czech Republic and Slovak Republic by our firm in a single action as well as in this case is issued a single debit note with both Validations Documents and Receipt.

Effects of European patent

The patent granted by the European Patent Office shall have the same effects, as the patent granted in accordance with national regulations.

The European patent shall have the effects in the Czech Republic as from the date, when the grant of the European patent was announced in the European Patent Bulletin; the proprietor of the patent shall be obliged to submit to the Office the translation of the patent specification to the Czech language within 3 months since this date, and to pay the administrative fee for the publication according to special legal regulation. In the same time, the proprietor of the patent shall be obliged to submit to the Office the address in the Czech Republic, where the official notifications concerning his patent are to be sent. The Office shall announce the grant of the European patent in the Bulletin and publish the translation of the European patent specification. If the translation of the European patent specification to the Czech language is not submitted within the period of 3 months, the proprietor of the European patent may submit it in the additional time limit of 3 months, provided that he will pay the administrative fee according to the special regulation. If the translation of the European patent specification to the Czech language is not submitted even within the time limit, the European patent shall be considered in the Czech Republic as null and void from the outset.

After the announcement of the grant of the European patent in the European Patent Bulletin, the Office shall enter the European patent to the Czech Register of European patents with the data recorded in the European Patent Register.

Extent of protection from the European patent

The text of the European patent in the language of the proceedings before the European Patent Office shall be decisive for the determination of the extent of protection conferred by the European patent; nevertheless, if the extent of protection conferred by the translation of the patent specification, submitted to the Office, is narrower than in the language of proceedings, third parties can refer to this translation.

The proprietor of a European patent is entitled to submit to the Office the corrected translation of the European patent specification to the Czech language.

The corrected translation shall have effects instead of the original translation as from the publication of the corrected translation by the Office; the proprietor of the European patent shall pay the fee for the publication according to special regulations. The rights of third persons, which on the territory of the Czech Republic in good faith have used or have realised serious and effective preparations to use the subject-matter, which pursuant to the translation valid in the period before the publication of the corrected translation by the Office was not covered by the extent of this European patent, are not affected by the delivery of the new translation.

Conversion of the European patent application into a national application

The Office shall, at the request of the applicant of the European patent application, filed according to the the European Patent Convention, start the procedure with the application as with respect to the national application.

If the Office receives the request Conversion of the European patent application into a national application, it shall invite the applicant to submit the Czech translation of the European patent application in three copies within a period of three months and to pay the filing fee.

If the applicant has met the conditions and the Office has received the request for conversion of the European patent application within a period of 20 months from the date of priority, the Office shall accord to the national application the right of priority deriving from the European patent application as filed. The National Office shall, at the request of the applicant of the European patent application, proceed the European patent application as the national application of a utility model in accordance with special regulations.

Prohibition of the simultaneous protection

If the national patent is granted to the invention, to which the European patent has been granted with the same right of priority to the same proprietor of the patent or his successor in title, the national patent shall cease to have effect to the extent that it is identical with the European patent, from the date, on which the period for filing the notice of opposition to the European patent expires without such notice being filed, or the date of entry into force of the decision, by which the European patent has been maintained in the opposition proceedings.

The national patent shall not have effects to the extent that it is identical with the European patent, if it was granted after the expiry of the period for filing the notice of opposition to the European patent without such notice being filed, or after the date of entry into force of the decision, by which the European patent has been maintained in the opposition proceedings.

Revocation of the European patent

If the European Patent Office revokes the European patent or maintains it in the amended form, the decision shall have effects in the Czech Republic.

The National Office shall announce in the Bulletin the revocation of the European patent or its maintaining in the amended form. If the European patent is maintained in the amended text in the opposition proceedings by the European Patent Office, its proprietor shall be obliged to submit to the Office the translation of the amended text of the patent specification to the Czech language and to pay the publication feewithin 3 months from the announcement of this amendment in the European Patent Bulletin. In the Bulletin, the Office shall announce the maintaining of the European patent in the amended text and shall publish the translation of the amended text of the patent specification.

If the Czech translation of the amended text of the European patent specification is not submitted by the time limit according to the national regulations, the European patent shall be considered in the Czech Republic as null and void from the outset.

If the time limit laid down by the European Patent Convention for filing the notice of opposition expires without such notice being filed, or if the European patent is not revoked during the opposition proceedings, the European patent can be revoked by the Office; the Office shall suspend the revocation procedure with regard to the European patent, if the opposition procedure concerning the same matter is pending before the European Patent Office. If the European patent was not revoked in the opposition procedure, the Office shall upon request continue in the revocation procedure.

In the revocation proceedings, the text of the European patent in the language of the proceedings shall be authentic.

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Czech national patent prosecution

Full examination of patent application

The Office shall carry out a full examination of the invention application to ensure that it meets the conditions for granting a patent laid down by regulations. The full examination of an invention application shall be carried out by the Office at the request of the applicant or of another person or may be carried out ex officio.

The request for full examination shall be filed within 36 months as from the filing date of the invention application and may not be withdrawn. The person filing the request shall be required, on submitting the request, to pay an administrative fee in accordance with the relevant statutory provisions.The Office shall carry out the full examination immediately after the request has been filed. Where no request for full examination of an invention application has been duly filed or where the Office has not carried out an ex officio examination, the Office shall terminate the procedure concerning the application.

If the conditions for granting a patent have not been met, the Office shall reject the invention application. The applicant shall be given the possibility of submitting observations on the documents on the basis of which the decision on the application is to be taken before rejection. If the applicant does not remedy a defect constituting a bar to the granting of a patent within the given time limit, the Office shall terminate the procedure concerning the application. The attention of the applicant shall be drawn to such consequence of failure to comply when the time limit is stipulated.

If the subject-matter of the invention application satisfies the stipulated conditions and if the applicant has paid the fee laid down in the relevant statutory provisions, the Office shall grant a patent to the applicant who shall thereupon become the proprietor of the patent. The Office shall issue to the proprietor of the patent letters patent in which the name of the inventor shall be mentioned, the description of the invention and the claims shall form an integral part of the letters patent, a notice of the grant of the patent shall be published in the Official Bulletin. If more than one invention application relating to the same subject-matter is filed, only one patent can be granted.

If the full examination of the application for an invention was initiated at the request of a person other than the applicant, or if it was initiated ex officio, the Office shall inform the applicant of this fact. If several persons independently of each other request a full examination of the application for an invention the Office shall initiate the full examination on the basis of the request which arrived first. The Office shall inform persons who filed such requests later of this fact.


Excluded Applications for an Invention

If the Office ascertains that the application for an invention does not comply with the requirements of the Law, it shall invite the applicant to remedy this defect within a set time

limit. Excluded applications for an invention possess the priority right of the original application if the applicant files them within 3 months after remedying the defect from the original application. The applicant may also divide the application for an invention up to the date of grant of patent, in his own initiative. If the application is excluded or divided after initiation of the full examination in accordance with the Law, the excluded application shall be deemed to be an application for which a request was filed for full examination. In the case of an excluded application, the applicant shall be obliged to pay administrative fees corresponding to the state of procedure on the original application at the time of its exclusion.

Patent application

The patent granting procedure shall begin with the filing with the Office of an invention application.

An application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. Where a group of inventions is claimed in one and the same patent application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression „special technical features“ shall mean those features, which define a contribution, which each of the claimed inventions considered as a whole makes the prior art.

The invention must be disclosed in the invention application in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Where the invention concerns an industrial microorganism for the purposes of production, the microorganism must be kept in a public collection as from the date on which the applicant’s priority right begins.

Where there is a doubt, the Office may invite the applicant to provide evidence of the applicability of the invention by producing the subject-matter of the application or in some other appropriate manner. If the applicant is unable to furnish such evidence, the subject-matter of the application shall be deemed not to have applicability.

The priority right of the applicant shall begin with the filing of the application.

The priority right under the Paris Convention must already be claimed by the applicant in his application if invited to do so by the Office, the applicant must furnish evidence of his right within the stipulated time limit, otherwise the priority right shall not be taken into consideration.

The priority right can be claimed, if the invention application has been filed in the state or for the state, which is party to the Paris Convention or a member of the World Trade Organization. If the state, where the first filing of the invention application is made, is neither a party of the Paris Convention, nor a member of the World Trade Organisation, the priority right can only be granted under condition of the reciprocity.

Preliminary examination of the invention application

All the invention applications shall be subject to a preliminary examination carried out by the Office in order to find whether the application contains no element that is obviously contrary to the provisions.

The Office shall reject the invention application if it contains an element contrary to the provisions. The applicant shall be given an opportunity to make observations on the documents on the basis of which the decision has been taken, prior to rejection. If an invention application contains an element that constitutes a bar to its publication or if the applicant has not paid the corresponding administrative fee, the Office shall invite the applicant to submit his observations and to remedy any deficiencies within the set up time limit. If the applicant does not remedy the deficiencies in the invention application constituting a bar to its publication or does not pay the corresponding administrative fee within the stipulated time limit, the Office shall terminate the procedure. The attention of the applicant shall be drawn to such consequence.

The Office shall publish an invention application on expiry of a period of 18 months as from the date on which the priority right begins and shall announce the publication in the Official Bulletin.

An invention application may be published before expiry of the time limit laid down in national regulations at the request submitted by the applicant within 12 months from the date on which the priority right begins and on payment of the administrative fee laid down in the relevant regulations. The Office shall publish an invention application before expiry of the period 1 if a patent has already been granted for the invention. However, if the proprietor of the patent does not give his consent, the Office shall not publish the application before expiry of 12 months as from the date on which the priority right begins.

Together with the invention application, the Office may publish a report on the state of the art (search report) relating to an invention claimed in the application.


Observation of the third party

Following publication of an invention application, any person may submit observations on the patentability of the subject-matter; the Office shall take such observations into consideration when carrying out the full examination of the application. Persons who have submitted observations shall not become party to the procedure with respect to the application. However, the applicant shall be informed of any observations submitted.

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Overview on Patent Prosecution

Czech, European and International Patent Prosecution

Preparation and prosecution of patent applications, both in the EU, Czech Republic and abroad, is the basis for the firm’s practice at its founding, and has been significant in its client services ever since.

We act for clients before the Czech and European Patent Offices in all matters relating to patents. We manage and prosecute international patent programmes both by direct national and European applications and by international applications via the Patent Cooperation Treaty PCT. We advise on the most cost effective and appropriate filing strategy in each case.

Please choose from the list below to continue reading.

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Biotechnological inventions

PROTECTION OF BIOTECHNOLOGICAL INVENTIONS

  • – biological material means any material containing genetic information and capable of reproducing itself or being reproduced in a biological system,
  • – microbiological process means any process involving or performed upon or resulting in microbiological material,
  • – essentially biological process for the production of plants or animals means such a process, which consists entirely of natural phenomena such as crossing or selection.


Patentable biotechnological inventions

Biotechnological inventions are patentable, if they concern

  • – biological material, which is isolated from its natural environment or produced by means of a technical process, even if it previously occurred in nature,

  • – plants or animals, if the technical feasibility of the invention is not confined to a particular plant or animal variety, or

  • – microbiological or other technical process and a product, other than a plant or animal variety, obtained by this way.

Exclusions of patentability

Patents shall be not granted to

  • -inventions, whose commercial exploitation would be contrary to public policy or to principles of morality, namely to processes for cloning human beings, processes for modifying the germ line genetic identity of human beings, processes of using human embryos for industrial or commercial purposes or processes for modifying the genetic identity of animals, which are likely to cause them suffering without any substantial medical benefit to man or animal, and also to animals resulting from such processes; however, the contradiction to public policy or to principles of morality shall not be deduced merely from the fact that the exploitation of the invention is prohibited by legal regulation,
  • -human body at various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene; it does not apply to an element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, even if the structure of that element is identical to that of a natural element, and plant and animal varieties or essential biological processes for the production of plants or animals.

Special provisions on the application of biotechnological invention

Where an invention involves the use of or concerns biological material which is not available to the public and which cannot be described in a patent application in such a manner as to enable the invention to be reproduced by a person skilled in the art, the description shall be considered inadequate unless:

  • – the biological material has been deposited no later than the date, from which the right of priority belongs to the applicant, with the recognised depositary institution, which has acquired this status by virtue of Article 7 of the Budapest Treaty of 28 April 1977 on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, (hereinafter referred to as the “Budapest Treaty”),
  • – the application of invention as filed contains such relevant information as is available to the applicant on the characteristics of the biological material deposited, and
  • – the patent application states the name of the depository institution and the accession number of the sample.

Access to the deposited biological material shall be provided through the supply of a sample:

  • -between the first publication of the application and the granting of the patent, to anyone requesting it (hereinafter referred to as the “petitioner”) or, if the applicant so request, only to an independent expert, or
  • -after the patent has been granted, and notwithstanding cancellation of the patent, to anyone requesting it.

The applicant is entitled to limit access to the deposit material for 20 years from the date on which the patent application was filed to anybody, except an independent expert, even in case, where the application is refused or withdrawn; in that case. The applicant shall notify the limitation of access to the deposit biological material, to the Industrial Property Office (hereinafter referred to as the “Office”) at the latest on the date, on which the preparations for publishing the patent application have been completed. The Office will publish such a limitation of access to the deposit biological material together with the invention application in the Bulletin of the Industrial Property Office. If the biological material deposited ceases to be available from the recognised depository institution, a new deposit of the material shall be permitted on the same terms as those laid down in the Budapest Treaty.

Any new deposit shall be accompanied by a statement signed by the depositor and certifying that the newly deposit biological material is the same as that originally deposited. If the application concerns an invention of the sequence or partial sequence of a gene, their industrial applicability must be made obvious in the patent application.

Scope of protection

The protection conferred by a patent on a biological material possessing specific characteristics as a result of the invention shall extend to any biological material derived from that biological material through propagation or multiplication in an identical or divergent form and possessing those same characteristics.

The protection conferred by a patent on a process that enables a biological material to be produced possessing specific characteristics as a result of the invention shall extend to biological material directly obtained through this process and to any other biological material derived from the directly obtained biological material through propagation or multiplication in an identical or divergent form and possessing those same characteristics.

The protection conferred by a patent on a product containing or consisting of genetic information shall extend to all material, in which the product is incorporated or in which the genetic information is contained and performs its function, except the human body at the various stages of its formation or development.

Limitation of rights of patent holder

The person, who has obtained the plant propagating material being subject of the patent from its holder or with his consent, is authorised to use for reproduction during his agricultural activity except commercial exploitation, also the product of his harvest.

The person, who has obtained the animal reproductive material being subject of the patent from its holder or with his consent, is authorised to use this material during his agricultural activity except commercial exploitation; this includes making the animal or other animal reproductive material available.

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Term of utility model protection

The validity of utility model protection shall be four years as from the filing date of the application or the filing date of an earlier patent application in respect of the same subject matter.

At the request of the owner of the utility model the Office shall extend the term of validity of the utility model registration for further two three-year periods. Extension of the term of validity of the utility model may be applied for at the earliest during the final year of the validity. If the utility model is registered after expiration of the time limit, the Office shall extend the term of validity of the utility model without a request from the owner of the utility model.

Utility model shall lapse:

  • – on expiry of its term of validity;
  • – on relinquishment by the owner of the utility model; in such case, protection shall terminate as from the date on which the Office receives a written declaration to such effect by the owner of the utility model.

Cancellation of Utility Model

At the request of any person, the Office shall cancel the registration of a utility model if:

  • -the subject matter of the utility model is already protected by a patent with effects on the territory of the Czech Republic or utility model enjoying earlier priority;
  • -the subject matter of the utility model extends beyond the content of the application as filed.

The effect of cancellation of the registration of a utility model shall be as if the utility model had not been recorded in the Register. If the grounds for the cancellation only relate to the part of the utility model, the utility model shall be cancelled partially. Cancellation of a utility model may also be carried out even after lapse of the utility model if the person filing the request can prove a legal interest.