When the European Patent Office (EPO) agrees that an application may be granted, a number of steps must be taken for the European patent to come into force. The purpose of this page is to explain these steps and give an idea of the likely time scales and costs. A flow chart is provided on the downloadable pdf file of this page which gives a summary of the procedure for an application in English.
The grant procedure has two basic requirements:
a) the EPO must grant the patent, and
b) the patent must be “validated” in whichever of the designated countries are now required by the applicant.
A more detailed explanation of the steps involved is given below.
Communication under Rule 71(3)
This is a letter from the EPO which indicates that the application is allowable. A copy of the text for the patent proposed by the EPO is attached to the communication, often including amendments proposed by the Examiner. A deadline is set for the following acts:
- approving the text, filing a translation of the claims into French and German and paying the official grant and printing fees; or
- requesting amendment/correction of the text. If the EPO allows the requested amendment/correction, a new communication under Rule 71(3) will be issued (unless this is waived by the applicant, in which case the application proceeds to grant). If the requested amendment/correction is not allowed, the EPO will resume examination proceedings.
This deadline is inextensible. Because of the need to prepare translations of the claims, it is important for us to receive instructions in plenty of time before the deadline.
When we report the communication under Rule 71(3), we will also give you a detailed estimate of the likely cost of proceeding in each of the designated countries. At this stage, you may choose the countries wanted, but a final decision can be left until patent grant. You may choose not to proceed with some countries in order to reduce expense or because a patent is not wanted in them.
Decision to Grant
After a response to the communication under Rule 71(3) approving the text is filed, the EPO will issue another communication, the “Decision to Grant”. This letter informs us that the EPO will now issue the “Certificate of Grant” and publish details of the grant of the patent in the European Bulletin. The Decision to Grant advises us of the date on which this publication will happen: this is the effective date of grant.
Issue of the grant certificate and opposition period
When the certificate of grant of the patent has been issued, it will be sent on to you. There is also an opposition period of nine months from the date of grant in which third parties may file an opposition to your patent. If this were to happen we would inform you immediately.
Validation of the patent in selected designated countries
Within three months of the date of the grant, all necessary action must be taken in selected designated countries in order to give effect to your patent.
Almost all EPC countries require full translations of the specifications to be filed at their Patent Office in one of their national languages. Countries that require translation of the whole (English) specification are:
Note that a Greek translation can also be filed in Cyprus.
Countries that do not require a translation of a specification in English are:
*These countries require only the claims to be translated into their national language.
Please note: Please see our resource sheet on the London Agreement for further information on translation requirements.
Many countries also require a power of attorney signed by the applicant.
Countries that require a power of attorney are:
*Greece requires a notarised power of attorney for the first validation of a European patent in Greece by a proprietor.
Countries that do not require a power of attorney are:
*Our standard agent for Switzerland does not require a power of attorney; if a different is used a power of attorney may be needed.
The European patent is published at grant.
Countries will also publish the translations in their national language.
When validation is complete, the patent will be in force in each of your selected countries. It must then be renewed every year, and we can of course deal with this for you if you wish. We pay renewal fees directly to many patent offices, to minimise cost.
Extension and validation countries
A European patent application can result in patents in some East European states which are not members of the EPC, but are known as the “extension” countries. It is also possible for European patents to have an effect in certain non-European countries (so-called "validation" countries). At grant of the patent, at least a translation of the claims must be filed locally.
The costs for the grant procedure can vary greatly and can also be high.
The expense is not only in translation but also because certain countries require the payment of official fees on validating the patent, while other countries require the payment of fees for the publication of the specification in their national language. Translation costs also vary greatly depending on the number of words and pages in the patent specification and how many translations into different languages are needed.
For some countries, only attorney charges are incurred as no fees are payable and no translations required.
Our estimate of the likely cost will be sent to you with our report of the communication under Rule 71(3).
To produce the estimate, we work out the likely costs of translation, filing, official fees and publication fees in the various countries based on previous charges from foreign attorneys and on the number of words and pages in the approved text.
We use a number of different translators, chosen for their expertise in accurately translating the often highly technical language of patent specifications. Because of the relatively difficult nature of this translation work, clients sometimes find that regular commercial translators can offer cheaper translation rates. However, we do not recommend that translators unfamiliar with patents are used, since an inaccurate translation can have a serious effect on the patent protection. In several countries the translation must be certified by a local patent attorney.
A flowchart showing estimated timescales for a typical European patent application is also available.
This information is simplified and must not be taken as a definitive statement of the law or practice.