EPO Patent: Nat. patent validation recorded as application?

[RainerWidmann]

Hallo,

I have following question: when the EP patent is issued and enters the validation phase with the national offices - is the validation considered a patent application to the national patent office in PATSTAT?

For a example, if a granted EP Patent is validated in the designated states Germany, Sweden and France: will there also necessarily be patent applications to the national patent office in PATSTAT (for this invention) or could there just be the EP application? Or is there another (legal?) reason why EP applications could necessitate national patent applications?

Looking at the database, many patent families contain applications to multiple national patent offices in Europe and at the same the time an application to the EP. I am a bit confused by that.

I hope this question is clear.

[Geert Boedt]

Hello Rainer,
your question is a very valid one, and it is important for PATSTAT users to understand the concept of the PATSTAT data base with regards to entry into national phases of granted EP applications. So my explanation has to be seen from the point of view of data analysis, and it is not a legal explanation of the procedure.
The main rule is "follow the money". We use national renewal fee payments as a proxy for entry into national phase. So the best way to do proper "counting of patents that have entered into national phases" is via the PRS_CODE = 'PGFP' (post grant fee paid) in the INPADOC data. This data is the so called TLS231_INPADOC_LEGAL_EVENT table (used to be named TLS221_INAPADOC_PRS until PATSTAT 2016b) which comes as PATSTAT Legal. Here is a sample query (using the old table name) that extract the renewal fee payments of EP06807506.

Code: Select all

Select appln_auth+appln_nr+' '+appln_kind ap_number, appln_filing_date, prs_code, l501ep, l518ep,l520ep
      
	from tls201_appln join tls221_inpadoc_prs on tls201_appln.appln_id = tls221_inpadoc_prs.appln_id
	where tls201_appln.appln_auth = 'EP' and appln_nr = '06807506' and prs_code = 'pgfp'
	order by prs_event_seq_nr

The result is this:
ap_number appln_filing_date prs_code l501ep l518ep l520ep
EP06807506 A 24-10-2006 PGFP CZ 21-10-2011 6
EP06807506 A 24-10-2006 PGFP MC 26-10-2011 6
EP06807506 A 24-10-2006 PGFP HU 07-11-2011 6
EP06807506 A 24-10-2006 PGFP LU 26-10-2015 10
EP06807506 A 24-10-2006 PGFP DK 27-10-2015 10
EP06807506 A 24-10-2006 PGFP GB 19-10-2015 10
EP06807506 A 24-10-2006 PGFP IE 19-10-2015 10
EP06807506 A 24-10-2006 PGFP DE 14-10-2015 10
EP06807506 A 24-10-2006 PGFP IT 14-10-2015 10
EP06807506 A 24-10-2006 PGFP CH 07-10-2015 10
EP06807506 A 24-10-2006 PGFP ES 26-10-2015 10
EP06807506 A 24-10-2006 PGFP SE 14-10-2015 10
EP06807506 A 24-10-2006 PGFP BE 29-10-2015 10
EP06807506 A 24-10-2006 PGFP FR 12-10-2015 10
EP06807506 A 24-10-2006 PGFP NL 14-10-2015 10

You can see that the national patent authorities where renewal fees were paid, when they were paid, and for which renewal year. In this case we can assume that the patent is not valid anymore in CZ, MC and HU because the latest records we have for renewal fee payments are from 2011 for renewal year 6. The other countries are already up to 10. Similar to the above, you can adapt the query to, for example, retrieve patents for which a renewal fee has been paid last year for a specific country. Or you could retrieve patents that have entered renewal year 20 and might be up for and "end of life" - if no SPCs are registered.

On your remark about the patent families and applications (+ publications) of national applications. Some countries (re) publish the granted EP applications - for example when claims are translated- but many countries do not. Therefore; only looking at the family members in PATSTAT is NOT a good approach to know the full geographical coverage of the protection. It is merely an indication. Similar considerations have to be taken into account for the national entries of an international (PCT) applications.
The attached document gives an overview of the EP member states that re-publish the application,and what codes are used to identify those publications (mostly T...). You can also see that the "Post-grant" column is the only one that covers all members states.

EP member states_entry_link_2019_new_content.pdf

(13.11 KiB) Downloaded 79 times

[RainerWidmann]

Thank you for your answer, this is very helpful.So this means that when an EPO patent is validated in the UK and in Austria, only a patent application to the Austrian PO will necessarily appear in the same patent family, correct ? (since Austria is among the countries that republish according to the pdf - thanks!)

You say that

"Some countries (re) publish the granted EP applications"

The way that these republished applications appear in PATSTAT is as entries in table "tls201_appln" with the respective national patent office as application authority ("appln_auth"), right?

I am sorry if these questions are redundant, I want to make absolutely sure that I am not misunderstanding anything here.

[Geert Boedt]

Hello Rainer,
in principle, when a patent belongs to the same simple patent family it has the same priority picture.
One could therefore assume that no granted UK patent should appear in a family with a granted EP application, where a validation occured for the UK (or a renewal fee was paid). A simple query however shows that such cases exist (in this case I looked at GB):

Code: Select all

SELECT ep.[appln_auth]
      ,ep.[appln_nr]
      ,ep.[appln_kind]
      ,ep.[appln_filing_date]
      ,ep.[appln_filing_year]
      ,ep.[appln_nr_epodoc]
      ,ep.[granted]
	  ,ep.[docdb_family_id]
	  ,GB_family.[appln_auth]
      ,GB_family.[appln_nr]
      ,GB_family.[appln_kind]
      ,GB_family.[appln_filing_date]
      ,GB_family.[appln_filing_year]
      ,GB_family.[appln_nr]
      ,GB_family.[appln_nr_original]
	  ,GB_family.[docdb_family_id]
	  FROM tls201_appln EP
	  join tls201_appln GB_family on EP.docdb_family_id = GB_family.docdb_family_id and GB_family.appln_auth = 'GB' and GB_family.appln_kind = 'A'
	  where EP.appln_auth = 'EP' and EP.granted = 'Y' and GB_family.granted = 'Y'
	  and ep.appln_id  in (select distinct appln_id FROM tls231_inpadoc_legal_event where tls231_inpadoc_legal_event.event_code = 'pgfp' and fee_country = 'GB')

I contacted our counterparts at the UK patent office and here is the answer:
"Some applicants choose to file identical patents (GB and EP) and take them all the way to grant in both offices. Probably so that one of the offices will grant one. Or it could be a timeliness issue. If both patents are granted and they are both still identical, then in theory the GB will be revoked if it is a) the same invention and b) the period of opposition to the EP has passed and c) the applicant doesn’t amend the granted GB patent. (This is covered under section 73(2) and 73(3) of the Patents Act )

If the applicant amended the GB patent to have different claims then they may both still be valid and in force. There is an automated caveat system working which checks for these cases happening and ensures they are dealt with properly though obviously it depends on when either the GB has been granted or the EP has been granted and have passed their respective opposition periods – plus a bit of time for the UK examiner to revoke the GB if necessary. In PATSTAT, it shows as a GB B - a granted patent !

Most applicants may choose to initially file patents with the same claims for convenience but when granted, the claims on family members in the different jurisdictions may be completely different! "

So the EP and GB application can have different claims (I assume both covered in the priority, because that brings them in the same family), and therefore co-exist.