EUROPEAN / EURO-PCT PATENTS

When filing a European patent application, typically either claiming priority from a domestic patent application, such as a UK or USA patent application, or when converting from an International PCT patent application, there are a number of ways to reduce costs.

The European Patent Office (EPO) charges significant extra fees for each claim of your patent application in excess of 15. Therefore, in effect, the first 15 claims in a European patent application are free of charge, but the following claims from the 16th onwards do incur heavy fees. Therefore, it is in the applicant’s interest to consider slimming their claims down when filing their European patent application.

In particular, the official fee at present for each claim from 16 to 50 is currently 245 Euros, and for each claim from 51 onwards currently incurs an official fee of 610 Euros. In coming years, these fees are unlikely to reduce and if anything will probably only get higher.

It should be remembered that, for a European patent application, typically only one independent apparatus claim, one independent method claim, and one independent product claim will be allowable. Often, US patent applications in particular, will include multiple independent apparatus claims. Therefore, when filing or submitting a European patent application, it is generally prudent to consider reducing the number of independent claims in the respective categories. Again, this should help to reduce the official filing fees.

The European Patent Office also charges for each page of the specification in excess of the first 35 pages. The specification in this case includes the description, claims, abstract and drawings. Although it is often difficult to reduce the number of pages, if the margins can be reduced, the line spacing between lines of written text reduced to 1.5, and typically the font size reduced to Times New Roman 11 point, this is generally acceptable and may result in the number of pages being reduced somewhat.

Although the saving is not a great as with the reduction in the number claims, there is currently a 15 Euro official fee for every page in excess of the first 35 pages of the specification. Again, although this fee remains static for the time being, it is unlikely that it will ever go down and it is more probable that it will only ever increase. Therefore, when drafting or preparing the original patent filing, this can be taken into account.

To somewhat reduce ongoing costs during prosecution of a European patent application, some formalities can be taken care of when filing the patent application. In particular, the European Patent Office will require that each feature or element mentioned in the claims and shown in the drawings includes its respective reference numeral enclosed by brackets. By taking account of this and modifying or submitting amended claims when filing, this particular formalities objection can be avoided.

Although of not particular benefit in terms of saving costs, it should also be noted that the abstract of a European patent application should include reference numbers identifying the features of the drawings. And these reference numbers should also be in brackets.

Furthermore, European patent practice provides for the use of multiple dependent claims, therefore if filing from an originating US patent application, for example, there is no reason not to modify the claims so that the dependent claims utilize multiple dependencies if appropriate.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

European patents are granted for inventions that are new, involve an inventive step and are susceptible of industrial application. You must therefore be certain to keep your invention confidential until a patent application is filed.

Albright IP will prepare a draft patent specification for your approval based on your disclosure to us. Once you have approved the specification, a patent application is filed. The application will include a description, claims, drawings and an abstract.

As with other patent applications, a European patent application can claim the priority benefit of a patent application filed up to 12 months earlier. In other words, a European patent application can be back dated to the filing date of an earlier patent, if filed within 12 months of the earlier patent.

We also have to provide the European Patent Office with information regarding your entitlement to the invention and the states which you would like to designate. Please note that this information can be provided after filing, and we will keep you informed of the requirements.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Following filing, the European Patent Office carry out a search of published patent specifications and some other materials, if deemed relevant, and issue a Search Report usually within 4 months of the application date.

A Written Opinion is typically also provided by the European Patent Office Examiner, and this can form the basis of a first examination report in due course.

Once received, we will forward the Search Report to you. If you would like more detailed analysis as to the relevancy, then we are happy to provide this on receipt of your instructions.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

After 18 months from the date of filing, or from the priority date if priority is claimed, your application is published, together with a copy of the search report (if established). Once a European patent application has been published, files relating to it are available for public inspection and bibliographic data is available to the public in the European Patent Register.

If the European Patent application is direct filed (i.e. not from a PCT), then once the Search Report publishes, we have six months to request examination and to pay the examination fee and the designation fee, designating the countries covered by the European Patent Convention (EPC).

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Examination must be requested and the official fees paid within 6 months of publication of the search report. Payment of a single designation fee allows you to designate all European patent member states.

A first Examination report can take one or more years to issue. Once received, we are typically allowed four months to respond. We are happy to provide as much analysis and guidance as required, or to discuss matters with a meeting at our offices if necessary.

We enter into a written dialogue with the European Patent Office and try to resolve any objections to the application made in the Examination Report. Failure to resolve objections may result in the application being refused.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Once the European Patent Office is satisfied that any objections raised have been overcome, we are informed that a European Patent will be granted. We are then required to file translations of the claims into French and German, and to pay the grant and printing fees within a short time limit. The application is granted and published once these requirements have been met, or refused if these requirements are not met.

Albright IP will handle the translations for you. It is important that good quality and accurate translations into French and German are obtained.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Following grant, there is a short period to ‘validate’ your European patent in the desired European Patent member states, which includes the majority of the EU (European Union).

Validation brings the granted European patent into force in that member state.

A translation of the claims or a translation of the whole European patent into the national language of the member state may be required, as stipulated by the London Agreement. We have contacts with cost-effective associates in all of the EPO member states, allowing us to keep the translation costs (if required) down during the validation process following grant of your European patent.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

For up to 9 months from the date of grant, the granted European patent may be opposed at the European Patent Office by any third party.

It is possible to defend against opposition, and we can advise you on a case by case basis.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Renewal fees are payable annually from the end of the second year after filing of your European patent application to keep the application pending.

If the European patent application has been filed via the PCT route, then the PCT application counts as the European filing. As such, if the PCT application is more than two years old at the time of European regional phase entry, the first renewal fee will be payable.

Once the European patent application is granted, renewal fees then become payable in each of the states where the patent has been validated.

Albright IP can cost-effectively pay any renewal fee to the European Patent Office or in any European Patent member state. We can also undertake payment of renewal fees in most countries around the world. Please contact us for further details.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

The European Patent Convention (EPC) and Implementing Regulations (click here)