PCT Deadline = Month 31
Why file a European Patent Application?
A US patent does not protect your rights in Europe. In fact, many inventions that are patented in the US are not patented in Europe and thus are freely available and open for use by all in Europe. Taken as a whole, the economy of the European Union is the largest in the world (larger than the US), and about 25% of world GDP. Accordingly, if your invention is worth patenting, it is probably worth patenting in Europe.
Patents in Europe v. European Patents. Strictly speaking, there is not yet a ‘European patent’. Patent rights are national rights: to obtain patent rights in a country, you must file a patent application for that country. However, there are two routes for obtaining patent protection in Europe. Firstly, it is possible to file individual patent applications in different countries (e.g. United Kingdom, Germany, France, Spain etc.) that will be considered by the respective national patent offices, independently of one another (the national route). Alternatively, it is possible to go the European route, which is to file a single patent application, in English, at the European Patent Office (EPO) which covers all the member states of the European Patent Convention (the EPC currently has 38 members, including all the countries of the European Union). A European patent application is examined centrally at the EPO and, if it meets the requirements for patentability, the EPO grants a European patent. A European patent gives the proprietor rights equivalent to the rights conferred by a national patent in each country where the European patent is validated.
Thus, a European patent is not a unitary patent, i.e. it is not a single patent covering all of Europe. Instead, after grant, a European patent gives rise to a “basket” of independent national patents which must be individually validated, maintained and enforced, i.e.maintenance fees are paid to the national patent offices and action against infringers is taken in the national courts.
In December 2012 the European Parliament adopted draft legislation to introduce a single, unitary patent for the European Union which will be renewable and enforceable centrally for the 25 participating states. Requests for unitary patents may be filed – with the EPO – once the legal provisions for both the unitary patent and the unified patents court have entered into force, expected to occur during 2015.
European patent agents. Non-European applicants (individuals or companies) are required to be represented before the EPO by a qualified European Patent Attorney. European Patent Attorneys are technically qualified, with a degree in science or engineering, have undergone training in patent practice, and have passed an examination in all aspects of European patent law. Miltons IP has a qualified European Patent Attorney on its staff and is therefore able to deal with European patent matters in-house , without the need to instruct third party associates.
Small Entities. The EPO does not provide reduced official fees for small entities.
Costs. These may be categorized into filing costs, prosecution costs, and grant/validation costs.
European Patent Office fees are relatively high compared to those of national patent offices. However, it is generally estimated that if you wish to obtain protection in three or more European countries then it is cheaper to file a European application than individual national applications, which would have to be filed and prosecuted independently in the respective national languages. A European application has the advantage of providing a single, central procedure carried out in English (EP applications may also be filed in French and German). Translation costs are deferred until after grant, during the validation procedure. In recent years, post-grant translation requirements have been eased by the London Agreement, going some way to reduce the cost of validation.
The total cost to file a European regional phase of a PCT application is approximately $5000 (details here). This includes our fees, the Examination Fee and Designation Fee which, for a Euro-PCT, fall due on filing the application.
Further costs will be incurred in prosecuting the application at the EPO. Prosecution costs depend upon factors such as the significance of any prior art identified by the EPO and the number and nature of objections raised by the examiner, together with the scope of protection desired by the applicant. Due to these variables it is difficult to forecast total prosecution costs in advance. However, as the issues specific to your application become known – e.g. on receipt of examination reports from the EPO – we will be able to advise on the cost of proceeding. We undertake to advise you in advance of upcoming costs at each stage of prosecution.
Prosecution costs may be substantially reduced for applications that qualify for treatment under a patent prosecution highway (“PPH”) agreement in force with another patent office and where prosecution is successful and quick in the lead jurisdiction. Contact us for more information on whether your application is eligible for PPH treatment, and if so, the costs.
After filing, the EPO conducts a prior art search (even if the application was already searched by the USPTO in the international phase) and issues a search report accompanied by a preliminary opinion on patentability. The search report and search opinion together provide an early indication of the outlook for the European patent application and we will be pleased to advise you on the prospects for grant, strategies for prosecution and associated costs at this stage.
Once the EPO is satisfied that the application (as amended through prosecution) meets the requirements for patenting, it sends the applicant a notice of intention to grant a European patent. In order for the application to proceed to grant, the applicant must, within four (4) months of the notification, pay the Fee for Grant and file translations of the claims into French and German
The grant fee for a European patent is EUR915 for up to 35 pages, plus EUR15 for each page over 35. Translation costs depend on the length of the claims, but since most EP patents have no more than 15 claims – to avoid excess claims fees – the total cost for FR + DE claim translations is typically EUR400. Typical total costs at grant are approximately $2200.00. Validation costs in specific countries are another matter: see below.
European Patent Grant Procedure.
Following grant of the European patent, the applicant/proprietor must decide in which of the 38 member countries he wishes to have the patent take effect. The requirements for validating a European patent are determined by national law and vary from country to country, but generally require filing a translation of the patent specification (or just the claims) into the national language and appointing a local address for service (e.g. a local agent to pay the maintenance fees). In several countries, including the United Kingdom, France, Germany, Switzerland and Ireland, no translation is required to validate an English language European patent. A number of further countries require only the claims to be translated. However, many other countries require a translation of the complete specification which means that translation costs for a comprehensive validation program can be significant. We will be pleased to provide a quote for validating the European patent in your countries of interest following receipt of the notice of intention to grant from the EPO, at which point the text for grant is known and quotations for translation may be obtained.
European Patent Protection Period.
After grant, there is a nine month opposition period during which third parties may oppose the grant of the European patent by filing a statement of opposition at the EPO. If the opposition is admissible, the EPO will advise the applicant and give the proprietor an opportunity to respond to the opponent’s arguments. Both the proprietor and the opponent have the right to request an oral hearing before the EPO. Hence, if the opposition cannot be resolved during written proceedings, the matter is decided at oral proceedings at the EPO.
Deadlines for European Patent Examination.
Europe is an absolute novelty jurisdiction: European patents may only be granted for inventions which have not been disclosed to the public before the filing date (or the priority date, if priority is claimed). There is no grace period in Europe: disclosures by the applicant have the same prior art effect as disclosures by third parties. Hence, the European application must be filed (or must claim priority of an application filed) before any public disclosure of the invention by the applicant. In other respects, deadlines for filing patents in Europe are similar to the deadlines in the United States: 12 months from the priority filing for a direct European filing or 31 months for European regional entry from a PCT (one month longer than for US national entry from a PCT). If you have filed a US provisional patent application and intend to replace it with a US utility application (not a PCT) and claim priority to the provisional, then the deadline for filing the corresponding European patent application is usually the same as the deadline for filing the non-provisional US application: 12 months from the provisional filing. More detailed information on the deadlines for filing a patent application in Europe is found on this page.
Patent Examination Procedure.
European patent applications are published 18 months after the priority date, or filing date if no priority. You can search patent publications from Europe and around the world in the EPO’s database “Espacenet” available for free at the EPO website.
Patent term. European patents are valid for 20 years from the European filing date (which, for a Euro-PCT application is deemed to be the PCT filing date).
Patent “maintenance fees”: renewal fees/annuity fees. Annual renewal fees are payable to the EPO to keep your European application pending. The amount of the renewal fee increases each year.
In Europe, the first renewal is due on the second anniversary of the filing date (which, for a Euro-PCT is deemed to be the PCT filing date). Subsequent renewal fees are due on successive anniversaries of this date. Renewal fees may be paid up to six months after the due date on payment of a 50% surcharge.
If the International filing date for a patent filed in Europe is 11 or 12 months after the priority date, then the deadline to make the first annual European patent maintenance fee payment is 4-5 months after the 31 month regional entry deadline. Care should be taken as this date may occur sooner if the international filing has been made early in the priority year.
After grant, maintenance fees (or ‘patent annuity fees’) are payable to each national patent office where the European patent was validated, in order to keep the patent in force. The amounts of the maintenance fees varies from country to country, but generally increase with each patent year.
Designation of Inventor. For direct European applications, if the applicant is not the inventor, the applicant is required to file a Designation of Inventor naming the inventor(s) and indicating how the applicant derives his rights in the invention from the inventors (e.g. by agreement, as employer, or as successor in title). The applicant has sixteen months from the filing date to file the Designation of Inventor but it is recommended to provide the necessary information on filing the application.
For Euro-PCT applications, the inventors have already been named on the PCT application and it is not necessary to provide this information again.
Provisional patents. There are no provisional patent applications in European patent practice. It is possible to file a patent application in Europe that claims priority to a US provisional. However, in this case the deadline for filing a direct European patent application (not Euro-PCT) is 12 months from US provisional patent application (i.e. when the US utility patent must also be filed). The deadline for filing a European patent that claims priority to a US provisional is not 12 months from the US non-provisional filing.
Design patents – industrial designs. There is a European Community Design registration system, administered entirely separately from the European patent system. It is much more analogous to trademarks. We have extensive experience filing design protection applications in Europe and would be pleased to assist you.