Transatlantic Toolkit

Consider filing a Demand for PCT Chapter II Examination at the EPO in the international phase. This provides applicants an additional bite of the cherry: an opportunity to submit amendments and arguments to the EPO before fully committing to the regional phases.

Further, if the EPO was ISA as well as IPEA, applicants enjoy a significant 75% reduction in the EPO’s examination fee – an effective discount of over $1,500 in Fall 2023.

Consider filing in the UK directly: the UK fees are much lower and kick in later. The following figures are based on exchange rates in Fall 2023:

EPO renewal fees by year

• 3rd year: $570
• 4th year: $710
• 5th year: $1000
  • Total up to year 5: $2,280

UKIPO renewal fees by year

• 3rd year: $0
• 4th year: $0
• 5th year: $85
  • Total up to year 5: $85

Seek advice from a UK/EP patent attorney before filing solely in the UK, particularly for software inventions. Contact us directly for further information.

Notes

• EP Renewal fees: €530 (3rd), €660 (4th), €925 (5th)
• UK Renewal fees (upon grant): £70

Consider filing in the UK directly in view of the much lower official fees [1] for a typical PCT national/regional phase entry in fall 2023:

• EPO: c. $3,600 (if EPO was ISA) to $4,900 (if EPO was not ISA)
• UKIPO: c. $350

Seek advice from a UK/EP patent attorney before filing solely in the UK, particularly for software inventions. Contact us directly for a breakdown of the above costs.

[1] UKIPO – Filing fee: £30 + Search fee: £150 + Exam fee: £100 = £280 ≈ $350

EPO was ISA – Filing fee: €135 + Exam fee: €2,055 + Designation fee: €660 + 3rd year renewal fee: €530 = €3,380 ≈ $3,600

EPO was not ISA – Filing fee: €135 + Search Fee: €1,460 + Exam fee: €1,840 + Designation fee: €660 + 3rd year renewal fee: €530 = €4,625 ≈ $4,900

The EPO considers claims to be unified when all claims recite at least one common feature which is novel and inventive.  Make sure your independent claims meet this requirement!

If in doubt, put the most commercially valuable claim first, as the EPO will use the search fee paid on filing to search this invention (and require additional search fees to search other inventions).

Regardless of whether additional search fees are paid, non-unified claims will have to be amended for unity or deleted, but divisional applications can be filed if desired.

For many Communications issued before 1 November 2023, the time limit for responding was calculated from the 10th day after the date of the Communication to allow for postal delays.

The rule changed on 1 November 2023 so the time limit for responding is calculated directly from the date of the Communication – so no more ‘10 days’. The rule change only applies to Communications issued from 1 November 2023.

So, the first Rule 161/162 or Rule 70/70a Communications with the regular 6-month response term that this change will affect are coming up for response from 1 May 2024, so don’t forget that you no longer have the extra 10 days to provide your EP attorney with instructions!

Here’s a question we’re often asked : “My client only wanted to validate the European patent in the UK and Switzerland, so why does the EP register show it’s valid in Lichtenstein?”

Usually, after grant, the Applicant must choose in which EPC states to validate. This involves meeting the translation and fee requirements for each state.

However, some states have chosen to remove these validation requirements by signing the London Agreement, which aims to make the European patent regime lower cost and more attractive. In these states, validation is automatic and immediate upon grant.

The relevant states are: Belgium, France, Germany, Ireland, Luxembourg, Monaco, Switzerland, Liechtenstein and the United Kingdom.

However, whilst automatically validated in these states, the Applicant still retains control of whether to keep the patent alive in any particular state through selective payment or non-payment of the renewal fees. 

Is your client eager to speed up the prosecution of their patent application before the European patent office (EPO)?

Consider requesting accelerated search and/or examination of the application under the “Programme for Accelerated Prosecution of European Patent Applications” (also known as PACE).

• What is the benefit of requesting PACE? – If requested during the search stage, the EPO will endeavour to issue the search report within six months from the PACE request. If requested during the exam stage, the EPO will endeavour to issue the first/next exam report within three months of the PACE request.
• How can I request PACE – PACE can be requested once during the search stage, and/or once during the exam stage.
• How much does PACE cost? – PACE is a free service offered by the EPO.

To make use of PACE, the EPO expects applicants to reply to communications on time. This means that the EPO will remove an application from PACE if the applicant requests any extension of a time limit.

Notes

The EPO may not allow an applicant to request PACE for all their applications.

PACE requests are hidden from view of the public file.

Effective from 1 April 2024, the EPO is introducing a number of important fee changes.

Whilst these include the usual fee increases – this year by 4% – with the exception of filing, appeal and opposition fees, there’s also some good news that will be surprisingly familiar to our US colleagues…

…the introduction of a 30% reduction in all main fees for applicants deemed micro-entities.

The reduced fees include those for filing, examination, grant and renewal, and are available providing the applicant has filed fewer than 5 applications in the 5 years before the date of filing of the application concerned (or the date of EP regional phase entry for a PCT).

The micro-entity fee reductions are available for:

• microenterprises
• natural persons, and
• non-profit organisations, universities or public research organisations

To benefit, applicants must declare which of the above applies, and this must be at the latest when making the first reduced fee payment.

For our US colleagues, it’s worth considering whether any of your clients qualifying for the USPTO micro-entity status may also qualify for the new EPO equivalent… especially for clients previously put off EP patents due to high fees!

Please get in touch if you’d like us to assess whether your client qualifies for these reduced fees, and for associated cost estimates.

Many US-originating patent applications include the expression “incorporated by reference” when there is a need to consider the content of another document when reading the patent application, without having to literally restate the content of the other document within the patent application.

While this approach is acceptable in the US, the EPO dislike “incorporated by reference” expressions and will require their deletion from the patent application.

Why? In Europe, a patent application must be self-contained, i.e. capable of being understood without reference to another document.

What does this deletion mean for the patent application?   This depends on whether the referenced document contains subject-matter that is “essential” for carrying out the invention.

Subject-matter is considered essential if it is needed for the application to disclose the invention sufficiently clearly and completely enough for the invention to be carried out by a skilled person.

If none of the content of the referenced document is essential, the deletion of “incorporated by reference” should not be problematic.

However, if any of the referenced subject-matter is essential, the essential subject-matter needs to be expressly incorporated into the patent application.

Doesn’t adding this essential subject-matter to the application lead to problems with added matter?

Not necessarily, if the subject-matter is taken word-for-word from the referenced document.  Note that there is very little scope for adapting the wording of the content of the referenced document to the particular features or terminology used in the patent application.

So, it is highly recommended that any essential subject matter is added to the patent application, and linked to the wording or terminology used in the patent application, before it is filed in Europe.

Can the content of a referenced document be used to support amendments to the claims of the patent application?

Only in very limited circumstances, and so, again, it is highly recommended that any essential subject matter is added to the patent application before it is filed in Europe.

What happens if a document filed at the European Patent Office (EPO) contains an error or a mistake?

Well, the rules of the European Patent Convention state that linguistic errors, errors of transcription, and mistakes in any document filed with the EPO may be corrected on request.

However, there is a specific caveat for corrections relating to the description, claims and drawings…

If a correction of an error concerns the description, claims or drawings, then the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction. This requirement can be tricky, as illustrated below:

2 + 2 = 3

Imagine the description includes the above equation. It’s obvious that an error exists here, and many may consider the correction to be obvious as well – but is this actually the case?

2 + 2 1 = 3

2 + 2 = 3 4

As shown above, there is more than one possible correction for the error, and it’s not immediately evident which one was originally intended.

As a result, there’s no guarantee that the error could be corrected before the EPO.

Of course, the previous examples have considered the error in isolation from the rest of the description, which may provide evidence that a particular correction is obvious.

Nevertheless, the example illustrates the bar that applicants must meet when attempting to correct an error in a patent application before the EPO.

Unlike US patent applications, European patent applications do not need to contain any claims in order to be given a filing date.

But be wary – late filing claims can be RISKY.

If an EP application does not contain any claims, the EPO will issue an invitation inviting the applicant to file one or more claims.

The invitation sets a 2 month deadline for the applicant to file their claims.

Delaying the filing of claims can be useful in many scenarios.

For example, an applicant may be eager to obtain a filing date (e.g. in anticipation of an upcoming public disclosure) but may be uncertain of the content and/or number of claims to file.

In such a scenario, the applicant could have originally agreed on a claim set containing 20 claims, but may be unsure whether to cut the number of claims to 15 – to avoid paying excess claims fees.

In such a case the claims could be included as numbered paragraphs in the description whilst the applicant decides which claims to pursue.

However, delaying the filing of claims can be risky.

The subject-matter of any such claims must be directly and unambiguously derivable from the EP application as originally filed – so as not to raise an added subject-matter objection.

Remember, added matter before the EPO is notoriously strict…

What is further processing?

Further processing is the EPO’s standard remedy for failure to meet a deadline during prosecution of a patent application.

For example, if the deadline for responding to an exam report is missed, further processing can be used to effectively extend the deadline, for a price.

The application is deemed withdrawn and the EPO issues a loss of rights communication.

From the moment you miss the deadline, you’re in the further processing period. However, it is the loss of rights communication that sets the two-month deadline for requesting further processing and for responding to the exam report.

Since there is a delay between the application being considered withdrawn and the receipt of the loss of rights communication, the deadline for responding to the exam report is effectively extended by over two months. Hence your attorney won’t know the exact date of the extended deadline until the loss of rights communication is received.

What are the requirements for requesting further processing?

Within two months of the communication of loss of rights:

• Pay the prescribed fee – the fee for further processing can vary depending on what is being remedied; and
• Complete the omitted act(s) – e.g. respond to exam report

Note

• Proceed with caution – not all deadlines and time limits can be remedied by further processing.
• Further processing is available as of right – this means that the Applicant does not need to provide a reason for using further processing.

There is a notable difference between US and European practice when considering how many independent claims to include in your patent application.

USPTO

The USPTO charges excess claims fees for any more than three independent claims. However, as long as the total number of claims is considered “reasonable” there’s no defined upper limit on the number of independent claims that can be included.

As such, a US patent application can include multiple independent claims in the same category (e.g. multiple independent product claims, and/or multiple independent process claims.

EPO

In contrast, the number of independent claims that can be included in a European patent application is limited to one per category (e.g. a single independent product claim, and/or a single independent process claim), with no option to pay for more.

However, there are three specific exceptions in which multiple independent claims in the same category is allowable.

EPO – exceptional circumstances

A European patent application may contain more than one independent claim in the same category only if the subject-matter of the application involves one of the following:

(a) a plurality of interrelated products, (b) different uses of a product or apparatus,

(c) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim.

EPO – examples of exceptional circumstances

(a) Interrelated products is usually interpreted to mean different objects that complement each other or work together – such as a plug and socket, or transmitter and receiver.

(b) Claims directed to further medical uses, when a first medical use is known, could be considered to fall under the exception of different uses of a product or apparatus.

(c) In some cases, a group of chemical compounds could reasonably be argued to involve alternative solutions to a particular problem.

In particular, whilst exceptions (b) and (c) seem generous, in practice they are much more limited!

Regardless, your EP attorney can help you review the claims to navigate these principles before EPO filing.

The inescapable trap is a formidable by-product of two criteria laid out in the European Patent Convention (EPC) which dictate the way amendments can be made. The two criteria are as follows:

1. A European patent application cannot be amended to extend its content beyond the application as filed (Article 123(2) EPC); and
2. A European patent cannot be amended to extend its scope of protection (Article 123(3) EPC)

To explain how one can fall victim to the inescapable trap, consider a basic example.

Claim 1 of an application originally claims a laptop.

During prosecution, Claim 1 is amended to claim a laptop with circular keys.

The application is granted containing amended Claim 1.

The granted patent is opposed.

The opponent successfully argues that there is no basis in the application as filed for a laptop with circular keys.

Criterion A is not met and thus Claim 1 as granted is considered invalid.

To meet Criterion A, the proprietor may try to reverse the amendment such that Claim 1 claims a laptop only (i.e. as originally claimed).

However, such an amendment broadens the scope of protection and thus Criterion B is not met.

Result: The proprietor can neither remove the added-matter nor retain the added-matter.

The proprietor is now caught in the inescapable trap!

The possibility of the inescapable trap highlights the importance of  thoroughly and cautiously checking basis in the application as filed when amending the application.

However, there may be options for avoiding the inescapable trap in our example…

It may be the case that the application as filed only describes a laptop with circular keys in combination with a circular touchpad.

Therefore, Claim 1 could be amended to claim a laptop with circular keys and a circular touchpad.

In this way, the subject-matter of Claim 1 no longer extends beyond the content of the application as filed (satisfying Criterion A); and is a more limited version of Claim 1 as granted (satisfying Criterion B).

So here the proprietor has been able to avoid the inescapable trap, but only by limiting further.

Therefore, if you’re making an amendment during prosecution that may be considered to add matter, it’s useful to consider what basis there is for even further limiting amendments to reduce the claim scope, just in case this may be needed later… and if there’s no basis for further amendments, this could tip the scales on whether or not to risk that particular amendment!

Assessing whether a patent application is novel and inventive/non-obvious requires determining what constitutes the prior art.

However, there’s an important distinction between US and European practice when it comes to the relevance of a particular type of prior art document – pre-filed, but post-published prior art.

To begin with, consider this scenario: Document D1 is not usually considered to be prior art for the patent application A1, since the date of D1’s disclosure occurs after the priority date of A1 (i.e. the “effective filing date” of A1). However, what happens when D1 is also a patent application?

In Europe, if A1 and D1 are both European patent applications, then D1 can be considered to be “novelty-only prior art” for A1, a.k.a. “Article 54(3) EPC prior art”. As such, D1 can be used in the assessment of novelty, but cannot be used to assess inventive step.

Further, even the patent applicant’s own prior applications are citeable against them in this manner.

In the US, the corresponding scenario is interpreted differently. If A1 and D1 are both US patent applications, then D1 is considered “secret prior art” for A1. But crucially, here D1 is used in the assessment of both novelty and obviousness.

However, in the US the applicant’s own prior applications cannot be cited against them as secret prior art.

Hence in summary:

• Whilst the USPTO is able to rely on pre-filed, post-published prior art for the full assessment of both novelty and obviousness, the EPO can only rely on such prior art for the assessment of novelty.
• Self-collision with your own unpublished applications is possible at the EPO, whereas your own secret applications at the USPTO are not citable in this manner.

As can be seen, understanding these distinctions between European and US practices is essential when developing a filing strategy involving both jurisdictions. 

Since 1995, the USPTO has offered the option of filing a provisional application as an initial step for obtaining patent protection.

There are many advantages to filing such a provisional application.

A provisional application provides:

• Simplified filing with a lower initial investment for the Applicant;
• A 12 month period in which an invention’s commercial potential can be assessed before committing to a nonprovisional application; and
• The all-important line in the sand – i.e. an official priority date.

A provisional application can provide an Applicant with a simplified filing process.

This simplicity is exemplified by the lack of requirement to include any claims in the provisional application.

However, this doesn’t mean that claim language should be ignored completely!

As suggested by the name, provisional applications are short-lived, and last for a non-extendible period of 12 months from filing. As such, if an Applicant wishes to pursue further protection, then a corresponding nonprovisional (“regular”) application has to be filed.

At this stage, having claim language in the provisional application can provide significant benefits to the Applicant.

Including claim language in a provisional application can:

• Define the scope of invention – claim-like statements can help to outline the boundaries of the invention to be claimed;
• Provide support for later applications – well-drafted claim-like statements can provide robust support for drafting the claims of nonprovisional applications. This is particularly useful in Europe, where added subject-matter requirements are strict; and
• Prevent gaps in coverage – without taking the time to draft claim-like language, key aspects of the invention may be omitted from, or described unclearly in, the provisional application.

Of course, while there are strong benefits associated with including claim language in a provisional application, it is important to ensure that any such language is drafted in a broad and robust manner.

At HLK, we have built up considerable expertise in the field of provisional application drafting, so please get in touch to find out if a provisional application is the right choice for your patent strategy.

Applicants can benefit from significant cost savings in the UK and the EU by including two or more separate designs in a so-called multiple application.

In an EU design application, any number of designs may be included in a multiple application (from 2025 on there is a limit of 50 design), but they must all be within the same broad Locarno class (of which there are 32). (This requirement is expected to be removed in 2025).

In the UK, a multiple application can include a maximum of 50 designs, but there is no such requirement for the designs to be related in any way.

Once filed, each design undergoes a formalities examination, and once registered, each design is treated separately, with renewal fees falling due in respect of each.

Both UK and EU design laws allow applicants to use disclaimers to control the scope of protection.

Both jurisdictions allow visual disclaimers to be included in the visual representations themselves, typically by using broken lines, shading or faded lines for those parts of the design that are not to be protected.

In the UK, written disclaimers may also be used, either on their own to exclude certain features, colour or texture from protection, or to clarify an accompanying visual disclaimer.

In both UK and EU designs, the representations themselves define the scope of protection conferred. Unlike design patents in the US, there are no written claims defining what the applicant intends to protect.

An ‘Indication of Product’ must be included in each EU and UK design application, to indicate the product to which the design is intended to be applied or in which it is intended to be incorporated.

The Indication of Product does not limit the scope of protection conferred by the design.

In the EU, any description included in a design application does not have any legal effect on the scope of interpretation of the design. However, in the UK, a written disclaimer may be included which does have legal effect, so applicants should bear this in mind when including disclaimers.

US design patent drawings require surface shading to indicate the character and contour of all surfaces. In contrast, such shading is not required in the EU and the UK and, in some cases, removal of such shading may be advisable.

On the one hand, to ensure any claim to priority is validly maintained, we recommend filing an EU or UK design application with drawings identical to those used in the priority application. On the other hand, however, there is a chance that a court in the UK or in a member state of the EU IPO could construe any such surface shading narrowly.

To give applicants the chance to maximise the scope of protection and to maximise the likelihood of a valid priority claim, a multiple application could be filed in the EU and/or the UK, including a set of drawings identical to those in the priority application, and a set of drawings with the surface shading removed.

We’re often asked how many representations or views of an article should be included in a design application.

The strict answer is “at least one”, but we typically include a top view, a bottom view, a left view, a right view, a front view and back view and a perspective view.

In the EU, a maximum of 7 views can be included in the design, with a further 3 “unprotected” views, for reference.

In the UK, a maximum of 12 views can be included, all of which define the protected design.

That said, in some cases, a single view can be sufficient, for example when illustrating a graphical user interface (GUI).

The appearance of GUIs can be effectively protected using registered designs.

In a US design patent, a GUI is typically shown on a display of a device.

There is no requirement in the EU and the UK to show the display or the device on which the GUI is to be displayed.

Like in the US, the EU IPO and the UK IPO allow animated sequences of images or icons to be protected, meaning that dynamic GUIs can be protected as well as static images.