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.