Share this article:

Transatlantic Toolkit

Introducing our collection of quick tips and suggestions for patenting across the pond, dedicated to helping US patent attorneys navigate UK and European patents.

Below you’ll find our developing list of tips for EP and UK patent filings and prosecution. These are specifically designed with the considerations of US attorneys in mind, aiming to help inform your high-level strategy decisions and assist you advising your clients.

We want this resource to be as collaborative and useful as possible, so please contact Olivia Crawford and Oliver Poskett with any comments, suggestions, and topics you want addressed, or questions you might have.

If these brief pointers prompt a deeper or client-specific consideration, we would be glad to hear from you directly to provide our input.

This page will be updated regularly, so bookmark it for ease of access and follow us on LinkedIn to see each update as it goes out.

Is your client concerned about the cost of filing an EP application in view of a negative International Search Report?

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.

Is your client concerned about the cost of renewal fees for an EP application, and is primarily interested in the UK market?

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

Is your client concerned about the cost of filing an EP application, and is primarily interested in the UK market?

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

Are you frustrated by the difference between unity requirements in the US and Europe?

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.

Removal of the 10-day notification period

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 ‘exam report’ Communications with the regular 4-month response term that this change will affect are coming up for response from 1 March 2024, so don’t forget that you no longer have the extra 10 days to provide your EP attorney with instructions!

Key contacts

 

 

 

 

 

Olivia Crawford

Partner

UK & European Patent Attorney

 

 

 

 

 

 

Oliver Poskett

Senior Associate

UK & European Patent Attorney

HLK bubble graphic HLK bubble graphic

Make sure you follow us to keep up to date with HLK’s Transatlantic Toolkit.