Lowest Cost Strategy for European Patents

[jparker1]

Hi-

At the present time, what would be the lowest cost approach to filing in a small number of European countries with English as the application language, say Great Britain and Germany?  Clear options seem to be:

(1) File in each country individually
(2) File via EPO, defer a decision on specific countries until later
(3) File via PCT, defer a decision on specific countries until later.

Suppose one relaxed the language requirement (i.e. file in English, but consider specific translations later) and wanted to file in six or more European countries?

Thanks,

Jim

[UVAgal4]

Well, it depends;  There is now the London Agreement, reducing the need for many, but not all, translations.
Also, the EPO just implemented a flat rate designation fee of 500€ I believe, regardless of how many states you designate.

[patmatt]

Hello jparker,

in case you want to have more than two European countries lateron, you should choose the way of European Patent Application. The official fees are acceptable, the only thing you should take care of is the number of the claims. Only 15 claims are allowed, all following claims cost 200Euro/each. And please remember: Only one independent claim per category.

Let me know, in case you need further information.

Matthias

[syllalaw]

Hi,

In response to your question I would say, opte to file quickly through a national office and extend it to euro-pct. The quickest and cheapest is to do it in France.

If you whish contact me:

Ahmadou SYLLA, Esq. Paris, France
email: syllalaw@aol.com

[UVAgal4]

Hi,

In response to your question I would say, opte to file quickly through a national office and extend it to euro-pct. The quickest and cheapest is to do it in France.

If you whish contact me:

Ahmadou SYLLA, Esq. Paris, France
email: syllalaw@aol.com

There is nothing in this person's post to justify that "the quickest and cheapest is to do it in France" and sounds mainly like they are just trying to get business. I am in France too, but wouldn't say for sure that France is quickest and cheapest, plus there are the translation fees.
And I'm not fishing for business either.

[bartmans]

File via PCT (and later the Euro-PCT route) only makes sense if either:
- you want to file the application also in other countries around the world; and/or
- you want to defer filing costs for another 18 months.

In all other cases, filing directly at the EPO would be the preferred way. This will enable you a patent granting procedure which - in principle - would yield you a European patent that can be validated in more than 30 European countries. During prosecution of the European patent application, however, you only need to pay one annuity fee (i.e. the European annuity fee) in stead of several. After grant you can indeed profit from the London protocol which has minimized translation costs for a number of European countries (to view the countries that take part, see http://www.epo.org/patents/law/legal-texts/london-agreement/status.html).

[JimIvey]

File via PCT (and later the Euro-PCT route) only makes sense if either:
- you want to file the application also in other countries around the world; and/or
- you want to defer filing costs for another 18 months.

I would change the first situation ever so slightly:

- you want to preserve the option to file the application also in other countries around the world;

Regards.

[ME]

I agree with the advice that it is best to file an EPO application if you would like a patent in two or more Europen countires.

The exact strategy that you should take really depends upon how important the patent is to you business and how confident you are that you will get a patent. A nice thing about filing the EPO application first is that the European examiners generally do a good job of searching for prior art, and you will get the search report within one year.

Once you have the search report you would have a good idea about the patentability (at least before the EPO), you could then:
1. decide to abandon the application before spending any more money
2. proceed with prosecution using the application you filed (PCT/EPO or whatever)
3. use the application as a priorty document for a new application (with added material not in the prior art)

As a matter of right you only have two office actions before the EPO. After the first office action, the examiner can pull the plug if the application is not making progress. It is not really possible it have an endless string of RCEs. This is also why the time limit is being placed on divisional applications before the EPO, because people have been using this as a way of keeping applications alive.