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[Guest]

Hi ,

I wish to have more info on Patent filings in Europe for a PCT application. Need help.

Is there a different fee if I wish to file only in UK and not in any other European Country?
Will I have to first file for Europe designating all 28 countries and then after the Patent is allowed, Pay issuance fees for UK only , or could I file it in UK directly ?

Thanks,
Anil

[m]

You can file a PCT designating either EPC or UK; if you choose EPC, then on national entry you will have to designate particular EPC states, of which UK is one. The EPC route will be more expensive; though the EPC is a little less strict on certain types of subject matter (e.g. CII's). Which route you choose may be relevant to your other commercial goals. Suggest you seek out someone in your firm who is specialised in EPC/UK filings.

[eric stasik]

Dear Guest,

Designating the EP on a PCT application and then designating the UK on the EP application to ultimately obtain a UK national patent is the without a doubt the slowest and most expensive way of getting from point A to B.

If you know you want a patent in the UK, the cheapest and quickest thing to do is to file a national application in the UK within the Paris Convention priority year. This is a very simple and straightforward process for any chartered patent agent. The costs are not significant if the priority application is written in English.

As regards, m's comment about CII inventions receiving more liberal treatment at the EPO, while this is true for some EPC members, it is probably not an issue for the UK. The UK amended her laws with regard to CII patents reflecting in large part the accepted practice at the EPO. My understanding is that you'll find very little difference in the treatment of applications on CII at the EPO and the UK patent office.

Application fees vary for both the PCT and EP application depending on the number of countries designated - but only up to a point. I believe after designating 10 countries the application fee maxes out, but you'd have to check this. In any event, using the EP or PCT route seems to be an unncessary expense and delay if you know you don't want patents in any other country other than the UK.

Kind Regards,

Eric Stasik

[Ladislao Warcok]

7. Seven countries, not 10. you pay a fee for every country upto 7 then if U pay for 7 you can choose the whole EC.

[JimIvey]

Mr. Stasik is correct that PCT to EPO to UK is slow and expensive.  I'll just add that such is not always a bad thing.  

If you know you want UK and nothing else, go there now and side-step extra steps in the PCT/EPO.  However, if you're not sure whether you want protection elsewhere, the PCT allows you to defer that decision (for a price in terms of both time and money) and the EPO allows you to further hedge your bets with respect to other EU countries (again, for a price).

The cost of bypassing the PCT and/or the EPO is the foreclosing of options.  However, that's not a problem for everybody.

Regards.

[prashant]

Dear All
I had a query as to
1. What is CII ?
secondly
2. when you designate EPC countries in your PCT application and if you have to have to get protection in all the countries in EPC in National phase
What is the procedure ?
and
3. How the entry cost varies depending on the number of contries you chosse?

Awating your reply

Regards
Prashant

[JimIvey]

1. What is CII ?

I believe that's Chapter II (2) of the PCT, also known as International Preliminary Examination (IPE).  You "demand" a substantive examination of your application on the merits at the international phase.  One of the benefits is a postponement of the national phase until 30 months from the priority date rather than 20 months for Chapter I only.

2. when you designate EPC countries in your PCT application and if you have to have to get protection in all the countries in EPC in National phase
What is the procedure ?

It's not clear to me that you've designated the EC as a "designated state" in your PCT application or just all EC countries individually.  If you designated the EC itself, you just need to have an application filed in the EPO claiming the priority of the PCT application.  If you only designated all member countries individually, you might be able to go the same route.  I'm not sure.  You might have to file a national application in each country individually, each application claiming priority of the PCT application.

3. How the entry cost varies depending on the number of contries you chosse?

I assume you're referring to entry into the national phase.  I don't have the answer to that.  Someone more intimately familiar with EPO practice could answer that for you.

Regards.