News

Recent developments in filing European patent applications

18 Mar 2008

Two recent changes in European patent practice will affect anyone who has a current European patent application, or is planning to file a patent application in Europe soon.

First, the London Agreement, which takes effect in May 2008, will reduce the high costs of translating granted European patents.

Second, the European Patent Offices (EPO) has increased its fees, especially for applications with lots of pages and/or lots of claims.

We describe the details of these two changes below, including examples of how each may affect you.

We have developed a fee estimation worksheet to help you estimate the affects of fee changes and will soon make this available on our website. 

In the meantime, please contact us if you would like more information.

I. The London Agreement will reduce the costs of translating granted patents

The London Agreement is the EPO’s first attempt to reduce the costs of translating granted European patents. The Agreement comes into force from 1 May 2008.  

1. What do you currently need to get translated?   
Currently, after a European patent is granted,  the claims must be translated into all three official languages of the EPO (English, German and French) and you have three months to ‘validate’ your patent in national patent offices by filing a translations of the patent application in the local language. 

The EPO (very conservatively) estimates that the average cost of one translation is around €1,800.  For larger specifications, the translation cost may be much higher. 

There are 22 separate languages in the countries covered by European patent applications so the cost of preparing a translation for each can be very expensive. 

2. Which countries have signed the London Agreement?
So far, the following countries have signed up to the London Agreement:

• France*
• Germany*
• Luxembourg*
• Lichtenstein*
• Monaco*
• Switzerland*
• UK*
• Croatia
• Iceland
• Latvia
• Netherlands
• Slovenia.

Denmark and Sweden have signalled they intend to sign thegreement, but Italy and Spain have not yet signed the London Agreement.

3. What needs to be translated under the London Agreement?
Countries having French, English or German as an official language (shown accompanied by asterisks above):

• cannot demand a translation of the English specification into their language
• will require a translation of the claims into French or German, but this will have been prepared during the European patent grant procedure anyway.

Countries NOT having French, English or German as an official language:

• have each chosen one of French, English or German languages as their preferred language (and most have chosen or will choose English)
• will require a translation of the specification into the chosen language when validating the patent
• may (and most probably  will) still request a translation of the claims into their national language.
  We expect the London Agreement to result in reduced validation fees for patent applicants. 

Any European patent having a grant date after 1 May 2008 will be able to benefit from these reduced fees. 

In the event of court proceedings, patentees must provide a translation of the full patent specification into the local language.

4. How do you take advantage of these changes?
If your European application may be granted before 1 May 2008, we can use several strategies to delay grant until after this date.  For more information, please speak to us.

The current signatories of the London agreement are mostly smaller countries, or countries having a home language which is the same as an official language of the EPO, meaning that the claims would have had to be translated into their home language anyway. As a result, the cost savings benefits to a patentee are currently limited.

If the London Agreement proves successful, remaining EPO countries with larger markets (e.g. Italy, Turkey, Spain, Portugal and Greece) may join, making the Agreement even more beneficial for applicants. 

II. EPO fees review

The EPO has significantly changed its fee structures and fees.   The new fees take effect on 1 April 2008 and 1 April 2009.  We discuss these changes under the following headings:

• general fees increase
• excess claim charges
• annuity (maintenance) fees
• designation fees
• excess page fees.

To help show how each of these changes may affect you, we will track the cost implications for two examples through the sections below.

Example 1: a typical large mechanical invention – 30 pages and 30 claims
Example 2: a typical pharmaceutical invention – 100 pages and 60 claims

1. General fees increase
From 1 April 2008, all EPO fees will increase by 5%.
 
2. Excess claim charges
Currently, the application fee allows you to file ten claims.  Each claim over ten claims will cost an extra €45 per claim.

From 1 April 2008, you will get 15 claims as part of your application fee.  Each claim over 15 claims will cost an extra €200 per claim.

From 1 April 2009, a second tier excess of claim fees will be charged on all claims above 50. Each claim over 50 claims will cost an extra €500.

Examples
We show this effect on our examples.

Table 1 – Excess claim fee increases
 

3. Annuity (maintenance) fees
Currently, you must pay annuity (maintenance) fees for European patent applications in the third and subsequent years from the filing date. The fees increase with the age of the application. 

From 1 April 2008 all annuity fees will increase, as shown in Table 2.

Table 2 – Annuity fee increases

European patent applications are usually granted by the sixth year, so you are unlikely to pay the annuity fees shown in the shaded boxes above.

From 1 April 2008, the penalty for late payment of annuity fees will increase from 10% of the unpaid fee to 50% of the unpaid fee.  This makes late payment a significantly costly exercise.

4. Designation fees
The designation fees structure will also change.

Currently, as part of your application fee you must pay €80 for each European state that you want to cover, up to a maximum of seven states (i.e. a maximum cost of €560). Most applicants chose to cover all countries (currently 34) and so pay the maximum fee.

From 1 April 2008, the designation fee per state will increase to €85 (i.e. a maximum cost of €595).

From 1 April 2009, a flat fee of €500 will apply, and all states will be designated automatically (i.e. a maximum cost of €500).

5. Excess page fees
Currently, the size of the specification does not affect the application fee. 

From 1 April 2009, an excess page fee of €12 will apply for each page above 35 pages.  These charges will not apply to sequence listings in patent specifications.

Examples
We show the effect of these fees on our typical examples.

Table 3 – Excess page fees introduced
 

Fees review conclusion
In conclusion, the new EPO fees may discourage the filing of large specifications with many claims.  Presumably, the aim is to reduce the workload on examiners, and to encourage applicants to file divisional applications early.

A table of the fee differences as they relate to the examples given above is set out below:

Table 4 – Summary of fee changes, in addition to application fees
 

As you can see, most of the fee increases start affecting our examples from 1 April 2008.  From the above, you will appreciate that your patent application may be affected by these changes to differing extents, based on the number of claims, the size of the patent specification, and the number of countries to be validated in. 

If you are concerned about any potential problems or excess costs arising from these changes, please feel free to call us to discuss a strategy for your patent application.