Is the EPO always the way to go?

Most people know that patents and patent applications are territorial i.e. if you want patent protection in a particular country, then you need a patent application that covers that country. For many countries you have to file a national patent application with the respective national patent office. For some countries, it’s possible to file a regional patent application that covers lots of countries. For example, if you want patent protection in the UK, you can file a UK patent application at the UK Intellectual Property Office or you can file a European patent application that covers the UK and 40 or so more countries.

In this connection, there has long been a perception that if you want patent protection in a few European countries, it’s cheaper, better and simpler to file a European patent application, rather than to file individual patent applications at the local patent offices of each individual desired country. This is not always the case and, as ever, the Devil is in the detail when it comes to deciding which route is better.

A European patent application is nothing to do with the European Union, but is a patent application that covers more than 40 European countries. The European patent application is examined by the European Patent Office to see if a patent should be granted and, if so, a European patent is granted that potentially covers all 40+ countries. However, in order to put the patent into effect in a particular country certain steps have to be undertaken in that country (a process known as “validation”). The requirements differ from country to country but may, for example, include filing a translation of the patent into a local language.

The alternative to filing a European patent application is to file patent applications in each country of interest and to try to persuade each national patent office that you should get a patent. While on the face of it this approach sounds nonsensical, there may be good reasons for not filing a European patent application, and for pursuing applications in each country, as is now explained.

European Patent Application – benefits

• Can obtain a patent in more than 40 countries with one patent application
• Cost-effective for large numbers of countries
• If you want to obtain patent protection in lots of countries, costs are “back-loaded” to the end of the patenting process
• Keeps your options open if you are not sure which countries you want to obtain patent protection in

Sometimes it is not possible to file patent applications at national patent offices and the filing of a European patent application is the only way of obtaining protection. For example, if you have an International patent application that you want to convert into patent applications in different countries, and want to obtain patent protection in Ireland, then you cannot file an Irish patent application at the Irish Patent Office. You would have to file a European patent application which covers Ireland.

European Patent Application – possible downsides

• All your eggs are in one basket; if you fail to obtain patent protection, then you do not get patent protection anywhere
• For a small number of countries, for example, up to three, it may be more cost-effective to file applications at national patent offices
• The European Patent Office is very strict when assessing how changes can be made to patent applications, typically stricter than most national patent offices
• The European Patent Office applies quite a high standard when assessing whether an invention is non-obvious. If you have an invention that is commercially valuable, but marginal from the viewpoint of inventiveness, then you may be better filing at individual national patent offices
• Renewal fees for European patent applications are relatively high
• A European patent may be opposed/attacked centrally in the nine month period after the patent is granted

Double-up?

For really important inventions you may wish to try to get protection via a European patent application and a national patent application. This gives you two chances of obtaining protection. In some countries you may subsequently have to drop the national patent or the designation of that country from the European patent in order to avoid double patenting.

While it will often be more sensible to file a European patent application this will not always be the case. The key thing, as usual, is to involve your patent attorney in the decision making process at an early stage. Let them know of the target countries so that they can provide you with a sensible patenting strategy.