Part 3: Practice at the EPO vs elsewhere

Posted on July 05, 2024

In the third newsletter of this series, Simon Haslam considers various aspects of EPO patent law that may be peculiar to EPO practice.

Most non-European attorneys will be aware that a European patent has to be validated, or put into force, in those countries in which the patentee wishes to have patent protection. The requirements in each country differ; in certain countries (such as France, Germany and the UK), it is only necessary to pay annuities/renewal fees. In other countries, it is necessary to file a translation of one or more parts of the patent specification (such as the claims and possibly the description). Validation can therefore incur significant charges, particularly if a patentee wishes to validate in lots of countries, and if a patent specification is long, in which case translations could incur significant charges. The Unitary Patent has, of course, reduces validation charges to some extent.

Divisional applications
As in many jurisdictions, divisional applications can be filed at the EPO, so long as the parent application is pending. One surprising aspect of EPO divisional practice is that “back” renewal fees are payable on a divisional application shortly after the divisional application as filed. For example, if a divisional application is lodged in February 2024 from a parent application that has a filing date of January 2010, then “back” renewal fees for Years 3 to 15 will be due shortly after filing. This amounts to €18,735, based on 2024 official fees.

General prosecution
Unlike say the US system, the EPO system is not a pay-and-play system. The EPO will likely issue two or three examination reports before issuing a summons to a hearing (known as “oral proceedings”), with a view to refusing the patent application. This is seen as a way of bringing cases to a head if they are seen as not progressing. However, there are ways of trying to ensure that your client does not have an application refused. For example, traditionally, EPO examiners would not always be willing to discuss cases over the phone to try to help get a case to grant. This has changed, however, in the last few years and EPO examiners are far more willing than before to discuss cases informally over the phone.

It is also possible to file a response to an examination report that contains more than one set of claims (each set of claims being known as a “request”). The EPO will consider each set of claims in order of your preference until it either arrives at a set of claims that are acceptable to the EPO or runs out of claim sets.

As mentioned above, if prosecution of an application has become bogged down, the EPO may summon the applicant to a hearing. The applicant has the chance to file multiple claim sets for the consideration of the EPO, and to argue its case. A hearing can be particularly useful if the primary EPO examiner has misunderstood some aspect of the case.

Slow patent prosecution for some applications
The EPO has issued targets for getting recently-filed applications to grant or refusal within a certain amount of time. Recently-filed applications will therefore be prosecuted relatively quickly. However, older applications are not subject to such targets and are currently taking a long time to be examined, re-examined and granted or refused. It is possible to request accelerated search and examination of an application using the PACE procedure, but an application will “fall-off” the accelerated prosecution track if an extension of time is requested or a renewal fee not paid in due time. It is only possible to request accelerated examination once per application. Even if it is not possible to ask for accelerated processing, it can be useful to ask the EPO when the next communication will be issued on an application; this often seems to speed-up prosecution.

It is possible to oppose a European patent by filing an opposition within nine months of the date of grant of the patent. Filing an opposition is a relatively cost-effective way of trying to revoke and/or limit the scope of a European patent for all states. The costs involved will vary from case to case, but would typically be significantly less than the costs associated with similar procedures in the US, for example.

We are a European firm and assist our clients to protect their IP rights in the UK, Europe and worldwide from our offices in the UK and The Netherlands and through our international network of trusted local attorneys.

Get in touch if you would like to discuss your innovations and brand protection further.

You can read Part 1: Practice at the EPO vs elsewhere here.

You can read Part 2: Practice at the EPO vs elsewhere here.