EPO Practice
European Filing Strategies on the Eve of the Unitary Patent
Europe, since the 1970s, has been blessed—or cursed, depending on your perspective—with two avenues toward procuring patent rights. The European Patent Convention (EPC), when ratified in 1973, created the European Patent Office (EPO) as a regional patent examination and granting authority. EPC Member States also retained national patent systems, which coexist with the EPO. Patent applications passed to grant by the EPO are recognized by EPC Member States as national patents. Each EPC Member State where a European Patent is electively placed into force (i.e., “validated”) takes over enforcement issues and post-grant validity challenges (except for Oppositions in the EPO) under its national law, in the same way as it would with a nationally granted patent. Most applicants are accustomed to the idea of having both the EPO and the national offices available for their European filing strategies, although relatively few deviate from the simpler one-stop approach of filing only in the EPO.
The creation of the European Unitary Patent adds another layer of complexity to filing decisions, because it provides yet another route to obtain patent protection in at least some portion of the European Union (EU).
To begin with, the Unitary Patent (officially the “European Patent with unitary effect”) is an EPO-examined patent that, when issued, has unitary effect in all participating countries, rather than becoming a bundle of national patents like the classical European Patent.
The implementation of the Unitary Patent includes the provision that all European Patents will fall under the jurisdiction of the newly created Unified Patent Court (UPC). The legislation creating the Unitary Patent includes a transitional period, which will last for at least seven years, and may be extended by up to a further seven years, for dealing with in-force EPO-granted patents. Article 83(3) provides that patentees may “opt out” of the UPC regime on a patent-by-patent basis. Because of the ability to opt back into the UPC system (Article 84(4)), it is widely speculated that many patentees will opt out in order to take a “wait and see” attitude toward the UPC. Owners of European Patents that have been validated in different countries are not accustomed to the prospect of central revocation, or a single decision of noninfringement for all of Europe, and many will prefer the status quo country-by-country system, notwithstanding its inefficiencies. The ability to opt back into the UPC system later does nothing to dissuade this approach.
At the time of this writing, it is not clear which states the Unitary Patent will cover. Spain has stated it will remain outside the Unitary Patent system. Italy, while signing up for the UPC has not signed on for the Unitary Patent, leaving that country’s status up in the air. Further, because the system comes into effect when thirteen states have ratified (which must include the United Kingdom, France, and Germany), it is not clear which countries will be first to ratify and thus be included. Unitary Patents are covered only in the states that are part of the system when the patent grants, so later-joining countries are not added to the effective territory of an earlier-issued Unitary Patent.
During the transition period, it will be possible to get patent protection via national filing, EPO filing with national designations, and EPO filings with a Unitary Patent designation. After the transition period ends (in seven or fourteen years), the only options will be national filing and EPO filing with unitary designation.
The unitary designation will place the patent in an entirely new regime for enforcement and validity determination. The EPO-granted patents, as well as the nationally granted ones, were each subject to the same postissuance environments: the national authorities. The Unitary Patent, on the other hand, relies on a new system of adjudication that is yet unproven.
In advance of the changes that will be introduced by the arrival of the Unitary Patent, it will be useful to analyze some current practices that might need to be reconsidered when the Unitary Patent is available. For instance, it has become common practice for applicants from outside Europe to obtain European patent protection by means of a PCT application that later enters the EPO regional phase. In some cases, a different route may deliver better results in terms of cost, certainty, speed, and/or convenience.
The principal advantages of the EPO to the applicant are that it uses single applications, 80 percent of which are in English; and final decisions by the applicant on which countries are to be covered and translations (when needed) are required only when a patent is granted. Disadvantages to the EPO route include the relatively high official fees, and prosecution is often slow and complex. Also, because examination is centralized, refusal of the application by the EPO during prosecution or on post-grant opposition means that all rights are lost in one go.
In some cases, national filing(s) may have advantages that outweigh the convenience of the EPO system, but using national filings will need to employ different approaches country by country. For the most part, all EPC Member States have essentially the same substantive patent law, so questions of novelty, inventive step, and industrial applicability should not vary greatly or impact substantive prosecution strategy. That said, prosecuting applications in parallel before separate offices, and therefore different examiners, can always lead to different outcomes.
Some considerations that may bear on the choice between the EPO and national offices are discussed below.
Limited Territorial Scope
If protection in only a few (three to five) countries is required, the overall cost may not be much different between an EPO application and a handful of national ones. Official fees for most national filings are in the order of a few hundred dollars, many being around $500 in total (e-filing in France runs about €526 and about €440 in Germany). Another consideration might be the excess claims fees, which, while relatively expensive in the EPO (€200 from the fifteenth claim), are much less expensive in jurisdictions such as Germany and France (€20 and €40, respectively, from the eleventh claim), and zero in the United Kingdom.
The major cost in many cases is the cost of translation (about €75 to €85 per page). If the specification is relatively short, this may not be a significant cost. Many offices, however, accept applications filed in English, such as Switzerland, Sweden, Denmark, and Finland.
Speed of Prosecution
Some countries do not examine substantively (e.g., France, Italy, Spain, Switzerland, and Belgium), and an application can enter into force without the lengthy delays involved in EPO prosecution. A national filing will nevertheless be subjected to a search (and in France, this search is done by the EPO at a cost of €500 (or €250 for qualified small to medium-sized enterprises)). This is a big savings compared to about $1500 when the full search is done by the EPO for a European Patent application). A search can be undertaken in Switzerland, by examiners using the same resources as the EPO, for 700 CHF (200 CHF filing fee plus 500 CHF search fee). After the search, an opportunity is given to amend the claims, but otherwise, an application will proceed to grant. With the recent law changes in European countries, all now allow amendment of patents post-grant so that invalidity issues can still be potentially addressed before attempts to enforce. Even those countries that do examine substantively will often respond to applicant’s amendments and conclude prosecution more quickly than the EPO, especially if they are requested to do so. For example, the U.K. Intellectual Property Office has a rule that requires that prosecution must be complete within fifty-four months of the priority date, and will often complete examination within twelve months.
Many European countries have utility-model protection available as an option to or in addition to a full patent. These are usually unexamined and granted quickly for a shorter period. Germany, specifically, allows a utility-model application (or Gebrauchsmuster) to be filed from a pending European Patent application, a PCT application designating Germany or the EPO, or a German national application. This is true even when the language of examination is not German. Utility models offer the advantages of having protection issued without substantive examination, which can be desirable in countries that subject invention patents to substantive examination (like Germany, where registration can occur in six to eight weeks). Advantageously, a utility model is generally available for all patent-eligible subject matter in the jurisdiction, with the exception of methods of use.
Conversely, prosecution can be delayed (or deferred) in some countries. Germany, for instance, has a deferred examination system with low costs (e.g., a filing fee of €40) until a search and substantive examination is requested. This option allows an applicant to benefit from placing competitors on notice of its innovation without the attendant costs of prosecution. Naturally, no enforceable rights can result until examination is requested and completed—but in Germany, a utility model could be obtained in fairly short order and leveraged, where necessary.
Easier Prosecution
Where examination does take place, substantive prosecution can be less burdensome in national offices than at the EPO, especially in certain technology areas. Also, the level of argument needed in writing to overcome rejections can be less in national offices than at the EPO, with corresponding lesser potential impact on prosecution outside of Europe, particularly in the United States where arguments made in prosecution outside the United States can be relevant to U.S. claim scope or enforceability. Conversely, some countries are notoriously strict in certain areas of technology (e.g., the United Kingdom for computer-implemented inventions). Many countries are not so strict on the basis for amendments as the EPO, making prosecution easier.
Local Invalidity
An obvious advantage of national prosecution is that a refusal or abandonment in one country does not automatically affect the corresponding application or patent in another. The finding of invalidity of an issued patent in any jurisdiction is similarly not impactful on other national filings, although this can also be true of granted European Patents validated in different member countries. After grant, the provenance of a patent in a given jurisdiction (national or EPO) oftentimes does not matter, but the finding of invalidity of a validated European patent in one country, while not binding, might in some instances be used as evidence in a validity challenge in another EPC Member State.
Filing Route
While many EU countries allow a national application to be filed based on a PCT filing, there are eleven that have closed their national route; that is to say, these countries only allow protection to be obtained exclusively via the EPO if a PCT application is used (i.e., Belgium, Cyprus, France, Greece, Ireland, Italy, Latvia, Malta, Monaco, the Netherlands, and Slovenia). If national protection is to be sought in such countries by direct filing, it is necessary to do so within the twelve-month Paris Convention period, because the PCT option is not available.
If an applicant wants to take advantage of, for instance, the early and inexpensive European search given to a French application, filing directly in France is the only way to accomplish this. This early EPO search can be of some importance as an indication of the course that prosecution will take in a parallel European application, so a national French filing may be useful as a companion filing. If the French application is used as a priority document for an EPO filing, that EPO search will be relied upon during EPO examination. Also considering the quick issuance that can be obtained in France because there is no substantive examination there, and the availability of remedies such as descriptive seizure, French national filings could provide valuable strategic tools otherwise not available.
These various potential benefits that may arise from the national-filing route should therefore be taken into account when deciding to file a PCT in order not to miss out on opportunities. Where it is useful to avoid the deficiencies of the Unitary Patent centralized system, national filing will become the only option available following the transition period. National filing may provide quicker, cheaper results that are less vulnerable to central attack.
The Patent Prosecution Highway and the USPTO
The use of the Patent Prosecution Highway (PPH) between the USPTO and the EPO is hampered by lengthy prosecution timelines in both jurisdictions. Another disadvantage, perceived or real, is that Articles 94(3) and 97 EPC do not really permit the EPO examiners to give much credence to what takes place in other offices, and the amendments introduced in U.S. practice will often cause issues at the EPO due to the limited ability to amend under Article 123(2) EPC. When these are taken into account, the long-standing PACE acceleration program will likely provide as much benefit of the USPTO-EPO PPH. The most recent data suggest that using PPH at the EPO makes no difference to prosecution time or outcome.
A still speedier overall outcome could result from using the PPH between a quick national office and the USPTO. National PPH agreements exist between the USPTO and Austria, the Czech Republic, Denmark, Finland, Germany, Hungary, Iceland, Norway, Portugal, Spain, Sweden, and the United Kingdom. In the authors’ experiences, using U.K. prosecution as a vehicle to speed up U.S. prosecution has been favorable.
