Guidance for
Overseas Patent Attorneys
Simplified Patent filing in the United Kingdom and Europe
We have wide experience of Patents and Trade Marks, and offer this experience
to you and your clients. Because of the complexity and detail of the
procedures which need to be mastered and kept up-to-date, we have evolved
a very attractive SIMPLIFIED system which will benefit you and your
client.
Minimum correspondence
Our procedures are designed to reduce to a minimum the correspondence between us. So far as possible, we will handle all minor matters ourselves, and will not constantly issue invoices for small amounts. Once an application is filed, we will present clear reports on all objections raised, with clear decisions to make. This will reduce delays, speed up grant and minimise costs. Naturally, since the costs cannot be predicted for these later stages, our normal professional charges will then apply.
Dollar transactions
We maintain a dollar account in New York. You can therefore settle our invoices by direct cheque payment to us or by remittance to our Bank in dollars. This reduces bank charges and avoids increased costs due to exchange rate fluctuations.
(We can also handle transactions in any other currency you choose, and invite you to specify.)
Standard Charges
By simplifying the procedures, and reducing correspondence, we can reduce our filing charges considerably. By making certain assumptions, and basing our charges on an `average' case, we take the rough with the smooth, and you get a standard price.
You are welcome at any time to request an estimate (e.g. for longer cases, or countries not listed), by completing and returning the form at the end of these pages.
We maintain full details in our office of the laws, procedures and forms of all the commercially and technically significant countries of the world. Where appropriate we simplify the forms, and provide only the minimum paperwork for the client to sign. You will be provided with a simple checklist of actions and documents required.
Minimum correspondence
Our procedures are designed to reduce to a minimum the correspondence between us. So far as possible, we will handle all minor matters ourselves, and will not constantly issue invoices for small amounts. Once an application is filed, we will present clear reports on all objections raised, with clear decisions to make. This will reduce delays, speed up grant and minimise costs. Naturally, since the costs cannot be predicted for these later stages, our normal professional charges will then apply.
Dollar transactions
We maintain a dollar account in New York. You can therefore settle our invoices by direct cheque payment to us or by remittance to our Bank in dollars. This reduces bank charges and avoids increased costs due to exchange rate fluctuations.
(We can also handle transactions in any other currency you choose, and invite you to specify.)
Standard Charges
By simplifying the procedures, and reducing correspondence, we can reduce our filing charges considerably. By making certain assumptions, and basing our charges on an `average' case, we take the rough with the smooth, and you get a standard price.
You are welcome at any time to request an estimate (e.g. for longer cases, or countries not listed), by completing and returning the form at the end of these pages.
We maintain full details in our office of the laws, procedures and forms of all the commercially and technically significant countries of the world. Where appropriate we simplify the forms, and provide only the minimum paperwork for the client to sign. You will be provided with a simple checklist of actions and documents required.
Filing and progress of a European Patent Application
The European Patent
Office was opened in 1977 with a view to centralising the processing
of patent applications, and consequently reducing costs to the applicants.
The cost advantages of a European patent application compared with
the cost of separate national applications usually only appear if
at least three European countries are to be covered. No translation
is needed into the languages of individual countries provided a text
in English, French or German is available.
If desired, any combination of national patents may be applied for in addition to the European application.
Please click here for a current list of contracting and extension states to the EPC
Please note that after filing a European patent application no countries may be added to those already designated, but from 1 July 1997 the deadline for designating countries was extended. Countries may be dropped at the grant stage to avoid translation costs.
When granted, a European patent application becomes equivalent to a national patent in each of the designated countries. Translations into the various languages are then usually necessary, and annual renewal fees become payable for each country.
Approximate Timetable
If desired, any combination of national patents may be applied for in addition to the European application.
Please click here for a current list of contracting and extension states to the EPC
Please note that after filing a European patent application no countries may be added to those already designated, but from 1 July 1997 the deadline for designating countries was extended. Countries may be dropped at the grant stage to avoid translation costs.
When granted, a European patent application becomes equivalent to a national patent in each of the designated countries. Translations into the various languages are then usually necessary, and annual renewal fees become payable for each country.
Approximate Timetable
-
Filing - twelve months after priority date. Maintenance fees for the application start to be payable to the EPO two years after this filing date.
-
Publication of Application - about 6 months after (1).
-
Publication of Search Report - Ideally this should occur simultaneously with (2) but there are delays in many cases at present.Requesting Full Examination and paying Examination and Country
-
Designation Fees - 6 months after (3).
-
Examination of Application (6) Grant - About 1 to 2 years after (4).
Various
formalities and translations are required, both at the European Patent
Office and in the various countries designated. Annual renewal fees for
each country then become payable after the grant date. For a cost estimate,
please complete and send us a Request for Estimate form.
Guidance on the European regional phase of a PCT application
Entry to the European phase is achieved by completion of a form and
payment of the (substantial) official fees. The deadline is 31 months after the priority date (or date of the PCT application
if no priority is claimed). The fees comprise the basic application
fee, the search fee (reduced if the PCT search was made at certain offices,
including the EPO and USPTO), the examination fee (reduced if the Chapter
II examination was conducted by the EPO), a designation fee for each
country to be designated, and claims fees for each claim in excess of
ten. No signed authorization is needed.
Although a single EP designation includes all 32 possible countries at the start of the PCT procedure, it is usually desirable to be more selective at this stage, since every country designated increases the cost. After grant occurs, the countries can again be pruned to reduce the validation and translation costs (see below), but we emphasise that countries cannot be added at that stage.
In order to proceed, we require the PCT publication number (WO/2007.....) so that we can obtain a copy of the original specification, a copy of the final International Preliminary Examination Report, and any amendments made to the claims. In an emergency, all we need is the WO/..... number. [If the 31 month deadline is missed, the application can be revived within an approximately 2 month deadline, subject to a substantial fee penalty and provided a simple request for examination has previously been filed.]
The EPO will produce and publish a supplementary search report. At this stage, there may also be an objection of non-unity (European practice is much stricter in this regard than US practice). A period of two months is set for the applicant to confirm that the application should proceed. If withdrawn within that term, the examination fee will be refunded.
An examination report will issue (timing depends upon the EPO workload) and this must be studied and a response filed.
Eventual allowance and grant will occur 1½ to 3 years after the 31 month date, and various formalities and translations are required to validate the Patent in individual countries.
Annual maintenance fees are payable to the EPO before grant. After the grant date annual renewal fees are payable to each of the countries in which validation occurs. Since the national renewal fees are usually more expensive, it may be worthwhile to strategically delay the actual grant date; please ask us for advice if this is of interest.
Although a single EP designation includes all 32 possible countries at the start of the PCT procedure, it is usually desirable to be more selective at this stage, since every country designated increases the cost. After grant occurs, the countries can again be pruned to reduce the validation and translation costs (see below), but we emphasise that countries cannot be added at that stage.
In order to proceed, we require the PCT publication number (WO/2007.....) so that we can obtain a copy of the original specification, a copy of the final International Preliminary Examination Report, and any amendments made to the claims. In an emergency, all we need is the WO/..... number. [If the 31 month deadline is missed, the application can be revived within an approximately 2 month deadline, subject to a substantial fee penalty and provided a simple request for examination has previously been filed.]
The EPO will produce and publish a supplementary search report. At this stage, there may also be an objection of non-unity (European practice is much stricter in this regard than US practice). A period of two months is set for the applicant to confirm that the application should proceed. If withdrawn within that term, the examination fee will be refunded.
An examination report will issue (timing depends upon the EPO workload) and this must be studied and a response filed.
Eventual allowance and grant will occur 1½ to 3 years after the 31 month date, and various formalities and translations are required to validate the Patent in individual countries.
Annual maintenance fees are payable to the EPO before grant. After the grant date annual renewal fees are payable to each of the countries in which validation occurs. Since the national renewal fees are usually more expensive, it may be worthwhile to strategically delay the actual grant date; please ask us for advice if this is of interest.