Introduction

Since its inception in the 1970’s, the European Patent Office has become the standard choice for obtaining patent protection across Europe. The European patent application system provides for patent protection in 38 states including all current 28 member states of the European Union. However, protection in all those countries comes at a cost, particularly due to the relatively high official fees to the EPO, the need to validate the granted European patent and to pay patent renewal fees in individual countries in order for the patent to remain in force.

The European Unitary Patent is intended to address some of the issues concerning patent validation and renewal costs for the member states of the European Union but will be subject to the same prosecution costs as the current European patent application system.

For many cases, this cost will be justified but there may be applicants or inventions, for which the cost of pan-European patent protection is less attractive. In such instances it may be worthwhile considering the national patent application route as an alternative to a patent application via the European Patent Office.

For a downloadable pdf of the 'Country and Cost Options for Patent Protection in Europe' please click here.

Patent options in Europe

The top five national economies in Europe in order of Gross Domestic Product in the period 2016-2018 are:

1. Germany
2. United Kingdom
3. France
4. Italy
5. Spain

If an applicant were to apply for patent protection by filing national patent applications in each of those five countries, the filing, translation and local attorney fees would typically be significantly greater than the cost of filing a European patent application at the EPO in a single language.

It is also important to note that it is currently not possible to enter France via a national patent application from a Patent Cooperation Treaty (PCT) application. From a PCT application, patent protection in France is only available via the EPO route.

The prosecution costs and timeline for patent applications in each of the above countries can also vary significantly, with no certainty that the same scope of protection will be obtained in each. It is not a simple matter to predict accurately for each patent application where the balance of cost will lie between national patent applications and a European patent application.

However there exists a general understanding that, if protection is sought in three or more European countries, then it is often most pragmatic to apply at the EPO for a European patent, rather than national patent applications. This is because the total costs are often comparable and the EPO route will avoid the need to manage three different co-pending patent applications for each country, often in three different languages.

Based on the above rationale, we advise that patent applicants consider the following three options for pursuing patent protection in Europe, each of which bear different strategic and cost implications:

- National patent application in a single European country
- National patent applications in two European countries
- European patent application

Whilst the overall prosecution costs for two national patent applications in Europe could potentially offer a significant saving over the European patent application route, the initial costs upon filing may not differ greatly, particularly if a translation for at least one of the national patent applications is required. Therefore, if immediate costs are the greatest concern, an applicant may only wish to consider the option of a single national patent application against that of a European patent application. A longer-term cost strategy would ideally consider all three options.

If an applicant already has an English-language version of the patent application to hand, the UK national application filing costs will normally be significantly lower than the filing cost in Germany, which will require a translation into German within 15 months from the priority date.

In order to allow for a more meaningful consideration of the above options we have provided example summary costs for the UK and European application routes below. The below costs assume an English language version of the patent application is available and do not include the cost of any translations. These typical costs are based on cases we have prosecuted over recent years. However, it is possible that individual cases could deviate from the cost ranges provided below, e.g. if an application contains large numbers of pages or claims.

 

Europe

UK

Typical Costs in GBP 

via PCT

Direct

via PCT

Direct

Filing

4,000 - 5,500

2,000 - 3,000

750 - 1,250

650 - 1,150

Examination

1,000 - 5,000

2,500 - 7,000

0 - 3,000

Grant

1,000 - 2,000

150 - 300

Validation

750 - 20,000

N/A

TOTAL

6,250 - 32,5000

900 - 4,550



Final Comments

Particularly where competitors, technical expertise or manufacturing capability is limited to one or two European countries, the national patent application route may provide cost-effective patent protection in Europe.

For applicants filing a number of patent applications in Europe, it may be beneficial to consider a mix of European and national patent applications for different inventions within their portfolio. For example, where inventions are perceived to be more valuable, the European route may be more appropriate, whereas for inventions that are more speculative in nature, or else intended to block a specific competitor, the national application route may suffice.

We have long-standing working relationships with patent attorneys in Germany and have arranged fixed filing fees should our clients wish to pursue both UK and German national patent applications via our firm.

In view of the above information, for applicants seeking protection in at least the UK, Germany and France, the European patent application system rightly remains the default choice since it provides the option of covering further Europe countries with reduced cost. However, for applicants whose approach to European protection is more specific in nature, there may be cost savings in pursuing one or two national patent applications.

Please bear in mind that the above information is generic in nature and each case would need to be considered in further detail, particularly with respect to translation costs and the subject matter of the invention in order to advise on the appropriate strategy for any individual case.

If you would like any additional advice concerning European patent application strategy or fixed price cost estimates for filing specific patent applications, please do not hesitate to contact us via email contact@adamson-jones.co.uk or call +44 115 947 7977.

For a downloadable pdf of the 'Country and Cost Options for Patent Protection in Europe' please click here.

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