Case Study: A Strategy for Cost Effective Prosecution before the EPO

Article from our Winter 2009/10 edition of InsideIP.

As European patent attorneys, the most common complaint that we receive about the European patent system is that the process of obtaining a patent is too slow and too expensive.  Applications may remain pending for many years without any action, while expensive annual renewal fees mean that the cost continues to mount.  A typical European application may be pending for 4 – 5 years and cost well in excess of £10,000.

However, this need not be the case.  Various strategies exist for speeding up prosecution, including accelerated search and examination, and for keeping down cost.  The London Agreement relating to post-grant translations, which

entered into force in May 2008, has had a significant effect in reducing the cost of patent validation, particularly for clients who are interested in validating in a small number of key countries, such as France, Germany and the UK.

A particular strategy that we have adopted for one of our clients, a large industrial concern operating in the electro-mechanical field, has resulted in the grant of 17 patents over the last three years, typically within 18 months to two years from the filing date.  The average cost of eachpatent has been £7,500, including all official fees (with renewals) and our service charges.  This is based on the filing of a European application claiming priority to a first filing in a foreign country.

The strategy involves:

1) The client provides an English translation of the foreign application prior to expiry of the 12 month priority period.

2) We review the description and revise the claims to ensure that they comply with European requirements.  For example, where the claims include multiple independent claims in each category, these are redrafted to provide a single independent claim.  If there are more than 15 claims, we also reduce the number to save on excess claims fees.

3) We file the application, paying the examination and designation fees at the time of filing.

4) Within a few months, we receive an extended European search report from the EPO giving a detailed opinion on the patentability of the invention.

5) We prepare and file a complete response to the extended European search report (subject to the client’s approval) within 3 months of the search report date.

6) Where the examiner has no further objections, a Rule 71(3) communication follows quickly.  In some cases, this has been within 9 months of the filing date.

7) We have also found that, when following this procedure, the examiners tend to issue subsequent examination reports much more quickly than would normally be the case.

This strategy keeps costs low in a number of ways.  Since renewal fees are not

payable until two years from the filing date, a rapid grant avoids the need to pay these fees, which can quickly rise to over €1000 annually.  More importantly, the above approach can also save on attorney fees, since the short timescales mean that the attorney working on the case does not need as much time to refamiliarise him or herself with the issues every time an examination report issues.

An important part of this strategy has been to reply quickly to the extended

European search report.  At present, there is no obligation to file a response to the extended European search report.  However, this will change as from 1 April 2010, as discussed on page 16 of this magazine.  The effect this will have on the speed of grant remains to be seen.

Jan Walaski 05 Nov 2009

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