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Using the European patent application system

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In this video Nic Ferrar, Partner at Adamson Jones, gives an overview of what needs to be considered if applying for a patent in Europe. 

A European Patent Convention or EPC allows a single European patent to cover 38 member states and has become the default choice for most applicants considering protection in Europe.

Transcript

Nic Ferrar: Hello, I'm Nic Ferrar, and I'm a Partner at Adamson Jones. If you're considering applying for a patent in Europe, then you're probably already familiar with the European Patent Convention or EPC. It allows a single European patent to cover 38 member states and has become the default choice for most applicants considering protection in Europe.

The EPC includes the Big Five in terms of GDP in Europe, namely Germany, the United Kingdom, France, Italy, and Spain. It also includes all 27 members of the European Union. That is important to point out that the EPC is not EU law. Rather, it's a separate convention that member states join individually. What this means is that the individual member states agree that they'll recognize a granted European patent as a national patent in their own country, but only if certain steps are taken by the patent owner. So whilst the single European patent application can provisionally cover all 38 EPC member states, a granted European patent doesn't automatically take effect in those countries. One of the quirks of the EPC system is that once granted, the European patent needs to be validated in each of the individual countries in which protection is required. The granted patent then essentially becomes a bundle of national patents in each of those countries.

Patent renewal fees are then paid nationally in those countries. As a result of this, the regional patent system implemented by the EPC means obtaining protection in all 38 countries can be expensive, particularly at the validation stage at the end of the process, and when paying renewal fees to maintain the granted patent. Most patent applicants do not validate the European patent in all member states and many select just a handful of key countries in which it's important to keep the patent in force. So this raises the question, why use the European patent application system at all? If you are only going to obtain a small number of individual national patents, why not just apply directly for national patents in those countries of interest? The answer relates to both cost and procedural efficiency. The national patent offices in individual European countries will typically have different language requirements, meaning translation costs will arise at the start of the process. On top of that, you'll have to pay official patent application fees and appoint a local attorney to represent you before each national patent office.

All the different national patent applications running in parallel can create complexity particularly during examination, and can result in slightly different verdicts on allowable patent claims in each country. Every patent application is different, and it is not straightforward to predict exactly at what point the EPC becomes attractive over the national patent application route. However, there's a generally accepted rule of thumb that if protection is sought in three or more European countries, then it makes sense to apply at the EPO for a European patent rather than individual national patent applications. But simply, it's more cost effective and avoids the need to manage different patent applications for each country, often in different languages. That's why we advise patent applicants to consider the following three options for pursuing patent protection in Europe, each of which bear different strategic and cost implications. The first option is a national patent application in a single European country.

The second option is two national patent applications in two European countries, and the third is the European patent application. It's right that the EPC remains the default choice for most applicants, but it's important not to forget the option of applying nationally in just one or two European countries as an alternative. By way of example, the cost of obtaining a granted UK national patent can be around a quarter or a third of the cost of a European patent. If you are not sure which route is best for you, visit the pct2ep section of our website where you'll find a huge and useful bank of information and advice about European patent applications.