Extending patent protection to Europe
Specific considerations when filing European patent applications based on US filings
Applicants from the United States are the largest group of foreign applicants to the European Patent Office. A quarter of European patent applications come from US applicants (24.9% in 2022).
There are a number of agreements that make it easier for US applicants to file European patents.
- The Paris Convention. Of course, the priority of a U.S. patent can be claimed for a European patent application within twelve months.
- Equally important is the PCT. For PCT applications, the search has usually been done at the USPTO. However, there is an interesting alternative for U.S. applicants that may offer great advantages in some cases: The PCT system allows a U.S. applicant to designate the European Patent Office as the Search Authority (ISA). Details of the PCT procedure can be found here.
- Another interesting option is the Patent Prosecution Highway (PPH). If the USPTO considers at least one claim of a patent application allowable, a fast-track examination can be requested from the EPO. This option is less common than the PCT, but often highly recommended.
Priority documents: There is a direct electronic exchange of priority documents between the USPTO and the EPO.
It is also worth mentioning that a German patent application can be filed either at the end of the 12-month period or at the end of the 30-month period under the PCT procedure. Covering this important market is relatively inexpensive and, of course, less expensive than filing an EP application. Among the top ten applicants to the German Patent Office are two foreign companies, both U.S. companies: GM and Ford.
Adapting US patent applications for the European Patent Office
There is no ideal patent language for worldwide applications. We are very familiar with the style of US patent documents and make appropriate changes for Europe. We follow the rules of Article 123 (2) EPC, as the EPO is quite strict on some formal issues and difficulties should be avoided at this point. Typical topics are:
- Number of independent claims: While the number of independent claims is not limited in the U.S., in Europe generally only one independent claim per category is allowed. The following are considered claim categories: product, process, apparatus or use
- Total number of claims: We regularly receive claim sets from the USA that include more than 15, and in some cases even more than 50 claims. These are allowable in Europe, but are by no means recommended. In order to avoid long claim sets, the European Patent Office has introduced a fee system which is, so to speak, “prohibitive”. The fee for each claim from the 15th claim, i.e. claims 16 to 50, is currently € 265.00. From the 51st claim onwards, a fee of € 660.00 per claim is charged. Therefore, we generally endeavor to reduce the number of claims to 20 or less, if possible to 15.
- Multiple dependencies: While in the US such dependencies are avoided (which tends to result in long claim sets), in European practice they are not a problem. Thus, multiple dependencies make it easy to claim many embodiments even in a short claim set. We usually take advantage of this.
- Two-part claim form: European examiners usually insist on the two-part claim form. However, this is a soft requirement, so we present claims in two-part or one-part form on a case-by-case basis.
- Reference Signs: While US claim claims are deliberately drafted without reference signs, European practice requires them. However, such reference signs must not be interpreted restrictively (Rule 43(7) EPC) .
- Description: Citation of prior art found in the European search is usually required.
- Incorporation by reference: This common approach is not accepted in Europe. There is even a practical reason for this: the patents should be translatable and readable in several languages and incorporated texts then present translation issues.
- General statements about the scope of the invention: According to Article 69 EPC, the claims alone should determine the scope of protection. Hence, the European Guidelines expressly provide (Guidelines for Examination, F III 8) that certain formulations common in the US should be deleted, e.g. references to the “spirit of the invention” as defining the scope.
When should amendments be made?
If we file a direct application based on a priority, we recommend that the application documents be adapted to European practice immediately. This is the best and most cost-effective way.
In the more common case of filing at the end of the PCT phase, the procedure is more convenient: we usually do not change anything initially. In the normal Euro-PCT procedure, the European Office provides a six-month period, which can be conveniently used for such amendments.
Questions?
Gladly inform you personally, contact us.