Since the launch of the Patent Prosecution Highway (PPH) programme, the European Patent Office (EPO) has recently made agreements with Israel, Canada, Mexico and Singapore to accelerate prosecution of patent applications.
The EPO already has PPH agreements with China’s State Intellectual Property Office, the Japan Patent Office, the Korean Intellectual Property Office and the US Patent and Trademark Office.
PPH agreements allow applicants whose patent claims have been found patentable by one of the above offices to ask for accelerated processing of their corresponding applications pending before another of the offices. The PPH programme is available at any of the above patent offices and can be entered on request, on the basis of findings both by examiners of international patent applications under the Patent Corporation Treaty and those by national examiners of applications filed at these national offices.
Today the EPO has 38 member states. From March 1, 2015, European patent applications can also be extended to Morocco, even though Morocco is not an EPO member state. Validation in Morocco is not available for applications filed before that date.
Extension is subject to a validation fee, which must be paid to the EPO within six months of the date on which the European patent bulletin mentions the publication of the European search report; this is the same time as when the designation fee and examination fee are due. Paying the validation fee at this stage automatically makes the European patent valid in Morocco and no additional measures need to be taken subsequently, other than paying the renewal fee once a year.
"Applicants normally validating in a large number of countries may save on renewal costs by choosing the unitary patent."
A similar agreement with Tunisia was signed on July 3, 2014, but this agreement has not been ratified.
Search made easier
Some new features have been added to the EPO’s patent search engine Espacenet.
Since June 2014, a global dossier service has made it possible to retrieve file wrappers (the patent prosecution history and documents) for Chinese patent applications that have a European patent family member. To some extent even Chinese file wrappers with no European equivalent are available via Espacenet.
The Patent Translate tool of Espacenet offers electronic translation of English patent documents to many other languages. An updated Patent Translate now includes a correction editor, which offers users the possibility to submit text to be incorporated, to improve Patent Translate.
Unitary patent update
The designation of a unitary patent under the European system is still not available and it is not completely clear when it will be introduced. Some say it will be at the end of 2016, but we need to wait and see. One step forward, however, is the long-awaited indication of the level of unitary patent renewal fees.
Two proposals, referred to as ‘Top 4’ and ‘Top 5’, have been made and are based on accumulated renewal fees in either the four or the five EU member states from where the majority of European patent filings originate. The ‘Top 5’ proposal is also calculated to include a renewal fee reduction for small to medium-sized enterprises, natural persons, non-profit organisations, universities and public research organisations.
The first noticeable difference in fees between the proposals appears from year ten onwards. Applicants that normally validate their European patents in only a few EU countries may face increased renewal fees when choosing the unitary patent, but may benefit from having a broader geographical scope. Applicants normally validating in a large number of countries may save on renewal costs by choosing the unitary patent.
Irrespective of whether they already validate in a few or many countries, applicants should carefully decide whether they opt for the existing European patent system, in order to have many separate national patents, or go for the unitary patent system, which carries a risk of losing patent protection in all states signed up to the new regime in just one single revocation action.
Marianne Holme is a partner at Holme Patent. She can be contacted at: mh@holmepatent.dk
EPO, PPH, patent, patent applications, unitary patent, European patent,
