“By submitting for a patent in France, the consumer has extra visibility on the patentability of their invention within the European zone and might act accordingly to maximise their possibilities of acquiring patent safety and/or to attenuate their prices.”
A consumer’s latest expertise making use of for a European patent led to the event of a potential optimization technique to deal with patent prices for purchasers. This consumer had made an preliminary U.S. submitting after which prolonged his utility within the type of a European patent utility.
His U.S. utility went extraordinarily nicely, and he obtained a fast grant with only a few further prices. This, sadly, was not the case along with his European utility.
The prior artwork search carried out by the European Patent Workplace (EPO) revealed 4 new related paperwork that drastically difficult the process. Furthermore, the applying was drafted based on U.S. requirements, which difficult the graceful operating of the European process by making it, for instance, tougher to change the claims with out drastically decreasing the scope of patent safety.
These difficulties led to quite a few further exchanges with the EPO, rising the fee and size of the process—a lot to my consumer’s displeasure. The consumer ultimately determined the EPO procedures have been simply too costly.
This led me to strategize a observe to cut back procedural prices in Europe and to optimize extension methods for patent purposes initially filed outdoors Europe, usually in america, China, Korea, and so on. This technique is just not well-known, however it is rather efficient. The observe consists of both concurrently submitting an similar submitting in France or submitting after a precedence submitting in a “non-European” state.
French Benefits
France affords a number of benefits when submitting a patent. It subsidizes a big a part of the submitting charges for a French patent utility whatever the nationality of the corporate. The corporate doesn’t have to have an workplace in France and the applying doesn’t have to be a primary submitting to make the most of this subsidy.
Additionally, the charges for submitting a French patent utility are unbiased of the variety of pages and quantity to the next:
- €273 for “small entities” (i.e., people, corporations with fewer than 1,000 workers whose capital is just not held greater than 25% by an entity not assembly these first circumstances, non-profit organizations within the training or analysis sector)
- €546 for others.
As well as, in France, the primary ten claims are free and any further claims past the tenth will price solely €42 or €21 per declare relying on the standing of the applicant (small entity or not). Furthermore, there is no such thing as a restrict to the variety of unbiased claims and no further charges for an inventory of nucleotide sequences or others.
This leads to a search report accompanied by a written opinion carried out by the EPO inside six to 9 months following the submitting of the French patent utility. Thus, for the lowered value of a French patent utility, any applicant can profit from a high quality search carried out by one of many 5 largest patent places of work on the earth.
Later, as soon as the search carried out by the EPO has been accomplished, in case you determine to file a European patent utility and if the claims are similar or near these filed with the French patent workplace (INPI), the EPO will reimburse the search payment.
This reimbursement might be 84% within the case of the entire reuse of a earlier search (accompanied by a written opinion), which is a nationwide search on behalf of the INPI. The reimbursement is 21% within the case of partial reuse.
Additionally it is potential to get a refund within the case of submitting a global utility the place the EPO is the Worldwide Search Authority (ISA); the refund might be the next:
- 100% for full use of the earlier outcomes;
- 25% for partial use of the earlier outcomes (that is the case if the applying has been considerably modified in comparison with the unique request).
Thus, the price of submitting a French patent utility might be offset by the financial savings generated from the decrease search payment or, within the case of very voluminous purposes, from the decrease price of further charges (the variety of pages for a Patent Cooperation Treaty [PCT], further claims for European patent purposes, and so on.).
This observe additionally permits for a really speedy “supplementary” search and thus a greater overview of the prior artwork state in comparison with the evaluation accomplished by the workplace receiving the primary submitting. There could also be translation prices, however you might be happy with machine translation and have the claims reviewed by a neighborhood correspondent.
A Little bit of Technique
We envisage two excessive hypotheses:
- Within the first speculation, the search carried out by the EPO doesn’t return any further related paperwork. This reinforces your consumer’s possibilities of acquiring a European patent primarily based on the textual content as filed. On this first case, this observe reassures the consumer about their possibilities of acquiring the patent in Europe and provides them higher visibility on their future prices.
- Within the second speculation, the search carried out by the EPO returns a number of new related paperwork. This might complicate the issuance of a European patent and even forestall it fully. On this case, if the cited paperwork are really an impediment to the issuance of a patent, then this observe saves the prices of a PCT and/or EP extension. The French submitting permits the consumer to make an knowledgeable resolution and to keep away from pointless charges. Furthermore, it’s potential to withdraw the French patent utility to keep away from publication and preserve the search report and written opinion confidential.
Nonetheless, if the invention is actually strategic, additionally it is potential to change the textual content and/or claims accordingly and to increase the applying to have a greater probability of acquiring the patent. In fact, on this strategic framework, it will likely be mandatory to find out with the consumer if the modified scope of safety nonetheless presents a technical and/or financial curiosity.
An Possibility Value Contemplating
By submitting for a patent in France, the consumer has extra visibility on the patentability of their invention within the European zone and might act accordingly to maximise their possibilities of acquiring patent safety and/or to attenuate their prices.
This technique is just not essentially appropriate for all sorts of patent purposes and purchasers. I’d are inclined to assume that it presents extra curiosity for voluminous patent purposes with many claims, usually greater than 15, and for corporations that wish to shield their invention in lots of nations.
In observe, a U.S. or Asian applicant could make their first submitting of their nation of origin, then file in France to have a search carried out by the EPO, and eventually, for the Asian applicant, request america Patent and Trademark Workplace because the ISA throughout their PCT to have an total view of the patentability of their invention and to attempt to optimize the completely different procedures.
It’s a technique which may be attention-grabbing to sure purchasers to permit them extra predictability on European examination procedures and their prices, and even to cut back these prices.
Picture Supply: Deposit Pictures
Writer: eabff
Picture ID: 55119237
