Eight Ways for US Applicants to Save Money on EPO Regional Phase Applications

1. Avoid claims fees

The EPO charges 235 EUR for each claim over the 15th and 580 EUR for each claim over the 50th. Very few applicants actually pay these fees. A set of reduced claims numbering no more than 15 claims can be filed to avoid claims fees completely. This can be done on regional phase filing or in response to the Rule 161 communication and saves 1,175 EUR for a PCT case having 20 claims, 3,525 EUR for a PCT case having 30 claims and even more on the biggest claim sets. Skilled European practitioners can readily suggest amendments that keep all of the original subject matter but in fewer claims – saving you money.

2. Avoid page fees

Page fees are payable upon EP regional phasing, but the EPO does not come back to collect extra page fees if pages are increased later during prosecution. It is thus possible to amend the specification on regional phasing to delete pages, thereby avoiding all page fees. The pages can be put back again at the Rule 161 stage, and no page fees would be payable then.

Page fees are 15 EUR for each page above the 35th. For a specification with 80 pages, avoiding page fees would save 990 EUR. For 150 pages, the saving is 1,725 EUR. For large specifications of 300 or more pages, the saving is over 3,900 EUR.

3. Adjust claim order to suit commercial objectives

If the EPO finds that a claim set lacks unity of invention, it will search the first invention only, and invite payment of a search fee for subsequent inventions. This can lead to an unnecessary fee being required if the second or a subsequent invention is of most commercial interest. The answer is to adjust the claim order to ensure the most important invention is listed first. This will ensure that, in case of non-unity, the most important invention is searched without needing a further fee.

4. Ensure claims are compliant with R43(2) before the EPO performs a search

If the EPO search examiner encounters a claim set containing multiple independent claims per category that do not meet one of the exceptions of Rule 43(2), the applicant is required to pick one independent claim for searching, and the other independent claims will not be prosecuted. To prosecute them would mean filing an expensive divisional application. Conversely, if the claims do conform with Rule 43(2), all the claims will be searched and prosecuted (subject to unity of invention compliance). The necessary amendment to ensure compliance with Rule 43(2) can be done at the same time as reducing the set to 15 claims, to achieve a double-saving.

5. Waive the Rule 161 communication

If the claims are ready for EP examination on entering the EP regional phase, the Rule 161 communication can be waived. This saves 6 months of time and associated reporting costs. The case proceeds faster than it would otherwise, potentially saving on EP annuities, which are payable on pending applications.

6. Use PACE instead of PPH

The PPH (Patent Prosecution Highway) procedure involves work in compiling and presenting information about how the claims conform to those in another allowed case. However, the only effect at the EPO is to accelerate prosecution. This same effect can be more easily achieved by requesting accelerated prosecution (PACE), for which there is no fee. No reason need be given either. It is nearly always much cheaper and easier to request PACE instead of PPH.

7. Minimise EPO pendency time

EPO annuities are payable on pending applications and get very large at around the 6th year from PCT filing. Use PACE, waive the R161 and react quickly to the EPO to minimise pendency times and reduce the overall amount paid in EPO annuities. This of course swaps EPO annuities for post-grant national ones earlier but in the high proportion of cases where the patent is validated just in a core group of countries rather than many states around Europe, the EPO annuities can still be higher than the total of the national ones.

8. Select the EPO as ISA on the PCT case in the first place?

At first sight, the EPO seems an expensive ISA (International Searching Authority). However, if you know you will ultimately proceed in the EPO, it can be cheaper overall than using the USPTO.

The USPTO’s international search fee is 2,080 USD. When you enter the EP regional phase of such a case, you’ll pay a European search fee of about 1,200 USD. That’s a total of about 3,280 USD on PCT and EP search fees.

If you’d picked the EPO as ISA, the international search fee would have been 2,125 USD. Upon EPO regional phase entry there is then no search fee, though the examination fee is about 200 USD higher. So the comparable cost here is about 2,325 USD, nearly 1,000 USD cheaper.

Even if you also enter the US national phase and take advantage of the lower search fee levied by the USPTO on US national phase cases where the USPTO was the ISA it is still cheaper overall to select the EPO as ISA. If like many US entities you usually file a US national application alongside with the PCT rather than entering the US via the PCT, the EPO as ISA can make a lot of sense, both financially and for a second pair of eyes in the search phase before foreign filing decisions are made.

For advice on any aspects of EPO regional phase applications, including how to save money, contact Chris Milton.

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