Strategizing your patent filing is an important aspect for an inventor. This aspect must be analyzed by the inventor thoroughly since this will help in building an effective strategy around the invention. European Union has been a favorite destination for inventors to seek protection for their invention. There are several ways for achieving the protection for the invention in the EU, the study of which will greatly benefit the inventor in their prospects of strategizing the patent filing.
International Patent Protection
There is no such protection that grants international protection. The protection and the rights are territorial and must be construed to have a national matter. The application and the following search and examination procedure will be carried out for several countries at once. Even if the applicant takes up the European application or rather the PCT application, in both cases the protection granted will be primarily national. Moreover, the applicant can apply to the respective national patent office if it needs to attain the rights in the respective country. There can be multiple arguments regarding taking up with the PCT application or rather going for an individual country. In both cases, the applicant will be seeking the right in an individual country. The only difference will be that the PCT application will help to give the search report for multiple countries making it advantageous for the applicant to get an idea for its invention.
Filing in the respective country- Germany, UK, and EPO
The first filing is important for the patent application as it determines the priority over other applications. More important is to have a comprehensive search which will help the applicant to understand the compatibility of the invention concerning the state of the art.
If the applicant files in Germany, it needs to be filed in the German Patent and Trademark Office (Deutsches Patent-und Markenam). Filing in this office has the advantage of getting low filing fees. The fees will be 40€* for an application submitted online with up to 10 patent claims, a 300€ search fee, or a 350€ search and examination fee. When the applicant applies to Germany, the office will prepare the search report within 8 months from the date of filing. This helps the applicant to have sufficient time to self-assess the application before the end of the priority year. The applicant can evaluate the state of the art and can make changes accordingly. Having high-quality searches at the German patent office, this office also takes applications in different languages where the translation can be done at a later stage. In Germany, filing in the English language is favorable since those applications are searched at priority. For all those applications filed in English, the term for filing the translation increases to 12 months after the filing date. A major advantage with Germany is with the possibility of suspending the examination procedure indefinitely, in case, the applicant has undecided European application and has not decided that whether it needs to file in Germany.
In the UK, the British Patent Office is suitable for English applications where the initial assessment is provided within 6 months from the filing date. The filing fees are 20£ immediately or 30£ for later payment, search fee for online application 130£, Examination fee for online application 80£. The UK office provides a compliance period of four years and six months from the date of filing or priority in which the decision over the patent whether it needs to be granted or refused is conveyed to the applicant. The examination process which can be delayed in Germany cannot be delayed in the UK.
Also, the applicant can file in the European Patent Office where the patent can be obtained with a single filing and examination process before a single patent office. The filing at the European Patent Office has to comply with that of patent protection required in the European Patent Convention. The online filing fee is 120€* for applications with up to 15 patent applications and up to 35 pages, designation fee 585€*, search fee 1300€*, examination fee 1635€.
The highly experienced team at the GPF has the expertise in filing and has filed and advised clients in multiple countries in Europe and even at the European Patent Office. The team has successfully led various applications in Europe to the final grant of the same.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
