The much-trumpeted ratification of the London Agreement will shortly deliver welcome fee reductions in patent translation costs and it is believed, will come into effect on 01 May 2008. However, the Administrative Council of the EPO quietly announced in mid-December that it is to raise its fees.
The major cost increases of concern are to be found in the claims fees and maintenance fees. From 1st April 2008 excess claims fees will be due for each claim in excess of 15. For claim 16 and for each claim thereafter the cost will rise from the current € 45 per claim (under the current fee schedule for each claim in excess of 10) to €200 per claim.
Further increases in costs are to take effect on 1st April 2009. There will be a €12 charge per page in excess of 35 pages and a further dramatic hike in charges for each claim above the 50th claim in each patent application of €500 per claim.
It seems that the increased charges are being imposed to meet the operating costs and secondly, to deter applicants from filing large specifications with long sets of claims, thus easing the considerable workload on examiners.
From some patentees' perspective, the above two points may be contrary to their interests. Patentees need to be able to protect their inventions as comprehensively as possible and in certain technical areas such as the biotech, agrochemical, horticultural, and pharmaceutical sectors, this cannot generally be done effectively with just 15 claims per application. In our view, such fee increases are likely to make patentees think harder about the potential merits of filing in fewer territories in Europe at the national level, and gaining faster grants by doing so even with the translation charges being paid upfront.
The gap in relative outlay that used to be provided as one of the reasons for having a European Patent Office as opposed to a bundle of national patent offices is getting narrower as the EPO becomes more expensive. If filing strategies are considered diligently by patentees early on, then the cost of acquiring patent coverage in national territories that matter commercially within Europe, as opposed to acquiring similar coverage using the EPO, may start to appear attractive. The national route may even appear to be a more desirable option than using the EPO.
A modern example of where a patent office has run into trouble on introducing unilateral limits on matters that appear unacceptable to patentees is that of the US Patent and Trademark Office (USPTO). At the end of 2007 the USPTO tried to bring in limitations to various longstanding practices peculiar to the USPTO that affect patent costs, such as inter alia claims coverage, numbers of divisional applications, and numbers of continuation applications that one can apply for based on an original filing. This unilateral action was pushed through without regard to the many objections raised by IP practitioners and lobbying groups prior to the planned implementation of the changes. Understandably, and not altogether surprisingly, this action was met with an application for an injunction to prevent the USPTO from bringing into force measures which are seen by many as entirely unreasonable. The injunction was granted and a legal status quo is now in place while legalities are sorted out.
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