Reforms Streamline European Patent Requirements

By Andre Theriault, M.E.Sc., P.Eng., Patent Agent, Ogilvy Renault LLP

Good news for those seeking patent protection in Europe: a set of recent reforms has streamlined requirements and should bring costs down.

Firstly, translation requirements have been simplified under the London Agreement, which came into force on May 1, 2008. In the past, translation costs associated with obtaining rights in individual European countries have been prohibitive such that patentees have resisted validating their European patent in more than a few member states or even obtaining them in the first place.

The London Agreement provides that states having a national language that is also one of the three official languages of the European Patent Office (EPO) will waive the translation requirements completely. According to EPO practice, the claims will still be available in the three EPO languages (English, French and German). States having no national language in common with the EPO will waive the translation requirements if the European patent has been granted in the EPO language prescribed by that state for that purpose. These states may still require that the claims be translated into one of their national languages. Since the claims are generally shorter than the description, translation costs will be significantly reduced.

Secondly, a revised European Patent Convention (EPC 2000) came into effect on December 13, 2007, deleting some provisions and simplifying others to achieve shorter prosecution time and provide more flexibility. For example, an applicant may now restrict the scope of its patent of its own accord, in a central proceeding before the EPO with an effect in all member states. This was not possible previously and now allows the narrowing of claims or the revocation of a patent due to prior art found after the grant of a patent.

Finally, changes in the fee structure at the EPO will encourage applicants to keep the number of claims to a minimum and make their applications more concise. According to current practice, each claim in excess of 10 is subject to an excess fee of €45. As of April 1, 2008, excess claim fees will only be applied for claims in excess of 15 but the amount will be increased to €200 per claim.

On April 1, 2009, more changes to the fee structure will take effect. Each claim in excess of 50 will be subject to a prohibitive excess claim fee of €500. Also, an additional €12 will be applied for each page above 35 in an application. However, it will no longer be required to pay a separate fee to designate each member state in which patent protection is sought. Instead, a fixed fee of €500 will be introduced to automatically designate all of the member states. This will represent savings of €60 for applicants who normally designate all member states.

Taken as a whole, these changes to the European patent system should encourage applicants to make their applications more concise and potentially reduce the costs associated with obtaining patent rights in European countries.

Ogilvy Renault LLP has multi-disciplinary teams in Montreal, Ottawa, Toronto, Québec, and London. To reach the firm’s MaRS office, contact mars@ogilvyrenault.com.

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