Patent Information : Foreign Filing: Europe

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What to expect:

With the EPO (European Patent Office) the prosecution process typically takes four years until grant. After the application is granted you will be required to translate only the claims into the two remaining official languages of French and German. Then comes the validation stage, when you will be able to validate in eligible countries, typically within 3 months. Translation requirements differ from country to country, some require no translations, some require translation of only the claims, and some require the entire application to be translated. 

Regional Phase Deadline:

The regional phase deadline in Europe is extended to 31 months from the priority date.

Excess claims fee: 

The official excess claims fee must be paid within six months after receiving the notification from the EPO. These additional fees can be paid when filing the regional stage or at a later stage, with the reply to Communication pursuant R.161 & 162. The time frame to file the reply and amend the claims usually is six months after the regional entry. If the claims set is amended to comprise of only 15 claims, no additional fees are to be paid.

Amendments:

In order to help and better the understanding of the EPO examiner, it is advisable to file the Working Copy (WC) of the amendments to be filed.  A Working Copy is a Word document showing tracked changes made from the original PCT application up to this regional phase in Europe so that the EPO examiner can easily reach the corresponding amendments.

PACE Request:

A PACE request will accelerate the search and/or examination of the application, this will speed up the process until grant.

Member States:

The member states of the EPO are Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Macedonia, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, and the United Kingdom.

Extension Countries:

The “Extension States” are States that are not EPC Contracting States and, thus, cannot be “designated” in the European patent application. However, the European patent (application) can be “extended” to said States under a corresponding bilateral “extension agreement,” provided that the “extension fees” are timely paid.

The extension countries include: Bosnia y Herzegovina (BA) and Montenegro (ME)

Validation Countries:

Since March 2015 it is possible to validate European patent applications in Morocco, where, after validation, they will confer essentially the same protection as patents granted by the EPO for the other member states of the European Patent Organization. Validation for Morocco is deemed requested for any European or international application filed on or after 1 March 2015. As with the extension states designation, the validation fee must be paid at the time of performing the entry into the European Phase.

Non-member Validation countries include: Morocco (MA) and Republic of Moldova (MD), Tunisia (TN), and Cambodia (KH)

Grant and Annuity:

The grant fee must be paid within four months from the EPO communication. Annuities apply to pending applications and are due on anniversary of the international filing date.