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Strategies for saving cost at the European
Patent Office
19th June 2010. J G Marshall
Serjeants 1
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The End
19th June 2010. J G Marshall
Serjeants 2
Thank you for your patience
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Per page costs and per claim costs
€13 per page over 35
€210 per claim over 15 but less than 50€210 per claim over 15 but less than 50
€525 per claim over 50
19th June 2010. J G Marshall
Serjeants 3
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Shorter specifications
Fewer claims
Drafting strategy should be:
Fewer claims
(subclaims should be patentable if the
parent claim had been found to be
invalid)
19th June 2010. J G Marshall
Serjeants 4
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Lercanidipine patent
� Best-selling drug for controlling blood
pressure
� Italian Patentee
� Patent drafted in UK
� 16 pages
� 22/23 years old and still in force through
SPCs
� Validity never challenged
19th June 2010. J G Marshall
Serjeants 5
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Same drug company
� Now uses US firm to do initial drafting
� New drug patents average 200 pages � New drug patents average 200 pages
plus per patent application
19th June 2010. J G Marshall
Serjeants 6
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The PCT influence
All overseas patent applications are 200+
pages long
19th June 2010. J G Marshall
Serjeants 7
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The solution
� Write the original US provisional
specification in the USA using US
attorneys
� Write the PCT specification in the UK
using UK attorneys
� Instruct the UK attorneys to draft their
own specification suitable for the EPO
19th June 2010. J G Marshall
Serjeants 8
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The cost of EPO renewal fees
400
600
800
1000
1200
1400
1600
Re
ne
wa
l F
ee
in
Eu
ro
s
19th June 2010. J G Marshall
Serjeants 9
0
200
400
3 4 5 6 7 8 9 10 11 12 13 14
Re
ne
wa
l F
ee
in
Eu
ro
s
Renewal Year
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Compare the cost of national renewal fees after grant
Record grant in few countries: EPO does
not compare well
use PACE to speed up the grant
Record grant in many countries: EPO
compares very well indeed
do not use PACE
But monitor the client’s needs regularly
19th June 2010. J G Marshall
Serjeants 10
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An aside (relevant as yet to the UK only):
Use the Korean Patent Office as ISA
Rapid search reportRapid search report
Often favourable
Can be relied upon to guarantee rapid
processing of a corresponding UK
national phase application
19th June 2010. J G Marshall
Serjeants 11
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2 sets of rules in the EPO
� PCT application with EPO as ISA
Multiple inventions
� PCT application with EPO as ISA
� Non-PCT application or PCT but EPO is not ISA
19th June 2010. J G Marshall
Serjeants 12
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PCT application with EPO as ISA
If there are two inventions the EPO will
refuse to carry out a second search
Only option is to file one or more divisionals
19th June 2010. J G Marshall
Serjeants 13
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Non-PCT application or PCT but EPO is not ISA
If there are two inventions then EPO will
search the first and demand a second
search fee for the second and
subsequent inventionssubsequent inventions
Armed with the second and subsequent
search reports, you may consider
whether or not to file divisionals
19th June 2010. J G Marshall
Serjeants 14
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Conclusion
Select very carefully whether or not to
choose the EPO as ISA if there is a
possibility of multiple inventions/multiple
search feessearch fees
19th June 2010. J G Marshall
Serjeants 15
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Non-PCT application or PCT but EPO is not ISA
Do you know if the EPO will demand
second and subsequent search fees?
Consider this case history.
19th June 2010. J G Marshall
Serjeants 16
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Trundlehumper platform
Claim 1:
2 springs on the same side of the pivot point, the first spring being lighter than the second. Rotation of the platform in a first direction is resisted by compression of the first spring followed by compression of the second spring.
19th June 2010. J G Marshall
Serjeants 17
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Trundlehumper platform
Claim 2:
A trundlehumper platform according to claim 1 in which the two springs are coaxially aligned.
19th June 2010. J G Marshall
Serjeants 18
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Trundlehumper platform
Claim 3:
A trundlehumper platform according to claim 1 or claim 2 in which a second pair of springs is provided, similar to the first but opposing rotation of the platform in a second direction opposite to the first.
19th June 2010. J G Marshall
Serjeants 19
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How many search fees?
� EPO demanded that two extra search
fees be paid within a period of one month
� I argued but failed to persuade the
examiner who said that he would not examiner who said that he would not
examine claims 2 and 3 if they were not
searched
� I paid the extra search fees under protest
� Only new prior art showed one spring on
each side of pivot point
19th June 2010. J G Marshall
Serjeants 20
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� I amended claim 1 to specify that the first
and second springs were axially aligned
� All three claims were allowed
� I requested a refund of the search fees
paid under protest
� Request refused
� Applicant decided not to appeal that
refusal
19th June 2010. J G Marshall
Serjeants 21
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Strategy?
� Refuse to pay additional search fees for
dependent claims
Do not expect a refund on any additional � Do not expect a refund on any additional
search fees paid under protest
� Insist that examination be carried out on
the independent claims as searched and
on all dependent claims
19th June 2010. J G Marshall
Serjeants 22
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Second case history
� Claim 1: Electroluminescence material
for a LED
� Claim 2: First method for making the � Claim 2: First method for making the
material of claim 1
� Claim 3: Second method for making the
material of claim 1
� Claim 4: LED comprising the material of
claim 119th June 2010. J G Marshall
Serjeants 23
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� Examiner did not search but demanded
three additional search fees, for the
inventions of claims 2, 3 and 4
� I amended claims 2 and 3 to an ‘either or’
form and have argued the issue
� The result is still awaited
19th June 2010. J G Marshall
Serjeants 24
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Oral Proceedings
EPO Examiners now tend to give either a
refusal or a summons to Oral
Proceedings after even one response to
an examination reportan examination report
The issue is whether or not they think that
the application is near to allowance
19th June 2010. J G Marshall
Serjeants 25
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Oral Proceedings
� Oral Proceedings (OP) are massively
expensive to a client
� Better a summons to an OP than a
refusal
� Always request an OP at the end of any
response involving argument with the
Examiner19th June 2010. J G Marshall
Serjeants 26
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But if summoned to OP:
� Respond as early as possible
� Include amended claims� Include amended claims
� Include one or more auxiliary requests
� Request a phone conversation with the
examiner
19th June 2010. J G Marshall
Serjeants 27
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Summary of strategy options:
1. Shorter specifications
2. Fewer claims
3. Constantly monitor rate of progress3. Constantly monitor rate of progress
4. Make careful use of PACE
5. Choose the ISA carefully
6. Be prepared to argue with Examiners
who demand extra search fees
7. Make better use of Auxiliary Requests
19th June 2010. J G Marshall
Serjeants 28
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The End
19th June 2010. J G Marshall
Serjeants 29
Thank you for your patience