Comparison of the PTO and EPO Patent Practices and Practical Tips

The objective of any patent office is to examine an invention described in a patent application, determine if the patent application meets the statutory requirements for a patent (including novelty, unity of invention, and other requirements), and grant a patent on an invention that meets the statutory requirements.

However, despite this common objective, the actual procedures and rules before different patent offices can vary quite a bit. For example, the patent procedure and rules for the U.S. Patent and Trademark Office and the European Patent Office vary quite significantly, and it is important to understand these differences to effectively obtain patents in both the PTO and the EPO.

The differences between the patent practice at the PTO and the EPO include: (1) different patent prosecution timelines; (2) different fee structures; and (3) different procedures to accelerate the examination process. Each of these differences and how a client can effectively navigate these differences is discussed below.

Patent Prosecution Timelines

The EPO just implemented a rule change on April 1 that significantly tightens the timeline for seeking divisional patents, with the published goal to further the EPO’s intended practice of allowing only one patent for each distinct invention.

The EPO and the PTO follow significantly divergent approaches on this issue. The PTO permits an applicant to file a seemingly unending string of continuation and divisional patent applications based on a single initial patent filing.

In the United States, some patent holders have adopted a strategy of filing a series of applications (which are clearly permitted under 35 U.S.C. §120) while waiting for the industry to settle on a technical direction so that the patent holder can craft its claims to read directly on a competitor’s product, sometimes ten or more years after the initial filing. In the United States, the practice of an unending string of continuation and divisional patent applications has limits due to the patent term which is 20 years from the earliest filed patent application.

In contrast, the EPO has not tolerated this practice. The EPO rules generally allow an applicant to file divisional applications at any time while a predecessor application is pending, but only for distinct inventions disclosed in the original. Thus, the number of such divisional applications would, in theory, be limited by the number of separate, identifiable inventions disclosed in an original patent application.

The recent EPO rule changes place a significant time limit on when a divisional application can be filed. In particular, the EPO rule change (European Patent Convention Rule 36(1)) requires that a divisional application may be filed only if the earlier application is still pending and either: (1) 24 months have not yet elapsed from the EPO’s first Examination Report in regard to the earliest application for which a communication has been issued; or (2) 24 months have not yet elapsed from any communication in which the EPO has objected that the earlier application is directed to multiple, distinct inventions (EPO Rule 82).

The rule also has a transition period for currently pending applications that allows divisionals to be filed until Oct. 1, 2010, even though the 24-month period has expired.

Practice Tips

In the EPO, given the new time limits to file divisional applications, it is critical for an patentee to determine early which claims are the most important, which claims are important enough to file a divisional (at a cost of $5,000 or more), and which claims might be dropped in the EPO. In addition, for any currently pending EPO applications, a patentee must decide by Oct. 1, 2010, whether or not to file any divisional applications.

Filing Fees

The EPO and PTO also vary drastically in the area of filing fees and extra claim fees.

While the EPO filing fees for a patent application with a typical number of claims (including a divisional patent application) can be more than $5,000, the PTO filing fees will be around $1,000. In addition, a small entity (a company with less than 500 employees, a sole inventor or a university) can pay less than $500 in PTO filing fees.

The reason for the disparity in filing fees is that the PTO has always ensured that small companies and independent inventors can file a patent application, whereas the EPO is focused almost exclusively on larger companies.

The other fees areas in which there is a disparity between the PTO and the EPO is extra claims fees. However, this disparity exists for a different reason than the filing fees.

The PTO has modest extra claims fees ($52 for each claim after 20 claims and $220 for each independent claim in excess of three ¹See 37 CFR § 1.16(h) and (i).), while the EPO has extra claim fees of approximately $282 for the 16th claim and each subsequent claims up to 50 and then $704 for the 51st and any subsequent claims. ² See Supplement 1 to OJ EPO 3/2010 at p. 4. The policy behind the high EPO extra claim fees is to reduce the examination backload at the EPO by reducing the number of claims to be examined through a harsh monetary penalty for any claims in excess of 15.

Practice Tips

For a patent application written and prepared for initial filing in the PTO, there are often many claims and many independent claims. Given the high EPO filing costs and extra claim fees, it is important to reduce the total number of claims before filing into the EPO to avoid the extra claim fees. One practice that helps to reduce the number of claims in the EPO are multiple dependent claims.

Procedures to Accelerate the Examination Process

Another area in which the PTO and EPO vary significantly is in the process for accelerating the examination process of a patent application.

The PTO traditionally allowed a relatively easy process to expedite the examination of a patent application due to the age of the inventor, the health of the inventor, certain technology areas, and a showing that a third party is infringing the patent claims. However, the PTO recently changed the rules (except for expedited examination based on green technology ³See http://www.uspto.gov/patents/init_events/green_tech.jsp (79 PTCJ 154, 12/11/09) or the age or health of the inventor) to make it extraordinarily burdensome to meet the standards to expedite the examination of a patent application. The standards now in place are: ⁴See PTO Manual of Patent Examining Procedure §708.02(a).

(A) A petition and fee must be filed using the electronic filing system. The petition fee is not required if the claimed subject matter is directed to environmental quality, the development or conservation of energy resources, or countering terrorism.

(B) The application must contain three or fewer independent claims and 20 or fewer total claims. The application must also not contain any multiple dependent claims.

(C) The claims must be directed to a single invention. If the PTO determines that all the claims presented are not directed to a single invention, the applicant must make an election without traverse in a telephonic interview.

(D) The applicant must be willing to have an interview (including an interview before a first office action) to discuss the prior art and any potential rejections or objections with the intention of clarifying and possibly resolving all issues with respect to patentability at that time.

(E) At the time of filing of the petition, the applicant must provide a statement that a pre-examination search was conducted, wherein the statement must have a significant amount of detail about the search and that the search encompasses the disclosed features that may be claimed so that an amendment to the claims (including any new claim) that is not encompassed by the pre-examination search will be treated as not fully responsive and will not be entered.

(F) At the time of filing of the petition, the applicant must provide an accelerated examination support document that has an information disclosure statement citing each reference deemed most closely related to the subject matter of each of the claims, an identification of all the limitations in the claims that are disclosed by the reference, a detailed explanation of how each of the claims is patentable over the references cited with the particularity, a concise statement of the utility of the invention in each of the independent claims (unless the application is a design application); and a showing of where each limitation of the claims finds support in the written description of the specification.

As can be seen from the above process, the PTO has a very onerous and expensive process for most accelerated patent applications. In addition, the PTO may reject many accelerated examination requests based on a failure to meet one or more of the requirements.

In contrast, the EPO has a very simple request for expedited search and examination, or “PACE,” that does not require any fee and is a simple one-page request that is always accepted. ⁵See European Examination Guidelines. Ch. VIII, 3. Once the PACE request is filed, the EPO expedites the searching and examination so that the applicant can expect a search report in about three months and an office action in about six months. If the PACE request is accepted, the deadlines to response to an office action is slightly tighter, but the PACE request does not involve the onerous procedural requirements.

Practice Tips

For patent applications in certain technology areas or with extenuating circumstances in which quick examination is desired, the patent applicant can request expedited examination in the PTO and the EPO. However, for the majority of patent applications, the PTO expedited examination process is onerous, but the patentee can still file the PACE request with the EPO.

If the patent applicant does file the PACE request, it may be possible to use a positive examination of the EPO case during the US prosecution to craft better claims. In addition, the EPO examination may allow a patent applicant to make better foreign filing decisions in other countries if the EPO patent application is filed early and the PACE request is also filed.