The European Patent Office (EPO), is a trilingual patent office in Munich, Germany, created as a result of a treaty known as the European Patent Convention (EPC). The EPO grants “Europatents” that are good in all member countries. An inventor can make one patent filing in the EPO and if a Europatent is issued, the patentee can then register and file translations of the patent in whatever individual member countries the patentee has selected. The patent office in each EPC country does not have to review the application separately. Unless the inventor is a resident of one of the EPO member countries, the inventor must file in the EPO via a European patent agent.
There is an additional advantage for filing at the EPO. The European Patent Convention is considered the same as a single country (a jurisdiction) under the Paris Convention and the PCT. Therefore, a U.S. inventor can file at the EPO and the effective filing date will be the same as the inventor’s original U.S. filing date (provided the application is filed within the one-year foreign filing rule).
Although quite rigorous, the examination procedure at the EPO is generally smoother than the PTO because the examiners are better trained (all speak and write three languages fluently) and because they take the initiative to suggest how to write the inventor’s claims to get them allowed. The EPO application is published for opposition 18 months after filing. During the pendency of the EPO application, an annual maintenance fee must be paid to the EPO.
If the inventor’s application is allowed, the inventor is granted a Europatent that lasts for 20 years from the inventor’s filing date (provided the inventor pays maintenance fees in the selected member countries). The patent is automatically valid in each member country of the EPC that is designated in the inventor’s application, provided that the inventor registers, files translations, and appoints an agent in each country.
Drawbacks to EPO Filing
There are some drawbacks for U.S. inventors. Filing in the EPO is very expensive and requires payment of an annuity to the EPO each year the inventor’s application is on file there, until the Europatent issues. If the inventor registers the patent in any EPC member country, the inventor must pay annuities in that country.
Locating Foreign Patent Agents
U.S. inventors who want to file abroad will probably need to find a foreign patent agent who’s familiar with patent prosecution in the countries where protection is desired. In most countries, patent professionals are called “agents” rather than attorneys. As in the U.S., foreign agents are licensed to represent clients before their patent office, but not their courts.
One method of locating a foreign agent is through a U.S. patent attorney because most attorneys are associated with one or more patent agents in other countries. Names of agents can also be located:
- in the telephone directory of the city where the patent office of the foreign country is located
- at the consulate of the country (most foreign countries have consulates in major U.S. cities)
- for purposes of filing in Europe, by hiring a British firm of patent agents to do all EPO filings or hiring a German firm of patent agents in Munich. Although perhaps not as fluent in English as their British counterparts, these agents have the compensating advantage of their physical proximity to the EPO; also, consult the listing of registered patent agents and European law firms at the EPO’s page of website links (http://www.epo.org/applying/online-services/representatives.html), and
- by conducting an Internet search for suitable patent agents; those who have websites can be located easily by using search terms like “Japanese patent agent.”
When dealing with foreign patent agents … If possible, seek references or background information regarding the services of a foreign patent agent. In addition, seek a written estimate of the expected costs. Some foreign patent agents, like some U.S. patent attorneys and agents, are not competent or are inclined to overcharge.
Portions of this article are derived from Nolo's Patents for Beginners.