Is there any benefit to a UK patent if you can get a European patent?

The UK economy continues to be one of the largest in the world, so it is no surprise that the UK is often a key country for patent protection along with other strong European countries such as France and Germany.

Non-UK based companies and overseas Patent Attorneys often overlook filing at the UK Intellectual Property Office (IPO) in favour of the European Patent Office (EPO) because of the procedural and economic efficiencies offered by the latter, however there are several advantages to prosecuting applications in the UK, even if this is alongside a European application. In this article I discuss the key considerations of cost, speed and likely outcome of prosecuting patent applications at the UKIPO compared with the EPO.

UK companies usually file a UK patent application as an initial application and then later file an EPO application claiming priority from the UK application. Often the UK application is then abandoned since it is considered that it is unnecessary due to the coverage of the UK provided by the EPO application and due to a worry about double patenting. However, the points discussed below should be considered before abandoning a first filed UK application.

Claims fees

UK applications are allowed 25 claims without incurring any excess claims fees, with a fee of only £20 for each claim thereafter. The EPO on the other hand imposes fees of €245 for claims 16 to 50, and €610 for claims 51 onwards.

Official fees

Official patent office fees are significantly lower at the UKIPO than the EPO. Of course, one must balance the economy of using the European route to avoid having to pay these official fees in each country in Europe, however if there are only a few key countries of interest, it may be significantly cheaper to prosecute the applications individually rather than using the EPO.

This effect can be particularly noted with regard to fees for additional searches when the examiner considers an application to relate to more than one invention. It is advantageous in most cases to pay for additional searches to have all of the subject matter of interest considered. This provides valuable information for the evaluation of whether to go ahead with the filing of any divisional applications, which particularly in the EPO are very expensive. Additional search fees in the EPO are about eight times higher than in the UK: €1,350 compared with £150.

Renewal fees

Renewal fees are paid to patent offices to maintain patents in force after they are granted, however some offices, including the EPO, require payment of renewal fees while the application is still pending. These fees are not insignificant at the EPO (over €1,000 per year for the 6^th year onwards). For UK applications the requirement to pay renewal fees is offset until the patent is granted.

Speed

UK applications are subject to a compliance period of four and a half years. That is to say the application must be in order for grant by the end of this period or it will be refused. European applications are not subject to such a timescale, and it is not unheard of for applications to still be pending 10 years or more after filing!

If you enter the UK national phase and European regional phase from a PCT application, the UK will almost always honour a positive opinion of the International Searching Authority in the International Phase, whereas the EPO requires that it conducts a supplementary search on entering the European regional phase if the EPO was not the International Searching Authority, thus slowing the procedure to grant.

Added subject matter

Overseas Patent Attorneys, particularly US Patent Attorneys, are often surprised by how strictly added matter restrictions are imposed by the EPO, either leading to frustration that amendments to the claims made in other countries are unacceptable to the EPO, or to a greatly increased number of examination reports in prosecution as they attempt to navigate the stricter rules. The UKIPO takes a more lenient approach to amendments and added matter, which can make prosecution easier and faster, particularly if attempting to mirror the prosecution of the corresponding patent in the US. Another result of the more lenient approach at the UKIPO is that, in some cases, a broader scope of protection can be achieved in the UK than would be allowable at the EPO. 

Multiple independent claims

Similarly to the more lenient added subject matter rules mentioned above, the UKIPO is not as strict as the EPO with regards to multiple independent claims in the same category. This can be more suited to patent applications drafted in countries with more a more relaxed approach than the EPO on this issue, such as the US.

Business methods and software patents

The UK economy is dominated by the service sector, contributing around 80% of GDP. The UK is particularly strong in financial services, where new technological developments often sit on the fringes of patentability. It is important to consider the stance each patent office takes on patentability of business methods and software patents before filing with that office.

In the UK, patentability of computer-implemented inventions is decided by first determining the actual inventive contribution defined by the claims, and then this contribution is assessed to determine if it falls solely within excluded subject matter, for example if it is purely a business method. Finally, the inventive contribution is assessed to determine if it is technical in nature, and would therefore be acceptable to the UKIPO. The EPO on the other hand passes the claim as acceptable in this regard if there is at least one technical feature in the claim. However, at the EPO novelty and inventive step are only assessed taking regard of the technical features in the claim.

The UKIPO and EPO approaches generally arrive at similar conclusions, however the subtle differences could be important to your invention and should be considered on a case-by-case basis with the expert guidance of a Patent Attorney. Get in touch with our software expert David Keston for more details.

Double patenting

You may wish to file a UK and European application running in parallel, and even have both granted if the claims are of different scope. If the claims are of substantially the same scope, the automatic revocation of the UK patent when the European patent grants can be avoided by withdrawing the UK designation on the European patent before it grants. Please contact us for further details and to discuss the best filing strategy for your business.

Benefit from the benefits!

The take home message is do not automatically assume that an EPO application is the default approach. Consider the benefits. Your Patent Attorney can advise you on the best filing strategy for your business.

This article (and any information accessed through links in this article) is provided for information and educational purposes only. This article does not constitute professional legal advice. Professional legal advice should be obtained before performing any action based on the information provided in this article. All professional legal advice will be given in accordance with Creation IP Terms of Business. Please contact us for further information.