Top Considerations regarding European Patent Law from a US perspective
- Absolute Novelty – Europe requires (for the most part) absolute novelty so there is no disclosure grace period before filing the patent. That means the invention cannot have been disclosed publicly before filing the patent. In the US inventors have a one-year grace period from the first public disclosure of their invention to file an application.
- Computer Method Inventions – Computer programs per se are not patentable subject matter in Europe. However, depending on how the technology is characterized, the invention may be claimed. In the US, software is not specifically prohibited but Supreme Court decisions have restricted patentability and a thoughtful approach must be adopted in software or app patent filing.
- Europe has much higher official fees – and more frequent annual maintenance fee payments before grant. Many clients filing in Europe (with admittedly high official fees for filing) are surprised by the high, and rapidly increasing, annuities that are due for a pending application, of an application which the client is unsure will move to grant. For example, the 3rd annuity is 465 Euros, while the 4th is 580 Euros and the 5th is 810 Euros, almost double the 3rd annuity. In the US, maintenance fees are only due 3.5, 7.5 and 11.5 years after grant and are much lower, namely $400, $900, $1850 for micro-entity.
- Examination is much slower in Europe – We have seen delays of up to six or eight years before substantive examination really gets underway, and a four-year delay for examination is not unusual. Once examination commences, the prosecution proceeds at a normal pace, however US clients are often surprised by how long it takes to get into substantive European examination.
- European patents, once granted, must be validated in each of the countries where protection is sought. There is a fee of a few hundred dollars (including attorneys’ fees) for validation in each of the countries. Even though the European system does away with translations from English for the EPO application, many countries still require translations at the validation phase and this can add significantly to the cost. In the US, no translations or validations are required.
Despite the roadblocks facing a software or app patent application in Europe, it is still worthwhile since the invention can often be protected indirectly through clever drafting. We can advise on all aspects of US and European filing, and can provide a patent filing strategy at no cost.