Posted by Jeff Sweetman on Thu, Feb 25, 2010 @ 10:33 AM
We get this question fairly often.
Sometimes clients (even experienced patent attorneys) make the mistake of assuming the EPO is simply the patent office that caters to the countries of "Europe". It's actually a bit more complicated than that.
Without any additional context, the word "Europe" is generally used as shorthand for the European Union (the "EU"). The EU is a group of 27 member states that form a political and economic union with limited powers delegated to a central European parliament.
However, "Europe" for the purposes of patents is different. The member states of the European Patent Convention (the "EPC") include a number of countries that aren't members of the EU, such as Switzerland and Turkey.
Further complicating things is the fact that new countries are periodically added, either as full members of the EPC, or indirectly by becoming an extension state (extension states will be explained in another posting).
Simply looking up the list of EPO Member States on the EPO's website can potentially be misleading. This is because (for a PCT application) whether a particular country is covered by a European regional phase filing is based on the International Filing Date rather than when the regional phase is entered.
Interestingly, the Norwegian patent office experienced an unexpected fall-off in national phase filings immediately after 1 January 2008 when it became a member state of the EPC. Maybe it was the financial crisis that was in full swing by that time, but it's also possible some applicants made an incorrect assumption about Norway being included in all European regional phase filings after 1 January 2008.
So, what's the easiest way to determine whether a particular country will be included in a European regional phase application from a particular PCT application?
Look at the PCT bibliographic cover sheet, and find the field headed "(84) Designated States". After the word European, there is a bracketed list of country codes. This is the list of countries that will be covered by a European filing coming from this PCT application. If you don't already know it, look up the country code for the country of interest, and see whether it's in that list.
Posted by Elizabeth Golluscio on Thu, Feb 18, 2010 @ 12:41 PM
(This is the first of a series of posts about particular countries.)
Five good reasons for filing a New Zealand Patent application:
1. New Zealand is a relatively inexpensive country in which to get patent protection.
2. The New Zealand Patent Office provides fast, good quality examination. You can often use what you learn during New Zealand examination in other countries.
3. The New Zealand market is an ideal testing ground for new products and services. New Zealand consumers are sophisticated, well-educated, and relatively affluent - and readily accepting of new products and services.
4. New Zealand IP rights are robust. They are predictable and can be enforced at considerably lower cost than in many other markets.
5. Once a patent application is allowed by an examiner (and providing no opposition is filed), the grant process is quick, simple and cheap.
Thanks to Ian Cockburn at PIPERS, our agent in New Zealand, for this information; you can reach him online at icockburn@piperpat.com.
Posted by Jeff Sweetman on Mon, Feb 08, 2010 @ 03:27 PM
As you may know, the EPO generally implements fee and procedural changes on 1 April each year. I like to think of it as their way of making sure everyone has a little fun every April Fools' Day.
This year there are a number of important procedural changes that will apply to PCT applications entering the European regional phase from 1 April 2010.
We will soon provide greater detail about the changes, but in the meantime, important points to note include:
If the EPO was the International Search Authority (ISA), it will be compulsory for applicants to submit a response addressing the ISR and written opinion. The deadline for doing this is typically only a few weeks after regional phase entry, so applicants will need to act quickly.
We'll soon be posting in detail about these points, but please let us know if you have any specific questions in the meantime.
Posted by Jeff Sweetman on Wed, Feb 03, 2010 @ 04:01 PM
In theory, PCT application fees should make the PCT route to foreign patent filing more expensive (overall) than direct Paris Convention filings. However, reality isn't always that simple.
First, the additional 18 months the PCT buys allow better assessment of an invention's likely commercial value.
Second, the International Search Report (ISR) issued during this period often provides a reasonable indication of prior art that will be faced during national phase examination.
Via these advantages, the PCT enables applicants to dynamically adjust the average cost per filing in a way that direct Paris Convention filings simply don't allow. For example, PCT applications for inventions of low commercial value can be allowed to lapse, or national phase can be entered in fewer countries. Higher value applications can be filed more broadly.
Finally, if you can keep national phase entry costs low enough (get a free cost estimate via our PCT calculator), the PCT route can be cheaper overall even without taking these factors into account.
Maybe applicants should consider whether they can afford not to use the PCT!