Maiorana, P.C.

Patent Law - Established 1998

Filing in the European Patent Office (EPO) Based on a PCT Filing

When a PCT application is filed, all of the countries that cooperate with the European Patent Office (also referred to as EPO or EP) are available for future filing. The EPO is considered a regional Patent Office. There is not a separate fee for selecting the EPO countries when you file a PCT application, but there are follow up fees down the road for each country. Remember, a PCT is like buying an option to file down the road. An EPO Patent filing is part of the "down the road".

With a PCT in place, a decision must be made whether to file in the EPO. The EPO decision is due within 31 months of the earliest priority date discussed here. Direct filing in particular EPO countries (or directly from a PCT) is also possible. We ask for 60 days notice.

A filing in the EPO is fairly expensive - typically $6,000 or more. This is in addition to the costs of the PCT. It is possible to file directly in the EPO without a PCT. The due date for a non-PCT filing would be 12 months from the earliest priority date.

After the initial EPO filing, the EPO will conduct a search, prepare a search report, and send an Office Action. A response to the search report typically needs to be filed - similar to responses filed in a US Patent Application. There are costs associated with responding to the Office Action. These costs are in addition to costs for the initial EPO filing.

If the application is approved at the EPO level, each individual country within the EPO where protection is desired needs to be validated. This involves a fee to the particular country. The validation includes a translation to the native language of the designated country. The costs associated with validating each country are typically $3,000 or more.

It is very difficult to reduce costs when filing internationally. Our fees are typically only a small portion of the overall costs. So even if we are a very cost efficient Patent Attorney, the other costs involved are substantial. Most small clients do not file internationally due to the expenses involved. Larger clients tend to pick the most important patent applications to file internationally.
  • Chris Maiorana
  • April 2018
Topics: EPO Patent Process, PCT application, affordable PCT patent lawyer, priority date
Related: Patent Priority Date PCT Patent Practice

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