The “obvious” thing for a UK patent applicant is to file a UK priority application; but in a survey of 10 major UK companies with in-house departments, 5 had a policy of filing EPC priority applications with a search request. An Espacenet search revealed that BASF, Bayer, Philips, and Siemens were also filing EPC priority applications. In total, the EPO receive 30 000 “first” applications per year.
The author may as well not beat about the bush: in his opinion, in many technological areas (subject to national security considerations), EPC priority filings should be the norm for any UK-based serious international patenter (and at least for German- and Dutch-based ones, too). And a client who is deterred by the upfront cost of an EPC priority filing compared with a UK priority filing arguably should not be in the patenting game at all, when the total cost of patent protection in the G7 countries over the full 21 years from priority is around £ 100 000 in current prices, and when even coverage only in the UK, the USA, and Germany costs a substantial proportion of this.
Why do companies favour EPC priority filings? The reasons are these:
• The EPO search comes back within the priority year (usually well within the year). Although the cost is greater than (say) a UK filing with a search request, it is believed in many technology sectors that the EPO search is better.
• If the extra quality of the EPO search is such that the invention is, on that account, abandoned at the end of the priority year, then the extra cost is immediately more than recouped.
• If at the end of the priority year a substantive EPC application is filed – or a substantive PCT application with the EPO as the International Searching Authority – then the search fee is subject to a total or partial refund. Moreover, the case is likely to be allocated to the same examiner, which (provided his original consideration of the priority application was reasonable) saves attorney time.
• In the case of Continental companies, EPC priority filings are readily compatible with filing in English, as is now commonly preferred. The attorney, although in general not a mother-tongue English speaker, writes the priority application in English. The use ab initio of English by such an attorney is believed to introduce fewer errors than would be caused by translation of (say) a German or Dutch text into English for the US application, and in any case reduces the scope for argument over the priority enjoyed by the US claims. (Similar advantages arise in other English-speaking countries, but it is usually the USA which is of most commercial concern.) Moreover, English is generally cheaper to translate into languages such as Japanese than are Continental languages. Depending on the nationality of the patentee and on the countries validated after EPC grant, under the London Translation Agreement the full text may never have to be put into the patentee’s local language, and the absence of a priority text in that language is of little significance.
In operating such a system, there are things which need to be managed, as follows:
• It is best actively to withdraw the EPC priority application shortly after the priority has been successfully claimed so as (a) to avoid cluttering up the applicant’s records, and (b) to avoid any risk of “toxic priorities” (Malcolm Lawrence, CIPA Journal, 42(9), 518-527 (September 2013)).
• UK companies, if concerned, can avoid any possible risk of infringing Section 23 of the UK Patents Act by filing the EPC priority application via the UK IPO. Clearly, there is not much point in filing an EPC priority application if a Section 22 prohibition order is likely to be issued and maintained (for then the application cannot be sent to the EPO for searching). But in many technologies Section 22 orders are almost unknown and, if issued, rapidly lifted. (They are in fact less common even in defence technologies than most outsiders to the defence industry imagine.) If an order is issued and maintained, then the EPC application can be converted into a UK national application.
Mike Jewess 17 April 2014
Dr Michael Jewess was latterly Chief Counsel, Intellectual Property at BAE Systems and now is an attorney at K2, the network of patent and trade mark attorneys developed by Keltie LLP.
For a comprehensive treatment of patenting costs, tactics, and strategy – and of Sections 22 and 23 – see Chapters 5 and 16 of Michael Jewess, Inside intellectual property – best practice in intellectual property law, management, and strategy (Chartered Institute of Patent Attorneys, London, 2013, 516 plus xxviii pages, £ 35 for CIPA members, £ 40 for non-members, details and order form at www.researchinip.com/iip.htm).
I think there are still situations where UK priority filings are preferred. Often in tech transfer deferring costs can be very important, and the cost of a UK priority is a lot more palatable than an EPC one. The UK IPO search is pretty good, and will often give good guidance to the prior art situation.