European Patent Practice

Pay less when the EPC allows it

Not every applicant should pay the standard EPO fees.

The EPC contains fee-reduction mechanisms for eligible applicants.

Qualifying micro-entities may benefit from a 30% reduction on several important EPO fees, including filing, search, examination, designation, grant and renewal fees. Eligibility depends on the applicant’s status and filing history; in particular, the current micro-entity regime includes a five-application threshold over the relevant five-year period. (EPO Guidelines)

Language-related reductions may also be available in appropriate cases, while Euro-PCT applications can present additional opportunities for savings depending on what occurred during the international phase.

The practical question is simple:
Are you paying the fee that applies to you — or merely the standard fee?

We check available reductions before major fee payments rather than treating official fees as fixed costs.

Decide whether speed actually helps you

Fast prosecution is a tool, not a default objective.

A Euro-PCT application will ordinarily not be processed by the EPO before expiry of the 31-month period. An applicant who has a commercial reason to move earlier can expressly request early processing under Article 23(2) or 40(2) PCT, provided the requirements for European-phase entry are fulfilled. (EPO FAQ)

Further acceleration may be available during European prosecution, including through the EPO’s PACE framework. (EPO FAQ)

Acceleration can make sense where:

• a patent is needed for financing or licensing;
• enforcement may become relevant;
• a product launch is approaching;
• commercial certainty has become valuable;
• or a pending European right is holding up another transaction.

But speed can also remove useful flexibility.

Delaying expenditure, watching competitors, coordinating prosecution in other jurisdictions or preserving time for claim strategy may sometimes be worth more than an early grant.

So we ask a different question:
What does the applicant gain by moving faster?

Do not enter the European phase on autopilot

Euro-PCT entry is an important strategic checkpoint.

It is often the first opportunity to reconsider the international application specifically through an EPO lens.

Rule 161 EPC may require or permit the applicant to comment on the international-stage opinion and amend the application. Where the relevant conditions apply, the Rule 161 period is six months. (Rule 161 EPC)

Before allowing the case to continue unchanged, we ask:

Are these still the claims the applicant wants examined in Europe?

• Has the international search exposed an avoidable weakness?
• Can a voluntary amendment remove a foreseeable clarity or inventive-step issue?
• Are valuable fallback positions properly supported?
• Are there unnecessary claims generating additional fees?
• Has the commercial product moved since the PCT was filed?

European-phase entry should therefore be treated as a prosecution decision, not merely an administrative filing event.

Sometimes six months can be removed from the procedure

For certain Euro-PCT applications, the applicant can waive the right to receive the Rules 161/162 communication if the necessary requirements have already been dealt with on entry.

The EPO expressly notes that a valid waiver can shorten the period before search or substantive examination starts by at least six months. (EPO FAQ)

This is a small procedural choice with a potentially significant timing effect.

It is also a good illustration of our approach:
European prosecution can often be improved by decisions that are invisible in the claims themselves.

Amend early — when early amendment improves the case

There is no prize for amending a claim simply because amendment is available.

A well-timed voluntary amendment may:

• align the claims with the strongest searched subject-matter;
• remove an objection before the examiner needs to raise it;
• simplify the claim architecture;
• provide a clearer technical distinction over the prior art;
• or create a more efficient basis for inventive-step discussion.

But unnecessary amendment can be equally damaging.

It may introduce an added-matter issue, narrow commercially useful scope, complicate later amendment or prematurely commit the applicant to one technical interpretation.

Our question is therefore not:
Can we amend?
It is:
Does this amendment improve the applicant’s position?

Keep the examination moving without giving away the case

An Article 94(3) communication is not simply an objection list.

It is part of an ongoing examination process.

The challenge is often to find the point at which the examining division can move toward allowance without the applicant unnecessarily surrendering claim scope.

We distinguish between:

• objections that genuinely prevent grant;
• objections that can be resolved by explanation;
• objections better addressed through drafting;
• and issues that should not trigger premature narrowing.

A response can therefore combine argument, selective amendment and carefully preserved fallback positions.

The aim is to keep the dialogue productive while retaining commercially meaningful scope.
Maintain momentum without surrendering scope.

That principle becomes particularly important after several examination rounds, where repeatedly adding limitations simply to generate another response can eventually leave the applicant with a patent that no longer protects what matters.

Sometimes a conversation is more useful than another round of paper

Not every disagreement requires another lengthy written submission.

Where appropriate, direct procedural engagement with the examining division may help establish whether the remaining problem is one of substance, drafting or simply the wording of a particular feature.

This can sometimes:

• identify the real point of disagreement;
• test whether a limited amendment would resolve it;
• avoid unnecessary claim changes;
• and reduce another examination cycle.

The objective is not informal bargaining.

It is procedural clarity.

Claim count is also a cost decision

Claims are legal positions, but they also have a procedural cost.

European claim fees mean that unnecessarily large claim sets can create avoidable expense. Conversely, deleting claims merely to save fees can remove useful fallback positions.

We therefore consider:

• which claims justify their place in the set;
• which features can be combined efficiently;
• which fallback positions deserve an express dependent claim;
• and which subject-matter is better preserved elsewhere in the application.

Save fees without casually deleting optionality.

European strategy can begin during the PCT phase

The cost and shape of European prosecution can be influenced before European-phase entry.

For example, the identity of the international searching or preliminary examining authority may affect later EPO procedure and fees.

Where the EPO has drawn up the international preliminary examination report, a substantial reduction of the European examination fee may be available. The EPO Guidelines also recognise interactions between such special reductions and the micro-entity scheme. (EPO Guidelines)

That means an international-phase decision can have a European consequence months or years later.
Good European prosecution sometimes starts before Europe.

Do not let grant close a door you still need

Allowance feels like the finish line.

Sometimes it is not.

Before allowing an application to proceed to grant, we consider whether commercially relevant subject-matter remains that may justify a divisional application.

Under Rule 36 EPC, a divisional may be filed while the parent European application is still pending. The EPO treats the parent as pending up to, but not including, the date on which the European Patent Bulletin mentions the grant. (Rule 36 EPC)

That makes the pre-grant stage an important strategic checkpoint.

We ask:

• Has the product evolved beyond the allowed claims?
• Has a competitor adopted a neighbouring implementation?
• Is valuable disclosed subject-matter still unclaimed?
• Would a differently focused claim set have independent commercial value?
• Should broader or alternative subject-matter be preserved before the parent disappears?

Before grant, ask what you may still want to protect.

When the business changes, the prosecution strategy may need to change with it

Patent applications can remain pending for years.

Businesses do not remain static for years.

During prosecution:

• the product may change;
• a financing round may begin;
• a licence negotiation may arise;
• a competitor may launch;
• new prior art may surface;
• another patent office may reach a useful conclusion;
• or a previously secondary embodiment may become commercially important.

The prosecution strategy should therefore be periodically reassessed.

A claim strategy chosen at filing should not survive indefinitely simply because nobody stopped to ask whether it still serves the business.