[Patentpractice] [Pct] Allowed EP patent -- opt between Unified Patent or country-by-country validation?

[Jim Boff]

On your list DE, FR, GB the alternative is UP, GB. For the UP you need a translation, but that is for information only and need not be to the level required if it had any legal effect whatsoever. On that list you will inevitably pay more for UP+GB than for the three as nationals both on validation and in renewal fees.

On the other hand, UP+GB would cover a market 60% bigger than DE+FR+GB, with a renewal cost less than 60% bigger.

Anyone who has been frustrated with an infringement in Belgium when they have validated next door in Netherlands would welcome the peace of mind.

You pay your money, and you take your choice……

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From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of Timothy Snowden via Pct
Sent: Tuesday, February 13, 2024 10:01 PM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Timothy Snowden <Timothy at thompsonpatentlaw.com>; David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Pct] Allowed EP patent -- opt between Unified Patent or country-by-country validation?

To add on –

With translation, our EP associate typically translates into either French or German (default) since the claims and abstract are already translated into those two languages.
Mewburn Ellis has a calculator –https://validationcosts.mewburn.com/<https://urlsand.esvalabs.com/?u=https%3A%2F%2Fvalidationcosts.mewburn.com%2F&e=b2b682c0&h=9d23c809&f=y&p=y>  – I think Pintz has one too.
There are some good validation outfits that will handle it at reasonable cost easily – almost more like an annuity, and you can auto-quote it through their dashboard.

One note – if you wouldn't validate in more of the 17 UP countries than France and Germany anyway, it's probably cheaper to just national validate. If the other countries add value, then UP validation is great. It's like the 3rd largest GDP in the world, taken as a single enforceable jurisdiction.


From: Pct <pct-bounces at oppedahl-lists.com<mailto:pct-bounces at oppedahl-lists.com>> on behalf of Jeremy Smith via Pct <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>>
Sent: Tuesday, February 13, 2024 3:52 PM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Jeremy Smith <jsmith at kilburnstrode.com<mailto:jsmith at kilburnstrode.com>>; David Boundy <DavidBoundyEsq at gmail.com<mailto:DavidBoundyEsq at gmail.com>>
Subject: Re: [Pct] Allowed EP patent -- opt between Unified Patent or country-by-country validation?


Hi David,



“10th year” means the renewal fee for the 10th year calculated from the filing date of the application. You pay for the year up-front so it’s due 9 years after the filing date.



Yes GB is not covered by a unitary patent, so you would need to validate there separately.



Yes the UP will need to be translated into one other EU language. Was the end of your question cut off there?



Best wishes,



Jeremy


Jeremy Smith​​​​
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From: Pct <pct-bounces at oppedahl-lists.com<mailto:pct-bounces at oppedahl-lists.com>> On Behalf Of David Boundy via Pct
Sent: 13 February 2024 21:22
To: for users of the Patent Cooperation Treaty <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: David Boundy <DavidBoundyEsq at gmail.com<mailto:DavidBoundyEsq at gmail.com>>
Subject: [Pct] Allowed EP patent -- opt between Unified Patent or country-by-country validation?



I am now facing the choice for the first time of an allowed EP patent, and how to validate.  Opt in for a single European Unitary Patent, or validate in the big countries (DE GB FR probably).



Questions

     -- fee schedule is here https://www.epo.org/en/legal/guide-up/2022/uppg_a_v.html<https://urlsand.esvalabs.com/?u=https%3A%2F%2Fwww.epo.org%2Fen%2Flegal%2Fguide-up%2F2022%2Fuppg_a_v.html&e=b2b682c0&h=c1420643&f=y&p=y>   When they say "10th year" is that 10th year from filing, or 10th year from EP allowance? The yardstick is "published in the European Patent Bulletin" -- does that happen at 18 months, or at allowance?

     -- when GB quit the EU club, they quit the Unitary Patent club too, right?  So if I opt for Unitary Patent, I still have to validate in GB, right?

     -- this application was prosecuted in English.  So to validate Unitary, we have to translate into one other language https://www.epo.org/en/legal/guide-up/2022/uppg_b_ii_4.html<https://urlsand.esvalabs.com/?u=https%3A%2F%2Fwww.epo.org%2Fen%2Flegal%2Fguide-up%2F2022%2Fuppg_b_ii_4.html&e=b2b682c0&h=4c3213d0&f=y&p=y>   For country-by-country validation, translate for all



Does anyone know of a cost calculator?



Thanks

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