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

Tue Feb 13 17:06:59 EST 2024

Allow me to give a personal endorsement for the Mewburn Ellis validation calculator.  It is important to be as accurate as possible with page and word count, since the fees can vary quite a bit.

Paul

From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of Timothy Snowden via Pct
Sent: Tuesday, February 13, 2024 5:01 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://validationcosts.mewburn.com/>  – 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
 | Partner
 | Kilburn & Strode LLP
 | +44 (0)20 3947 4291<tel:+442039474291>
 | jsmith at kilburnstrode.com<mailto:jsmith at kilburnstrode.com>
Europe: UK (London), Germany (Munich), The Netherlands (Eindhoven, Hilversum, Rotterdam)
US Liaison Offices: Boston, San Francisco
[https://www.kilburnstrode.com/images/KS_re-render.png]<https://www.kilburnstrode.com/>

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://www.epo.org/en/legal/guide-up/2022/uppg_a_v.html>   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://www.epo.org/en/legal/guide-up/2022/uppg_b_ii_4.html>   For country-by-country validation, translate for all

Does anyone know of a cost calculator?

Thanks

--

[https://ci3.googleusercontent.com/mail-sig/AIorK4wHwYjQzxHxAaQrLX1XiLlcQpAZ83upYUjMvJLtwefIP8dBVb6tJA9Yn2W4bPdW2A18c1EIEHg]     <https://www.iam-media.com/strategy300/individuals/david-boundy>

David Boundy | Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

dboundy at potomaclaw.com<mailto:dboundy at potomaclaw.com> | www.potomaclaw.com<http://www.potomaclaw.com/>

Articles at http://ssrn.com/author=2936470<http://ssrn.com/author=2936470>

Click here to add me to your contacts.<https://www.keynect.us/requestCardAccess/USA500DBOUN?>

This email is sent for and on behalf of Kilburn & Strode. It is confidential and may be privileged. If you are not the intended recipient you must not disclose its contents, make copies, or take action in reliance on it. If you have received this email in error, please contact the sender and delete all copies. Kilburn & Strode LLP, a limited liability partnership registered in England and Wales with registered number OC342299. Kilburn & Strode LLP is regulated by the Intellectual Property Regulation Board. Our professional code of conduct can be accessed here.<https://ipreg.org.uk/what-to-do-when-things-go-wrong> A list of members' names is available for inspection at our registered office: Kilburn & Strode LLP, Lacon London, 84 Theobalds Road, London, England, WC1X 8NL. Kilburn & Strode LLP is part of a network of affiliated entities, including Kilburn & Strode US, P.C., a California professional corporation, that practise through separate legal entities under the name “Kilburn & Strode”. Please visit http://www.kilburnstrode.com/about-us/our-firm<http://www.kilburnstrode.com/about-us/our-firm> for more information. Kilburn & Strode LLP may monitor email traffic data and also the content of email for legitimate business purposes, including to monitor compliance with the law and our regulatory obligations.

NOTICE: This electronic mail transmission with any attachments may constitute an attorney-client communication, protected health information (PHI) or other confidential information that is in fact confidential, legally protected from disclosure and/or protected by the attorney-client privilege. If you are the intended recipient, please maintain confidentiality and be aware that forwarding this e-mail to others may result in a waiver of these protections and privileges and regardless electronic communications may be at times illegally accessed and viewed. If you are not the intended recipient, this e-mail is not intended for transmission to you, nor to be read, reviewed, used, distributed or even received by you or any other unauthorized persons. If you have received this electronic mail transmission in error, please double delete it from your system immediately without copying, reading or disseminating it, and notify the sender by reply e-mail, so that our address record can be corrected. Thank you very much.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/pct_oppedahl-lists.com/attachments/20240213/6fbc636e/attachment.htm>