This is one of those questions that we get asked all the time. The costs of starting the EPO regional phase procedure are pretty much fixed, and can be found on this web site here; but the ongoing costs depend on a great many factors. (Spoiler alert: jump to the answer)
For starters, the EPO official fees include: the filing fee, the search fee, the examination fee, the designation fee, the grant and publication fee, as well as annual renewal fees to maintain the pendency of the application in an effective state. If deadlines are missed, then “late”, “further processing” and/or “restoration” fees can be added, but these surcharges are easily avoided by effective management of deadlines.
If the international search was carried out by the EPO as the International Searching Authority (ISA), then the search fee in the EPO regional phase is reduced to £0. If international examination was carried out during the international phase, then the EPO examination fee may also be reduced.
Besides the official fees, there are prosecution costs to take into account. Prosecution is the iterative process of the EPO raising objections in an Examination Report (an “Art 94(3) EPC Communication”, or “Office Action”), followed by us filing amendments and/or arguments to overcome those objections. The application does not proceed to grant until all of the objections have been overcome, so prosecution costs depend on the number of “rounds” of Examination that are undertaken.
We charge fixed-fees for for each “round” of Examination (currently, £1,200 per “round”) and so if the number of rounds of Examination can be reduced, so can the overall costs.
In most cases, we can overcome the objections in 1-2 rounds of prosecution, but the EPO is increasingly limiting prosecution to two rounds before issuing a summons to Oral Proceedings, which are a 1-day Hearing (usually in Munich or The Hague) during whcih all matters must be resolved, otherwise the application is refused. Us attending a Hearing on your behalf would usually cost in the region of £4000 + travel and accommodation expenses, whcih covers the cost of the preparation, pre-Hearing correspondence with the EPO, attending on the day, and reporting the outcome.
As mentioned previously, annual renewal fees (click here for prices) to maintain the pendency of the application in an effective state, so the longer an EPO application remains pending, the higher the overall cost will be. However, all the time an application is pending before the EPO, just one annual fee needs to be paid, whereas after grant, annual renewal fees are payable to each of the patent offices in which the patent has been validated (click here for prices). So, depending on the number of countries in which you intend to validate your granted EP patent, there can sometimes be a cost benefit to maintaining the application pending before the EPO, as opposed to having it granted.
At the end of the Examination procedure, the EPO grants (or refuses) the application, and the grant procedure is somewhat complex as it involves paying the grant fee, approving the text of the patent application (the Druckexemplar) and filing translations of the claims into the other two official languages of the EPO (French and German, if the application is prosecuted in English).
Taking all of the above variables into account, you can appreciate that predicting costs can be somewhat difficult. However, in an attempt to dispel some of the vagaries of the EPO regional phase, we have carried out a statistical analysis of overall costs of EPO regional phase applications, on our docket, whcih we have prosecuted to grant.
The average, total cost of an EPO regional phase application turns out to be £5,498, with a standard deviation of £1,364, which reflects the variability factors mentioned above.
For the sake of completeness, the range of costs was between £3,078 and £8,404, which reflects the fact that some cases proceed relatively straightforwardly to grant, whereas in other cases, prosecution is more difficult, and Oral Proceedings may have been held.
To give you an idea of “burn rate“, the up-front costs average £1,853, with costs over the 1st year averaging a further £1,748. Thereafter, the costs average just under £2,000 – up to grant.
If you want to discuss the costs of the EPO regional phase in more detail, then please feel free to contact us.
Now for the small print:
- The costs mentioned above exclude VAT at 20%. If you pay UK VAT, you can add 20% to the above costs from the get-go
- We only looked at cases on our docket (obviously, as we have no idea what other firms charge!)
- We only looked at granted, European patents and did not consider any cases that fell by the wayside for whatever reason. For applications that did not mature into granted patents, there may be various valid reasons for this:
- The client may have just abandoned for commercial reasons, such as the tech becoming obsolete
- The client may have abandoned for patent-related reasons, such as the scope of protection that was available (due to the prior art) may not have afforded commercially-useful protection
- The client may have abandoned for financial reasons, such as the cost of arguing for allowance exceeded the value of the tech involved
- The case may have been refused because it the invention was not patentable (we often don’t know this until after an application has been filed and searched)
- The above costs do not include the cost of validating the patent in the countries of the client’s choosing post-grant (validation costs can be found here).