Need help getting your invention patented in Europe?

Have you invented something new? An idea, concept, method or product that’s unique - something that’s never been done before? If so, it’s time to protect your invention with a patent.

From the inventor of the Super Soaker, to patent portfolio owners like IBM, patent holders can not only protect their inventions, but earn a fortune in royalties.

European patents

A patent gives you a national monopoly over your invention. So while your initial market might be the US, if your ambitions extend to Europe, holding a US patent won’t protect you in those countries.

A European patent extends your global reach and gives you protection for 20 years. The process requires a significant investment, but the costs can be spread over a number of years, which you can strategically accelerate or delay as required.

If your invention is still under wraps (a must for European patents), you can start the process by hiring a patent attorney to handle your European patent application from filing to grant.

At Lexoo, we’ve curated a panel of patent attorneys with strong track records in helping US inventors get European patents.

We work with patent attorneys from both brand name IP firms and boutique or ‘virtual firms’ with minimal overheads, and much lower fees. Either way, we’ve got you covered. Simply send us an enquiry and we’ll handpick a selection of patent attorneys to give you multiple, fixed fee quotes within 24 hours, for free.

“Sometimes the legal world can be fairly overwhelming but Lexoo helped us to find the lawyer we needed, quickly and easily.”

Lambro Anastasiou, Head of Finance

Three routes to getting a European patent

For US inventors, the process typically starts by filing a US patent application. The filing date is important because all countries use the ‘first-to-file’ system when granting patents - keep this in mind as you read on:

You then have three choices, either:

• apply directly to the national patent office of the relevant country;
• apply for a ‘European patent’ via the European Patent Office (EPO); or
• prepare an ‘international application’ under the Patent Cooperation Treaty (PCT), which includes Europe.

The choices you make here are important, so it’s helpful to have a broad understanding before seeking more detailed advice.

Here’s a quick summary:

Direct route

You can file patent applications directly in the countries where you need protection. But because each country has its own distinct rules (and you’ll likely want protection in more than just one European country), most applicants tend to use one of the centralized routes below.

European Patent Office (EPO) route

A European patent covers a basket of 38 countries including the major states of the UK, Germany and France, all the other EU Member States, plus a few ‘contracting’ states. Importantly, if you apply for a European patent within 12 months of your US application, the date of your US application is preserved and becomes the ‘priority’ filing date for your European application.

The EPO not only examines patent applications but also grants the patents themselves. Once granted, you’ll then need to ‘validate’ the patent in the countries where you want your patent to apply. Each country has their own requirements, while some have none at all.

At this point, you’ll need to translate your documentation into the required languages. This can be expensive, setting you back several thousand pounds depending on the number of countries you’ve chosen. For this reason, a lot of applicants pick the main European countries of the UK, France and Germany, which all accept English language docs. Keep in mind you’ll need to pay yearly maintenance fees to each separate country to keep the national patents in force.

International application (or PCT application)

A PCT patent application has two phases. The first is the ‘international’ phase, where you file a single PCT patent application with the US Patent and Trademark Office. This application is effectively a bundle of 148 national patent applications covering the PCT countries, (including Europe), administered by WIPO. Unlike the EPO, a PCT application will be searched and may be examined, but WIPO will not grant you the patent - the grant happens later at the national level.

At this point, you still need to pick the countries you’ll ultimately file in, but you’ll have up to 30 months (31 months for Europe) to decide. Here’s the kicker: you’ll have “patent pending” protection during this period, giving you more time to form strategic partnerships, get funding and identify markets, before you make your invention public. Cool huh? The ability to delay the decision on which countries to file in (and delay filing and translation costs ) is why the PCT is usually the preferred vehicle for US patent filers.

Once you’ve decided on your countries, you’ll enter the second, national (or regional) phase via the EPO and file the necessary documents with the patent offices of those countries and pay the national filing fees (plus any translation costs).

On the horizon: the Unitary Patent

The Unitary Patent is new and (as of Jan 2016) hasn’t come into effect yet. Check out the latest, but at a basic level, you’ll need a European patent application (via the EPO) but when granted you will be able to choose a Europe-wide patent. Applications filed now are likely to have this option when granted, so ask your patent attorney about this option.

A quick guide to patent jargon

One reason that makes patents seem so complex is the jargon used by the pros - to them it’s second nature but for most, it’s rather unintuitive. But if you want to talk the talk, here are a few terms that might help.

“Prior art”

In basic terms, your invention must be ‘novel’ (i.e. new) to be patentable. How do you know if it’s novel? By searching for ‘prior art’ - that is, any evidence that your invention is already known i.e. published or in the public domain. Here’s the trick: anything can be prior art. It doesn’t need to exist physically or be commercially available. In fact most prior art is not contained in existing products because most inventions never get to market.

“Disclosure”

This means making your idea public. Common pitfall: in Europe, if you disclose your invention before filing for a patent, say goodbye to your European patent (compared to the US which allows you a 12 month grace period from disclosure to filing). You can still disclose your invention to patent attorneys, legal professionals and patent office staff who operate under professional confidentiality obligations. But for other individuals and companies, use an NDA if you need to talk about your invention, but avoid revealing what makes it novel.

“Priority date”

Chances are, a bunch of people are working on the same problem as yours. But only one of you can get a patent for it - it’s a case of first in, first served. The concept of a priority date means you can file for a patent in one country (like the US) without having to file in other countries at the same time. When you ‘claim priority’, your US filing date effectively becomes the filing date for your later European patent application.

Patent “prosecution”

No, it has nothing to do with suing or being sued - that’s patent litigation. Patent prosecution means the preparation and filing your patent application, plus any dealings with the patent office both before and after your patent has been granted. To get a patent, the type of patent attorney you want is a ‘patent prosecutor’.

“Utility patent”

There are two types of patents in the US: utility patents and design patents. Utility patents are the most common and protect the functional aspects of your invention (as opposed to its appearance). It’s important to distinguish the difference here because there’s no such thing as a design patent in Europe. Designs can however be separately registered in European countries (much like trademarks) in order to protect the appearance of your invention.

Top tips when selecting a patent attorney

We’ve helped a lot of people apply for European patents. Here’s our list of top tips for selecting the right patent attorney:

• Technical background: find a patent attorney with same technical background (most have at least one) as the technology underpinning your invention e.g. an electrical engineer would suit mechanical, electrical and computer related technologies; but not biotechnology.
• Track record: each country has it’s own quirks, so look for patent attorneys who’ve successfully prosecuted (oh the jargon!) patents in the specific countries you’re after. Ask for evidence: what’s the backlog looking like right now? How much is it to file in those countries? What are the translation costs? Make sure their finger is on the pulse.
• Strategy: a good patent attorney will help with strategic decisions such as which route (EPO or PCT application) to take, country selection, disclosure strategy, options to accelerate the process and more.
• Transparent pricing: patents are expensive, avoid blowing the budget by getting a clear breakdown of not only the professional fees of your patent attorney for preparing your application and managing the process through to grant (or even opposition), but also non-professional costs such as government filing and search fees and language translation costs.

Lexoo will help you get a range of quotes from patent attorneys, handpicked to suit your needs. Send us an enquiry and within 24 hours you’ll receive multiple quotes so you can get your European patent underway. The service is 100% free - give us a try!

We only match you with experienced patent attorneys, like John and Howard.

John is a patent attorney and former patent examiner with the United States Patent and Trademark Office (USPTO), specializing in software methods and software driven products, electrical, electro-mechanical, mechanical and medical devices.

His patent consulting practice encompasses assisting clients in identifying patentable inventions, patent strategy, patentability and freedom to operate opinions, patent search, patent preparation and prosecution, and the establishment of corporate intellectual property departments.

Howard is a Chartered Patent Attorney, European Patent Attorney and European Design Attorney in the High Tech and Electrical Group. He has a been Partner since 2011. He advises on Patent infringement and validity, especially regarding software implemented inventions, such as for digital rights management and telecommunications.

He also advises on the patentability of business methods and financial applications in Europe. He has substantial experience in drafting and prosecuting Patent applications before the UK and European Patent Offices as well as coordinating the prosecution of foreign applications as part of larger Patent portfolios. Howard has significant experience in representing patentees and opponents during European Opposition procedures and Oral Proceedings.

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