Luxembourg: a basis for optimizing search fees in Europe
When looking for safe and effective means to reduce costs for obtaining patent rights in Europe, applicants should consider the following aspects:(i) a Search Report with a Written Opinion prepared by the European Patent Office (EPO) can be obtained through a Luxembourgish patent application, and (ii) The EPO partly or fully refunds its search fees if in a subsequent European Patent Application or PCT application (ISA = EPO) the priority of an earlier Luxembourgish patent application with this Search Report available is claimed.
Generally, it takes about six to nine months after filing date and completion of all formalities to receive a Search Report prepared by the EPO on behalf of the Luxembourgish Patent Office. As usual, such Search Report is accompanied by the searching examiner’s Written Opinion provided in the language of the proceedings.
To make use of the refund option, the Search Report must be available when filing a subsequent application, no later than 12 months from the underlying priority date.
Note that the Luxembourgish patent application does not necessarily need to be the priority application of the future patent family. It can of course be filed shortly after any (legally required under some national patent laws, e.g. in USA and France) national base application claiming the priority of such base application.
Considering the EPO’s time frame for preparation of the Search Report, it is necessary to file the Luxembourgish patent application as soon as possible, ideally in the first month after filing the national base application.
There are only few formalities to be fulfilled to bring a patent application validly on file in Luxembourg. Necessary fees need to be paid and translations are to be filed, if needed.
For filing, neither a Power of Attorney nor an assignment or any notarized documents are required. As Luxembourg does not provide for a substantive examination, a patent certificate is automatically issued after about 18 months as of the filing date.
Most importantly, Luxembourg accepts any of the official languages of the European Patent Office (English, French and German) as drafting language of a Luxembourgish patent application, with the formal requirement that the claims shall be available in German or French.
In case the application is filed in English, for the purpose of obtaining an English language Search Report, the quality of the claim translations in German or French doesn’t matter as the Search Report is prepared in the drafting language of the application. Consequently, even a computer-based German or French translation could be filed to fulfil the formal requirement. The translated claims need to be filed at latest one month after the filing date. Obviously, it should be kept in mind that a right based on computer translated claims is not useful for litigation purposes.
Filing a Luxembourgish patent application costs 270€ in official fees. This includes an official filing fee of 20€ and an official Search fee of 250€ (as of April 2015).
If the applicant is interested only in obtaining an inexpensive EPO Search Report, Luxembourg is obviously an attractive option, keeping in mind that the European Search Fees are normally 1285€ and the International Search fees are normally 1875€ (as of April 2015).
Finally, no claim fees are applicable in Luxembourg. The EPO will search any amount of claims filed under the Luxembourg regime without additional fees.
For subsequent filings claiming the priority of a Luxembourgish patent application a priority document is often needed. This is available free of charge and can be requested during the filing step simply by filing an additional copy of the application documents. The priority document is usually delivered in about two weeks.
For prosecuting a patent application in the Grand Duchy of Luxembourg, a local representative needs to be appointed for applicants having their domicile or headquarters outside Europe. Dennemeyer & Associates regularly files Luxembourgish patent applications, and we are happy to provide a tailor-made offer based on your specific needs.
The Search Report
The Search Report is directed to the first invention mentioned in the claims.
In case of lack of unity, divisional applications need to be filed. Payment of additional search fees to achieve EPO Search Report(s) for the additional invention(s) is not possible.
We strongly advise applicants to file separate Luxembourgish patent applications directed to the individual inventions from the outset, in case concerns related to lack of unity.
Given the availability of the EPO Search Report through the Luxembourgish patent application, two routes for search fee refunds exist.
For a maximum refund, both routes require the claims of the subsequent application compared to the Luxembourgish priority application to be substantially unchanged or only incorporating subject matter of a previously filed dependent claim.
According to our experience, the refund will happen in about 14 to 16 months after the priority date.
European patent applications
Upon filing a local patent application with the EPO, the priority of the Luxembourgish application needs to be claimed. The necessary official fees, including the European Search fee, have to be paid first.
Due to the availability of the EPO’s Search Report in the priority application, the EPO automatically refunds up to 84% of the European Search fee, without needing a refund request.
Upon filing a PCT application with the competent receiving office, the priority of the Luxembourgish application needs to be claimed. In addition, the EPO needs to be selected as International Search Authority (ISA).
The necessary official fees, including the International Search fee, have to be paid first. Due to the availability of the EPO’s Search Report in the priority application the EPO automatically refunds up to 100% of the International Search fee. No refund request is required.
Incorporation of amendments
Unless taken from dependent claims, amendments should be incorporated only into the description of the subsequent application rather than into the claims, in order to safely benefit from the maximum refund of the Search fee.
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