Frequently Asked Questions

Validations

Most countries in Europe require a power of attorney (POA) to enable IP associates to work on their behalf in different countries. Some countries require the original signed document, while others are happy with a copy of the signed POA.

Once your patent has been granted, there is a 3-month window to validate your patent into your chosen European countries; this is taken from the date of your Grant 71(3).

For most countries in Europe, this deadline cannot be moved, but a few countries do allow you to extend your validation for a limited time. However, there is a significant cost for this, and you are always better to validate in the 3-month window available.

Those countries that allow you to extend the deadline are Greece, but only an extension for 1 day, Portugal for up to a month, Italy, Spain and Estonia allow a 2-month extension, while Czech, Slovakia and Rumania will extend the deadline by a maximum of 3 months.

Assuming you pay your annual renewals into each individual country, your validation continues for the life of the patent.

You need the European Patent reference number (from the EPO), the title of the patent, the client name and the list of countries where you want to validate.

Validation costs vary depending on which countries you want to validate in, how complex your patent is and if you have to expedite certain services to meet the deadline. There are specific requirements for each country across Europe and costs increase with the amount of translation required (more for countries that need a full translation compared to those requiring just a translation of the claim), the complexity of the actual patent (translation costs for 2 pages vs 20+ pages for a more complex patent), and if the country requires a POA (original document or signed copy?)  In addition, costs can escalate rapidly if validations are left to the last minute as extra fees are levied for speedy turnaround for translation services and POA documentation.

Yes, there are a small number of countries who do not need a translation and will accept the patent in English. These are:

  • UK
  • Belgium
  • France
  • Germany
  • Ireland
  • Luxembourg
  • Switzerland
  • Monaco
  • Tunisia
  • Morocco

It depends on the complexity of the patent and the amount of translation required for the countries you have chosen to validate in, in general the longer and more complex the patent the more time you need to prepare the paperwork. We suggest that you start your validation at least 4-6 weeks before it is due, the sooner you start the process the cheaper and more stress free the validation will be. If you leave your validation within a week of the deadline, you will incur more charges based on the faster turnaround times that are required.

Renewals

The 71(3) form is given by the EPO as an ‘Intention to Grant’.

This fee is set by the European Patent Office (EPO) to ensure that a patent is ‘live’ and up to date and shows your intent to maintain the patent.

Renewal fees are due on an annual basis, on the anniversary of the original patent filing. They are due at the EPO every year while the patent is live until the intention to grant and validation, when fees are then due to the individual national patent offices of each country where you have validated the patent.

This differs each year depending on the year of renewal, in general renewals get more expensive with the increasing age of the patent.

No, you pay your renewal fees directly to each country where you have validated your patent.

There is a 50% surcharge to file into the EPO if you miss your renewal deadline. However, if you have validated your patent then renewal fees differ by country and every country has different rules regarding extensions and late fees if you miss your filing deadline. You will need to check individual countries and their national patent offices for the most up to date information on extensions and late fees.

Grants

Rule 71(3) gives you 6 months to respond to the EPO after they have given a patent an ‘intention to grant’ and a 3-month deadline from the ‘decision to grant’, to accept the grant and acknowledge that you still wish to file your patent in Europe. Once your patent has been granted you have a 3-month window to validate your patent into the individual countries of your choice in Europe.

Patent Portfolio Management

The only details you need in order to add a case to your portfolio is the European patent application number, e.g. EP1XXXXXX8.1. If you don’t have this number, you can find it on the EPO register, by providing either a description of the invention or the WIPO number. When you have the European patent application number, click the add case symbol on the portfolio page, and complete the rest of the process. Once added, you can see basic details such as the current status, actions available and what fees are due.

The portfolio lists all your patent cases, providing only basic details. If you want to find out more information on a case, or carry out an action, then you achieve this by accessing the Case Overview. Click the row and a Case Overview modal will display, providing a range of tabs, information and features for you to access. The content and features provided in Case Overviews is dynamic, so depending on a case’s formality and how close it is to a deadline will impact what you can view and interact with.

If you are managing a large portfolio, you want an easy way to ID and locate specific cases. We have a number of tools that allow you to do this. When you add a case to your portfolio, you have the opportunity to add a Client Reference and Description. These are solely for your own convenience and you can provide a value of your choice. You can add or amend these values at any time, even after adding a case. You will then be able to sort, filter or search your portfolio for any value you require, be that Client Reference, or the application number.

Deadline Reminders

Reminder emails are sent to anyone who has selected to receive that reminder. Each Patent Place account-holder can choose for each patent, for each formality, which reminders they would like to receive – e.g. 2 weeks before the end of Renewal Green phase. When you add a Patent into your Patent Place portfolio, by default half of the possible reminders are set for you. If wanted, each Patent Place account-holder can easily opt out of receiving all reminder emails.

a. Green – Majority of the window for processing a formality will be within the green phase, which is the cheapest phase to instruct in. This phase represents the period from when the window opens for instruction, up until the amber phase, which is close to the deadline. The only fees due here are the official fees required by the designated patent office, and our processing fees for the formality you intend to process.
b. Amber – The earliest the amber phase can start is 10 working days from the formalities deadline and ends at the beginning of the red phase. This period can vary depending on the formality. Money transferred in this period requires manual actions from our team to ensure the instruction is processed in time before the red phase hits, where further additional costs are added.
c. Red – The formality’s deadline is too close for it to be automatically processed online through Patent Place and requires urgent processing from one our IP support professionals. As this requires manual processing of the formality, costs are added to cover this work. We add an indicative additional 40% of the official fees. The final cost of the instruction will be provided to you by the professional handling your case. This phase begins 3 working days before the deadline.
d. Renewal specific color
e. Blue – Represents the 6 month extension period allowed by the EPO starting from the day after the initial deadline up until 6 working days before the final deadline. The EPO allows such late renewals, subject to an additional late fee.

No. You will receive emails to the email account you used to sign-up to Patent Place with.

Automatic Form Generation

The 1038 is required for sending required documents and fees to the EPO, so we automatically generate this upon instruction. The Form 1200 however you can generate completely free of charge. Once generated you have the opportunity to downloaded the Form 1200 if required so it can be reviewed.

We have broken fields required to be filled out in the Form 1200 into two groups. First group includes fields that we can access from the EPO. Second group are fields that require input from a user. Our software is then able to take these two groups of information and automatically generate the Form 1200, ready for filing directly to the EPO. There are special cases, such as Life Science applications, that may not be suitable for our automatic generation. However, our team of IP professionals are at hand ready to help prepare and file your Form 1200.

That is no issue. You have the option to create a new one. All you have to do is to delete the current one that has been generated through the case’s Case Overview panel

Automatic Fee Generation

The EPO and national patent offices have set fees which they require in order to process a formality instruction. We call these fees ‘official fees’. ‘Processing fees’ are our fees for providing our service. These fees are all made transparent through our fee breakdown tab which is accessible in the Case Overview panel.

Patent Place incurs an express fee when a case’s formality is instructed within the amber phase, i.e. very close to the deadline. You can find more information on color phases in the deadline reminders page. The fee added is 10% of the official costs.

When a formality enters the red phase, this means it is too close to the deadline for a formality to be processed automatically through the system. It requires urgent processing by one of our IP support team, which incurs additional fees. This additional fee is indicative and is 40% of the official fees. You will be given the final quote when you contact the support team to process the formality.

We are partnered with currency exchange company Moneycorp. They are an integral part of our automated system for filing formalities directly to the EPO. The¬¬y provide us a daily, competitive USD: EUR FX rate, which feeds into our system. Our FX chart feature shows you the history of the currency exchange rate, so you can monitor trends, to make an informed decision on when is best to process your formality in a cost-effective manner.

Transactions to the EPO

USD. We want to streamline the process of filing formalities in Europe, and in doing so, saving you time and money. To do this, Moneycorp has a domestic USD account in the US for Patent Place customers. This enables you to pay in your national currency, mitigating any fees that would typically have to be paid when exchanging USD to EUR. Our interface helpfully provides the breakdown of fees in both USD and EUR for your convenience.

We only accept bank transfer through Fedwire and ACH methods. These pay to Patent Place’s Moneycorp account. This is to help you file in USD, saving you additional costs that would typically be incurred with currency exchange.

Absolutely. When an instruction has been initiated, you can track the order through the Transactions page. Here you will find the list of all transactions, detailing the status, costs involved, and which formalities were included. If you require further details on a particular order, you can access the Transaction Overview panel for each transaction, by clicking the relevant row in the table.

Being able to monitor the progress of your formality order is important. That’s why we have provided a train track system, that breaks down the instruction to the appropriate patent office into several steps. When we receive a communication such as funds being received, or documents have been sent, our system updates automatically, so you are immediately updated of progress. Each train track step provides its own accessible explanation of what is happening with your order.

A breakdown of fees, receipts and invoices are all accessible from the Transaction page. With a similar layout to the portfolio, you can find every transaction you have initiated via Patent Place through this page. The search filter options allow you to quickly search for a specific transaction order you may require. Once you have found the required transaction, simply click the relevant row and the Transaction Panel for that order will display. Here you will find the breakdown of fees, the invoice, and if any receipts or certificates were provided, these too will be available.