Filing in France: A Strategy to Limit Extension Costs

“By filing for a patent in France, the client has more visibility on the patentability of their invention in the European zone and can act accordingly to maximize their chances of obtaining patent protection and/or to minimize their costs.”

FranceA client’s recent experience applying for a European patent led to the development of a possible optimization strategy to address patent costs for clients. This client had made an initial U.S. filing and then extended his application in the form of a European patent application.

His U.S. application went extremely well, and he obtained a quick grant with very few additional costs. This, unfortunately, was not the case with his European application.

The prior art search conducted by the European Patent Office (EPO) revealed four new relevant documents that greatly complicated the procedure. Moreover, the application was drafted according to U.S. standards, which complicated the smooth running of the European procedure by making it, for example, more difficult to modify the claims without drastically reducing the scope of patent protection.

These difficulties led to numerous additional exchanges with the EPO, increasing the cost and length of the procedure—much to my client’s displeasure. The client eventually decided the EPO procedures were just too expensive.

This led me to strategize a practice to reduce procedural costs in Europe and to optimize extension strategies for patent applications initially filed outside Europe, typically in the United States, China, Korea, etc. This strategy is not well known, but it is very effective. The practice consists of either simultaneously filing an identical filing in France or filing after a priority filing in a “non-European” state.

French Advantages

France offers several advantages when filing a patent. It subsidizes a large part of the filing fees for a French patent application regardless of the nationality of the company. The company does not need to have an office in France and the application does not need to be a first filing to take advantage of this subsidy.

Also, the fees for filing a French patent application are independent of the number of pages and amount to the following:

  • €273 for “small entities” (i.e., individuals, companies with fewer than 1,000 employees whose capital is not held more than 25% by an entity not meeting these first conditions, non-profit organizations in the education or research sector)
  • €546 for others.

In addition, in France, the first ten claims are free and any additional claims beyond the tenth will cost only €42 or €21 per claim depending on the status of the applicant (small entity or not). Moreover, there is no limit to the number of independent claims and no additional fees for a list of nucleotide sequences or others.

This results in a search report accompanied by a written opinion conducted by the EPO within six to nine months following the filing of the French patent application. Thus, for the reduced price of a French patent application, any applicant can benefit from a quality search conducted by one of the five largest patent offices in the world.

Later, once the search conducted by the EPO has been completed, if you decide to file a European patent application and if the claims are identical or close to those filed with the French patent office (INPI), the EPO will reimburse the search fee.

This reimbursement can be 84% in the case of the complete reuse of a previous search (accompanied by a written opinion), which is a national search on behalf of the INPI. The reimbursement is 21% in the case of partial reuse.

It is also possible to get a refund in the case of filing an international application where the EPO is the International Search Authority (ISA); the refund can be the following:

  • 100% for complete use of the previous results;
  • 25% for partial use of the previous results (this is the case if the application has been substantially modified compared to the original request).

Thus, the cost of filing a French patent application can be offset by the savings generated from the lower search fee or, in the case of very voluminous applications, from the lower cost of additional fees (the number of pages for a Patent Cooperation Treaty [PCT], additional claims for European patent applications, etc.).

This practice also allows for a very rapid “supplementary” search and thus a better overview of the prior art state compared to the analysis completed by the office receiving the first filing. There may be translation costs, but you can be satisfied with machine translation and have the claims reviewed by a local correspondent.

A Bit of Strategy

We envisage two extreme hypotheses:

  1. In the first hypothesis, the search conducted by the EPO does not return any additional relevant documents. This reinforces your client’s chances of obtaining a European patent based on the text as filed. In this first case, this practice reassures the client about their chances of obtaining the patent in Europe and gives them better visibility on their future costs.
  2. In the second hypothesis, the search conducted by the EPO returns several new relevant documents. This could complicate the issuance of a European patent or even prevent it entirely. In this case, if the cited documents are truly an obstacle to the issuance of a patent, then this practice saves the costs of a PCT and/or EP extension. The French filing allows the client to make an informed decision and to avoid unnecessary fees. Moreover, it is possible to withdraw the French patent application to avoid publication and keep the search report and written opinion confidential.

However, if the invention is really strategic, it is also possible to modify the text and/or claims accordingly and to extend the application to have a better chance of obtaining the patent. Of course, in this strategic framework, it will be necessary to determine with the client if the modified scope of protection still presents a technical and/or economic interest.

An Option Worth Considering

By filing for a patent in France, the client has more visibility on the patentability of their invention in the European zone and can act accordingly to maximize their chances of obtaining patent protection and/or to minimize their costs.

This strategy is not necessarily suitable for all types of patent applications and clients. I would tend to think that it presents more interest for voluminous patent applications with many claims, typically more than 15, and for companies that want to protect their invention in many countries.

In practice, a U.S. or Asian applicant can make their first filing in their country of origin, then file in France to have a search conducted by the EPO, and finally, for the Asian applicant, request the United States Patent and Trademark Office as the ISA during their PCT to have an overall view of the patentability of their invention and to try to optimize the different procedures.

It is a strategy that may be interesting to certain clients to allow them more predictability on European examination procedures and their costs, or even to reduce these costs.

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Author: eabff
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5 comments so far. Add my comment.

  • [Avatar for Greg]
    Greg
    May 6, 2024 06:02 am

    Hello Jeremy,

    Thank you for tour comments.

    I agree with drafting the patent specification according to a standard suitable to the EPO standard, but it is unfortunately quite rare to find such examples in the USA. I have the impression that US lawyers and their clients think mainly of the USA, which I understand in view of the market and the financial stakes involved.

    For France, there is no issue of double patenting (provided that you have claimed the same priority). The granted European patent replaces the French patent if the granted claims are identical; otherwise, you can keep both. And of course, if you have a European grant, nothing prevents you from not validating it in France.

    French law has effectively changed since May 2020, there is now a substantive examination based on novelty and inventive step, this makes French patents much less vulnerable.

  • [Avatar for Jeremy Sim]
    Jeremy Sim
    May 5, 2024 04:42 pm

    Agreed there are numerous methods for obtaining cost relief by filing strategies as you suggest, and always worth considering.

    But – is there a reason why you wouldn’t draft the patent specification to a standard suitable for meeting the standard of EPO support requirements? Drafting to meet the standard for EPO support helps in many ways, as your specification would also then be compliant with many other countries support standard (e.g. China, Japan, Taiwan, South Korea, Australia, New Zealand, UK or many national European countries if filing directly). Equally, drafting to a stricter standard for support and using that approach for your US prosecution can help with overall prosecution costs, as once you establish the general direction for claim amendments for overcoming any prior art obstacles, you can use the same approach for your other country applications.

    Bear in mind, with a French application filing strategy, you’ll need to take into account the issues of double patenting between national applications filed into EPC member countries and those countries where you’ve filed directly (such as France).

    I may be out of date, but France never used to conduct substantive examination, so any patent you do get granted could be quite vulnerable.

  • [Avatar for Greg]
    Greg
    May 5, 2024 07:48 am

    Hello Bruce,

    I am a colleague of Benoit’s, a machine translation may be enough, but it is especially important that the claims are correct, for example by having them checked by the local patent attorney.

    In addition, if a priority right has been claimed, it is also possible to use the priority text as a basis for making certain corrections, but this can be tricky.

  • [Avatar for Greg]
    Greg
    May 4, 2024 09:11 am

    Hello Bruce,
    I am a colleague of Benoit’s and also a European patent attorney, so I’ll take the liberty of replying.
    We think a machine translation is sufficient, but it’s better if a local correspondent checks the claims.
    Afterwards, if there is a priority claim, the priority text can be used as a basis for corrections, but this is not always obvious in France or in Europe.

  • [Avatar for Bruce Young]
    Bruce Young
    May 3, 2024 11:32 am

    You don’t mention translation costs. Assuming that the original application was drafted in English (or German, the other accepted EPO language), wouldn’t the translation to French have a significant impact on the viability of this strategy?

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