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I have an omnibus PCT application. It contains multiple inventions.

EPO charges 14 EUR for each page in excess of 30 pages.

I have used large font and line height in my PCT application for better readability. The PCT application comes around 300 pages.

If I understand this correctly, I have to pay excess fees for 270 pages. Which is 3780 EUR.

Since my PCT application contains around 10 inventive concepts, I may have to pay 37800 EUR for specification alone.

Is there a way, I can reduce these costs?

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Worse, whomever the ISA is will only search one inventive concept. To get all ten searched you will pay (if the EPO is your ISA) $1950 per each inventive concept. And at the regional stage in the EPO, any claims not to a single inventive concept will be discarded and only a set of claims with "unity of invention" will be examined. You might want to learn about unity of invention as views by the EPO. Then you can chose the subject matter you will pursue. Now you know what to keep and what to remove in editing the specification and drawings. You need to be careful in that editing becasue the EPO looks at amendments to the specification carefully for not introducing new matter. They are very literal.

There are divisionals in the EPO so you can go back and get a second, third, etc. inventive concept examined. It will get very very expensive. With all the costs in front of you it might save money and vastly improve outcomes to engage a practitioner with EPO experience.

  • Thanks for the helpful answer. I think "EPO divisional" route is the one I'm looking for. If I understood this correctly, I have to pay excess fees based on my PCT application, pick one set of invention while entering EPO, and then file 9 divisional applications using the original EPO application to get protection for the rest of the invention. Now my question is, Am I allowed to remove redundant specifications and drawings while going for divisional in order to reduce excess fees or do I have to keep the application as it is in divisional too? Thanks – Giri Jan 10 at 19:27
  • I have not run into that situation. My guess would be that they would actually prefer that a specification not have voluminous content unrelated to the claims. If I was not retired from patent prosecution and I had a client in your situation I would need to research the answer. I trust that you will get a good answer from a more knowledgeable person. – George White Jan 10 at 19:41
  • Thanks Mr. White. I really appreciate your input. I hope your guess is correct. – Giri Jan 10 at 19:49
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George White's answer is very accurate. I will add few things to it.

You can amend your specification and claims upon entering the European phase so that the page fee is reduced, but as pointed out by George White you should be careful with your amendments, Art. 123(2) EPC kills many applications and patents. You can also file divisionals with amended description so that the page fee is not so expensive.

One option you have is enter into the European phase with the complete text and claim the most important inventions right away (there is also the claim fee for claims in excess of 15, so be careful). The EPO will search the first invention and invite you to pay search fees for each further invention claimed. You can pay for the searches you want (but do not claim them if you are not willing to pay for the search at this point in time) so that you get a written opinion for each searched invention and then decide which one to examine in that application and whether any one of the others is to be moved to examined in divisionals (right away or later on). In this way you know before filing some divisionals what is the EPO's preliminary opinion on the patentability of said inventions, maybe you will decide not to file those divisionals if the prior art is very strong. If you were to file any one of those divisionals, you have to pay the search fee again, but it will be reimbursed after some months because you already paid for the search, otherwise the fee will not be reimbursed.

Like in the US, divisionals can be filed as long as one prior application is pending.

If your description is structured such that you described the different inventions in the form of different aspects of the invention, then removing the part related to inventions not claimed should be more or less straightforward.

You may want to read the last chapter of EPO's Euro-PCT Guide that explains the European regional phase in a very understandable manner. It includes references to the applicable articles, rules and guidelines for examination (a very thorough explanation of all aspects related to European patent prosecution).

Lastly, bear in mind that if you are not a natural or legal person resident in a Contracting State of the European Patent Convention, you will have to be represented by a European patent attorney for EPO's proceedings.

P.S. The page fee of EP applications is for each page in excess of 35, it is in PCT where it is 30.

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    The one thing I did not fee confident in is the question - can he go back to the PCT application for content in a divisional? Since the PCT is an EPO application (as well as 140+ other jurisdiction's applications). If so, he could reduce the page count at the time of entry. I assume he could then delete 20 pages related to invention one and add 20 pages (from the PCT application) to support invention two without a fee for additional page count. – George White Jan 10 at 23:15
  • @the-europeist Thanks very much for the well written answer. – Giri Jan 11 at 1:29
  • @GeorgeWhite I honestly do not know the answer to that question right now, I will have to review my books on Monday. I would say you can do that because divisionals refer to parent application as filed, and that would be the PCT even if you amend the specification upon entering into the European phase. I am not 100% sure though, I have never been in this situation before. – the Europeist Jan 11 at 11:46
  • @GeorgeWhite I have checked this and I am fairly certain that the matter for the first generation of divisionals corresponds to the PCT disclosure, not the version as amended upon entry into the EP phase on which you base that granting procedure. In the case you file a first divisional with less matter than the PCT, a divisional based on said first divisional (thus, second generation divisional) can only be based on matter of the first divisional. Therefore, amending specs of divisionals is possible, but there is that downside. You can only file divisionals for "parents" that are pending. – the Europeist Jan 13 at 18:23

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