EPO vs. USPTO: Which should I choose for my PCT?
By Jeff Sweetman*
This is a question that pops up frequently—indeed, if you subscribe to the NAPP
patent practice e-mail discussion forum you will recently have seen a discussion on
this very topic.
Choosing your International Searching Authority
Under a bilateral agreement, Europe and the US have agreed that their residents can
select which of those two patent offices provides the International Search Report
(ISR) and International Preliminary Examination Report (IPER) for a PCT application.
For US applicants, there is a space on the PCT Patent Request form to designate
which of the two patent offices you would like to prepare the ISR, and which you
would like to prepare the IPER.
Cost comparison: EPO vs. USPTO
The fee to have the EPO prepare the ISR is roughly twice as expensive as getting
the USPTO to prepare it (US$1900 versus US$1000).
Many people point out that the lower fees at European regional phase offset this
higher initial cost of getting the EPO to produce the ISR. To some extent, this is true.
The two EPO fees that are potentially affected are the Search Fee and the
Examination Fee. If the EPO prepared the ISR, then the Search fee is waived at
EPO entry. This provides a nice saving of EUR552, which is the amount that would
have been paid had the ISR been prepared by the USPTO.
However, the difference in price only makes up for 75% of the higher price paid for
the European ISR in the first place. As such, if you are planning to get the IPER
performed by the USPTO, or you do not intend to demand International Preliminary
Examination (IPE), then you should think carefully about whether the extra cost is
That said, if you do demand IPE and get the EPO to prepare the IPER, things swing
in your favour financially. In this situation, the European examination fee (which is
payable at regional phase) is halved, from EUR1430 to EUR715. This ends up being
quite a few hundred dollars cheaper for your client.
Of course, if you weren’t interested in demanding IPE, then there’s little point in doing
so just to save money—you would need to add the costs of requesting IPE to the
total, which swings the total cost back in favour of using the USPTO.
Assuming costs aren’t such a big problem, what are the other issues associated with
taking the European route for ISR and IPER? It used to be that the European search
in some subject areas was considered superior, since it had a broader focus than the
USPTO performing the same search. However, the general feeling is that the
standards of EPO searches have been dropping somewhat in recent years due to the
increase in workload. This isn’t the sort of information that you’ll find published
anywhere, so ask others that work in your subject area what their experience has
Also, if you think the USPTO is backed up with work, the EPO is even busier. At
PCTFILER, our gut feeling is that we see more cases where an ISR or IPER
produced by the EPO arrives later than those produced by the USPTO.
And finally, whichever road you choose to take, you should bear in mind that the
EPO will not perform searches in subject areas that are not protectable under
European patent law. The obvious one here is business methods, but see MPEP
1840 for a definitive list.
*Jeff Sweetman is an Australian Patent Attorney and PCTFILER’s Head of
Production. PCTFILER is an innovative company specialising in National Phase
entry at the end of the PCT process. To receive an accurate up-front cost estimate
for your next National Phase filing program, use the Cost Estimator on the
PCTFILER Web site: www.pctfiler.com