Patent Protection Costs in Europe: Southern Europe

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Published on 13 March 2019

The European Union is a global powerhouse comprised of 28 countries with diverse languages and cultures, which are united by their objective to operate as a single market, resulting in a Gross Domestic Product of approximately 15.3 trillion Euros. The single market hosts the headquarters of many Fortune 500 companies and is a gold mine for innovative enterprises and for multi-national corporations that are willing to invest in the region. In this article, we shall discuss the costs of patent protection in Southern Europe.

Southern Europe

For the purpose of this article, the region of Southern Europe refers to the region encompassing the following countries and territories: Albania, Andorra, Bosnia and Herzegovina, Croatia, Gibraltar, Greece, Italy, Malta, Montenegro, Portugal, San Marino, Serbia, Slovenia, Spain, the Former Yugoslav Republic of Macedonia, and Kosovo. This classification is in line with that followed by the Department of Economic and Social Affairs of the United Nations.

Patent Filings in Southern Europe

In the year 2016, the National Intellectual Property/Patent Offices of Albania, Andorra, Bosnia and Herzegovina, Croatia, Greece, Italy, Malta, Montenegro, Portugal, San Marino, Serbia, and Spain collectively received more than 15,000 patent applications, with two-thirds of the total patent applications being filed with the Italian Patent and Trademark Office (World Intellectual Property Indicators 2017).

However, the countries of Albania, Croatia, Greece, Italy, Malta, Portugal, San Marino, Serbia, Slovenia, Spain, and the Former Yugoslav Republic of Macedonia are also member states of the European Patent Office. As a result, patents granted by the European Patent Office may also be validated in these jurisdictions, in addition to being extended to Bosnia and Herzegovina and Montenegro.

As per the latest Annual Report published by the European Patent Office, more than 100,000 patents were validated in each of Greece, Italy, Portugal, and Spain in 2017, corresponding to more than 95% of all granted European patents in 2017. In contrast, less than 100,000 patents were validated in the other jurisdictions, with the percentage of granted European patents that were validated ranging from about 68% in Serbia to about 95% in Slovenia.

The Costs of Patent Protection in Southern Europe

Let us now study the costs involved in obtaining and maintaining a patent in the top four Southern European economies (i.e., Greece, Italy, Portugal, and Spain). Since a patent is typically maintained for at least six to ten years, we shall consider the costs from November 2018 through November 2028. There are three categories of costs involved: official fees, attorney charges, and translation costs.

For the purposes of this article, we shall consider a patent specification drafted in English, comprised of 40 pages (including five pages of drawings) and 15 claims, which is to be filed electronically by a company (i.e., large entity) to which the patent filing rights in Greece, Italy, Portugal, and Spain have been assigned. Further, we shall consider that individual national patent applications having one priority claim are to be filed, and that the applicant does not intend to grant a license to willing third parties.

For the above scenario, the total costs to file a patent application, get the patent issued, and maintain the patent are approximately $43,000. As shown in Table 1, the estimated costs are spread across the five different stages of the patenting process: Filing, Examination, Prosecution, Grant, and Maintenance Fees/Renewal Fees/Annuities. The costs are inclusive of Value Added Tax, which has been added to the attorney charges and translation costs in Greece.

Patent Filing Costs and the Costs of Translating the Patent Specification

The estimated patent filing costs in Greece are inclusive of the official fees for each claim in the patent specification in excess of 10 claims, in addition to the attorney charges for handling the excess claims and the priority claim. Further, the costs are also inclusive of the official patent publication fee.

The estimated patent filing costs in Italy are inclusive of the attorney charges for handling the priority claim, filing an Assignment Document, and filing the designation of the inventor(s) with the Italian Patent and Trademark Office.

The estimated patent filing costs in Portugal are inclusive of the official fees and the attorney charges for patent publication and patent examination, the first two annuities, and the attorney charges for handling the priority claim.

The estimated patent filing costs in Spain are inclusive of the official search fee, the official fee for claiming a priority, the attorney charges for requesting and forwarding the search report, and the attorney charges for handling the priority claim.

Translation of the patent specification into the official language is mandatory in all four jurisdictions. The estimated costs of translating the patent specification into Greek, Italian, Portuguese, and Spanish vary between $2,197 in Spain to $2,636 in Italy. When expressed as a percentage of the total patent filing costs, the patent specification translation costs vary between about 50% of total patent filing costs in Spain to about 75% of the total patent filing costs in Portugal.

'Go Green' Filing Discounts

With the exception of Greece, the other three jurisdictions offer a Go Green filing discount for filing the patent application electronically. Spain and Portugal offer discounts of 15% and 50% on the official patent filing fees, respectively, for the electronic filing of patent applications.

In Italy, on the other hand, the non-electronic filing of patent applications is extremely expensive when compared to electronic filing, and includes an official fee for printing excess pages in the patent specification, which varies based on the number of pages in the specification. For the above mentioned scenario, in which the patent specification comprises between 21 and 50 pages, the official non-electronic patent filing fee in Italy is approximately $456, while the official electronic patent filing fee is just $57.

Patent Prosecution Costs and Translation Costs

The estimated patent prosecution costs are based on between one and two office actions with substantive objections being issued in each jurisdiction. These costs are inclusive of the attorney charges for reporting each office action, preparing a response to each office action, and processing the response to each office action.

As is the case with patent filing, translation is also required during patent prosecution in all four jurisdictions. Assuming 10 pages of translation per prosecution action, the estimated patent prosecution translation costs vary between $941 in Spain to $1,506 in Italy. When expressed as a percentage of the total patent prosecution costs, the translation costs vary between about 32% of the total patent prosecution costs in Spain to about 43% of the total patent prosecution costs in Greece.

Patent Grant Costs

With the exception of Italy, an official patent grant fee or patent issue fee is charged in the other three jurisdictions, in addition to a publication fee that is charged in Greece. The approximate official fees that are payable at the patent grant stage range from $20 in Spain to $279 in Greece.

Patent Maintenance Fees in Spain

In Spain, no patent maintenance fees are payable in respect of a pending patent application. Accumulated patent maintenance fees in respect of the third year through the year in which the patent is granted are to be paid within three months from the date of publication of the granting in the Industrial Property Official Bulletin. Subsequent patent maintenance fees are to be paid within three months from the due date, with the due date for the payment being the last day of the month corresponding to the month of filing of the patent application.

Patent Maintenance Fees in Greece

In Greece, the first patent maintenance fee is to be paid in respect of the third year from filing, with subsequent patent maintenance fees being payable on an annual basis in advance. The deadline for the payment of a patent maintenance fee in Greece is the last day of the month corresponding to the month of filing of the patent application.

Patent Maintenance Fees in Italy

In Italy, the patent maintenance fees for the first four years are included in the official fee for filing the application. The first patent maintenance fee is to be paid in the fourth year from the date of filing for the fifth year. Subsequent patent maintenance fees are payable on an annual basis in advance. Like Greece, the deadline for the payment of a patent maintenance fee in Italy is also the last day of the month corresponding to the month of filing of the patent application.

Patent Maintenance Fees in Portugal

The patent maintenance fee system in Portugal is identical to that in Italy, with one substantial difference. No patent maintenance fees are payable for the third year and the fourth year in Portugal. However, the applicant is mandated to indicate to the Portuguese Institute of Industrial Property that the patent application is to be renewed.

Patent Annuity Fees by Country

The patent maintenance fees by country, when expressed as a percentage of the total costs of patenting, vary between about 21.5% of the total estimated costs in Spain to about 32% of the total estimated costs in Portugal.

License of Right and Reduction in Patent Maintenance Fees

Like patent legislation in the United Kingdom, Spanish, Italian, and Greek patent legislations also offer the proprietor of a patent the option of getting the patent endorsed in the Register of Patents with a "License of Right" entry. Once this endorsement is carried out, the proprietor is obliged to grant licenses to willing third parties.

To encourage proprietors to grant licenses, a License of Right entry comes along with the handsome incentive of a 50% reduction in the official patent maintenance fees in Spain and Italy.

As per Greek patent legislation, a License of Right entry is valid for a period of two years, during which the patentee shall be entitled to a reduction in the official patent maintenance fees. The amount of reduction shall be determined in general or for specific categories of cases by the decision of the Administrative Council of the Industrial Property Organisation.

National Filings or European Patent Validation? – A Comparison of Costs

An alternative to filing individual national patent applications in Greece, Italy, Portugal, and Spain is to file a patent application with the European Patent Office and validate the European Patent in the same four jurisdictions.

The approximate costs of filing a European patent application, requesting an examination of and prosecuting the European patent application, completing the patent grant procedure, and maintaining the patent application till grant are $18,500.

The estimated costs of validating a European Patent in the four jurisdictions range from $3,300 in Portugal to $3,800 in Greece. With the exception of Italy, official fees are charged in the other three jurisdictions towards the completion of the validation procedure (filing of a translation of the granted patent specification and publication of the granted patent). Likewise, the estimated costs of maintaining the validated patent vary from $2,100 in Spain to $2,970 in Portugal.

The total costs of obtaining and maintaining a patent through the validation route across all four jurisdictions amount to approximately $42,500, which is more or less similar to the costs of filing individual national patent applications.

European Patent Validation – Patent Translation Costs

None of the four jurisdictions are signatories of the London Agreement, which seeks to reduce or eliminate the translation costs incurred while validating a European Patent in member states of the European Patent Office. Therefore, a translation of the complete specification into Greek, Italian, Portuguese, and Spanish is mandatory during the completion of patent validation.

As mentioned earlier, the estimated costs of translating the patent specification into Greek, Italian, Portuguese, and Spanish vary between $2,197 in Spain to $2,636 in Italy. When expressed as a percentage of the total patent validation costs, the patent specification translation costs vary between about 60% of total patent validation costs in Spain to about 78% of the total patent validation costs in Italy.

Patent Cost Calculators

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Venkatesh Viswanath (Senior Content Strategist, Quantify IP) contributed to this article.
Exchange Rate Used: 1 U.S. Dollar = 0.88 Euros
Note: The estimates and fees depicted in this article are based on the Official Fee Schedules as on November 2, 2018