Luxemburg patents - efficient European protection

Luxemburg is a small, yet important country in the heart of Europe. It is a member of the European Patent Convention (EPC) and other relevant international IP treaties. Luxemburg patent applications are not examined, however directly published as patents after 18 months.

Interestingly, Luxemburg patent applications are searched by the EPO.

According to Article 9(2) of the Rules relating to Fees the EPO will partially or fully refund (international) search fees paid to the EPO for a European, including Euro-PCT, or PCT application if the (supplementary) European search report can be based on an earlier search report prepared by the EPO, for example on behalf of the Luxemburg patent office.

What can be registered as a patent in Luxemburg?

Patentability criteria in Luxemburg are essentially the same as in front of the EPO: novelty, inventive step, and industrial applicability. Claims can be directed to products, processes, devices or uses. Luxemburg doesn’t know utility models, though.

The process of patent registration in Luxemburg

Filing a patent application in Luxemburg is a straightforward and easy process. One can file using various electronic means, per e-mail, per conventional mail and per personal deposit at the office. The mandatory application fee needs to be paid within one month after filing. A search request is optional but indispensable for the below-discussed refund concept.

Before grant and within four months after receipt of the search report the applicant may request amendments to the originally filed documents that do not extend the original scope.

18 months after filing, the application is published as granted patent unless acceleration is requested (fees apply).

Documents required for the registration of a patent in Luxemburg

To be assigned an application date, a patent application must comprise the request itself, a description, and claims. Drawings are optional. Further, to be successfully registered, a summary, details as to the inventor(s), optionally a declaration that the inventors do not wish their names to be published, and optionally a declaration of priority are required. In case of missing documents or other formal defects, the office will ask the applicant to remedy these defects.

Keep in mind that patents in Luxemburg are neither examined as to substance nor as to details of the description.

The application documents can be in German, Luxembourgish, French or English. In the pertinent latter case, the claims must be translated into German or French. Machine translations are not recommendable in case the registered patent forms a relevant part of an IP portfolio.

No restriction as to the number of (independent) claims exist.

Search fee refund in front of the EPO

Luxemburg patent applications are searched by the EPO.

As usual, the EPO examiner provides not only a search report but also a detailed opinion as to the patentability of the claimed subject matter. The search report as such is forwarded to the applicant or his representative by the Luxemburg patent office. The EPO searches the application in the language of filing, for example a search opinion for English language applications is issued in English language with the German or French translation of the claims as required by the LU office being irrelevant.

These procedural details allow for a still widely unknown option to receive substantial refunds of search fees paid to the European Patent Office in subsequent EP or PCT applications.

The refund process is straightforward:

When filing a direct European patent application or a PCT application with the EPO being selected as ISA, the priority of the earlier filed Luxemburg application must be claimed. In other words, it is paramount to first file in Luxemburg (and/or in other jurisdictions in parallel as the local laws may require).

The earlier search report prepared by the EPO in the Luxemburg application will then be considered by the EPO, and a refund of the EPO direct or PCT search fees processed.

Importantly, the subsequent EP or PCT application may not substantially deviate from the originally filed LU application, otherwise the EPO has to conduct a new search which doesn’t allow for a refund or only for a partial refund the latter being financially unattractive due to the 450€ search fees already paid to the LU office.

According to the 2023 EPO rules, different levels of refund exist for searches comprising a written opinion like the ones provided through the Luxemburg patent office, particularly:

In PCT procedures, EPO acting as ISA:

-       100% if the EPO can make full use of the earlier search report

-       25% if the EPO can make partial use of the earlier search report

In regional EP procedures, EPO acting as regional search authority:

-       84% if the EPO can make full use of the earlier search report

-       21% if the EPO can make partial use of the earlier search report

It follows that the proposes concept brings the most benefit in Euro-PCT (ISA=EPO) procedures where the PCT application claims priority of a Luxemburg patent application (100% refund of 1,775€). Second best are regional EP procedures (84% refund of 1,460€).

The overall costs (in €) including exemplary service fees for handling the Luxemburg application are summarized in the following table. The professional fees are those offered by JET IP to our esteemed clients.

When filing in English, the necessary claim translation needs to be filed with the LU patent office. Using machine translations, no further costs will apply. Otherwise, one may consider a further 50 to 100€ translation fees for a reasonably sized claim set.

Besides the appealing financial aspects of the presented concept, from a legal or company policy perspective it may be prohibitive to be applied or at least impose risks, such as violation of technology export restrictions. These risks may be properly addressed, particularly when no genuine interest exists on the LU patent rather than obtaining efficiently an EP search report. For instance, the LU patent can be dropped by non-payment of the 3rd annuity, withdrawn before publication after receipt of the search report, or actively withdrawn after publication.

However, it is also to be considered that although being a small country, Luxemburg has powerful customs authorities, and regarding cargo is one of the major players in Europe, regularly being among the top 10 list of European cargo airports. This combination brings IP right owners in excellent positions to enforce their rights when the potentially infringing goods enter Europe. Given the low maintenance fees (33€ for year 3, 41€ for year 4, up to 300€ for year 20) maintaining a granted LU patent for a couple of years is worth considering.

When selecting a local agent to file for you in Luxemburg, you should ensure that their professional fees comprise filing, fees payment, obtaining a priority document for subsequent filings, reporting on grant, transmitting the letters patent, and reminding you on the 3rd annuity at least. It might be advisable to negotiate a fixed fee package for filing in LU and at the EPO.