Pages 347-350

INFORMATION FROM THE EPO

LEGAL ADVICE FROM THE EUROPEAN PATENT OFFICE No. 3/85 rev.

Rule 31 EPC

Claims fees - Multiple sets of claims

Note: The principles remain the same, but the amendments to Rules 31 and 51 EPC should be borne in mind (see also comment re Legal Advice No. 4/80).

In multiple sets of claims, fees are incurred under Rule 31 EPC only for the set with the greatest number of claims. If the set that originally had the greatest number is reduced with the result that another set then has the greatest number, the number of claims in the latter set has to be reduced to the same number as the former set if no claims fees have been paid.

1. Due date for claims fees

Claims fees can fall due

(a) on filing of the European patent application if it contains more than ten claims (Rule 31 (1) EPC), and

(b) when the communication under Rule 51(4) EPC is issued if the number of claims incurring fees proceeding to grant is greater than the number of claims fees paid at the time of filing (Rule 31 (2) EPC).

Re (a)

If the applicant does not pay within one month any claims fees due when he files his application he is invited to do so within a period to be fixed by the EPO (Guidelines for Examination in the EPO, A-III, 9). The same applies if the amount paid in respect of claims fees is not enough to cover all the claims incurring fees and the applicant does not specify exactly what claim numbers the payment is intended to cover.

If the claims fees are not paid in full during the period allowed and the purpose of the amounts paid is not exactly specified, the fees will be deemed to have been paid only for as many claims in numerical sequence starting with claim 11 as are covered by the amount paid. The rationale of Article 9 (2) of the Rules relating to Fees, which regulates the elimination of designations, is thus applied analogously to claims fees. The remaining claims, for which fees due have not been paid, are deemed to be abandoned (Rule 31 (3) EPC).

Re (b)

In the communication under Rule 51(4) EPC, the applicant is requested to pay, within three months from notification of that communication, a claims fee for any claims over and above ten unless he has already paid the fees for a corresponding number of claims in the procedure before the Receiving Section. If the claims fee for a particular claim is not paid in due time that claim is deemed to be abandoned (Rule 31 (3) EPC). In contrast to the procedure before the Receiving Section it is not a remediable deficiency if claims fees are not paid in due time.

The applicant is informed pursuant to Rule 69 (1) EPC that his claim is deemed to be abandoned. If he considers such a finding to be inaccurate he may apply for a decision under Rule 69 (2) EPC. He may also apply for re-establishment of rights under Article 122 EPC. The communication under Rule 51 (4) EPC remains in force notwithstanding the fiction of abandonment; Guidelines C-VI, 15.4.3 and 15.4.4 are not applicable.

2. Abandonment of claims

Claims fees are incurred for claims numbered 11 and above in the text of the application as it stands on the date of filing1. Abandoning Claims 1 to 10 does not bring about a renumbering of claims for fee purposes (cf. Guidelines A-III, 9, which explicitly refers to "No. 11 onwards", and Legal Board of Appeal Decision J 09/84, OJ 8/1985, p. 233).

Once the communication under Rule 51(4) EPC has been notified, it is no longer possible to abandon claims without the consent of the Examining Division. Abandonment in that case is treated as communicating disapproval within the meaning of Rule 51 (4), second sentence, EPC and results in the communication under Rule 51 (4) EPC being deemed not to have been made.

3. Multiple sets of claims

Legal Advice No. 3 (OJ 6-7/1979, p. 292) dealt with claims fees incurred for multiple sets of claims2.

According to that Legal Advice, ten claims out of each set were free of charge. The Guidelines too have adopted this form of computation to date (C-III, 8.5 and C-VI, 15).

This approach is now superseded as a result of Legal Board of Appeal Decision J 08/84 of 28 May 1985, OJ 9/1985, p. 261.

As that Decision stated (point 11 of the Reasons), the practice to date has largely been concurred with and has also been accepted by those applicants affected, so that any possibility of claiming back the fees concerned has passed. In future cases, however, the EPO's practice will be in line with the Board of Appeal's ruling.

The Board's ruling is that only the set with the greatest number of claims can incur fees under Rule 31 EPC. Claims fees can therefore no longer arise simultaneously for more than one set of claims.

4. Deletion in the case of multiple sets of claims

The above change in practice gives rise to the further question of what is to be done if - because only some or none of the fees are paid for the set with the greatest number and claims are deleted as a result - the number of claims in that set is reduced below the number of claims in another set. The answer is that the other set is now the one with the greatest number of claims and hence that incurring claims fees under Rule 313.

It follows that:

if, as a result of claims having been deleted owing to non-payment of claims fees, the number of claims remaining in the set which originally incurred the fees in question is less than the number of claims in another set, the latter set too must be reduced so as to have the same number of claims as that remaining in the set originally incurring the fees.

The following examples show how this works in practice:

Example 1:

Set of claims for all Contracting States except Austria: 17

Set of claims for Austria (Article 167(2)(a) EPC): 23

Claims fees paid: 5

Deletion: both sets are reduced to 15 claims.

Example 2:

Set of claims for all Contracting States except France, the United Kingdom, Austria: 18

Set of claims for France (Rule 87 EPC): 16

Set of claims for the United Kingdom (national prior right): 16

Set of claims for Austria (Article 167(2) (a) EPC): 14

Claims fees paid: 4

Deletion: all sets are reduced to 14 claims.