Pages 215-222

INFORMATION FROM THE EPO

Implementation of the fee reform 1997^*

1. On 5 December 1996 the Administrative Council of the European Patent Organisation amended the European Patent Convention (EPC), its Implementing Regulations and the Rules relating to Fees (RFees) with effect from 1 July 1997. The amendments provide for substantial reduction of the filing, search and designation fees levied by the EPO and a longer time limit for paying the designation fees1.

The new rates are as follows:

2. In order to enable applicants to profit from the amendments early and to a maximum extent, detailed information as to the transitional regime and the modified system of designation is given below.

Fee reduction

3. The new fee rates apply to payments from 1 July 1997. They do not only apply to European patent applications (EP applications), Euro-PCT applications and international applications filed on or after that date but also to pending applications where the relevant basic period for paying the fee in question2 has not expired and the fee has not been validly paid before 1 July 1997. However the old fee rates continue to apply if the basic period for their payment expired before 1 July 1997, ie in cases of late payment with surcharge (Rule 85a EPC, Rule 16bis PCT).

4. The EPO's Rules relating to Fees (Art. 8(1) and (2)) and the Arrangements for deposit accounts3 define the date to be considered as the date on which a payment is made. Applicants wishing to profit from the new rates have to make sure that payment of the relevant fees is made not earlier than 1 July 1997. This may require some attentiveness in cases where the time limit for paying these fees expires on or shortly after 1 July 1997.

With regard to European filing and search fees, to be paid within one month of filing (Art. 78(2) EPC), this is the case where EP applications are filed in the first days of June 1997 (for designation fees, see point 9 below). In order to profit from the new fee rates and to avoid later payment with surcharge, applicants should arrange for payments to be effected precisely between 1 July and the end of the relevant one-month time limit. Any difficulties in this respect may be avoided if the filing of the application can be deferred until around mid-June. If this is not feasible, eg for priority reasons, the following should be noted as regards payments to the EPO.

5. Applicants who have a deposit account according to the EPO's arrangements of 1981 and 1994³ may file a debit order (eg by fax) with the Office to ensure timely payment of the fees in question. In such cases the date of receipt by the EPO of the order is considered as the date of payment.

As under the automatic debiting procedure fees are debited from the deposit account only on the last day of the relevant time limit, applicants participating in this procedure will automatically enjoy the reduced rates if the relevant time limit expires on or after 1 July 1997.

6. A timely precise payment may also be achieved by cash payment at one of the EPO's cash desks4 (relevant date of payment: date of receipt of the cash payment) or by transmittal or delivery of a cheque made payable to the EPO (relevant date of payment: date of receipt of the cheque at the EPO provided that the cheque is met).

7. Applicants wishing to pay by transfer or payment to an EPO bank or giro account must make sure, eg by an instruction to their bank, that the amount due is actually entered in the EPO's account on the envisaged date. This means that the amount must be shown in the statement of account issued on that day by the EPO's bank or giro office. Any "value dates" given by the bank or giro office to the payment will be disregarded.

8. International applications under the PCT filed on or after 1 June 1997 for which the search is to be carried out by the EPO enjoy the reduced PCT search fee payable to the PCT Receiving Office (RO) within one month of the receipt of the international application by the RO (Rules 16.1(f) and 15.4(a) PCT), provided that payment of the search fee is made no earlier than 1 July 1997.

Where the EPO is the RO the above explanations (points 3-7) apply. Where the international application is filed with an RO other than the EPO the payment of the search fee is governed by the rules concerning the mode and date of payment applicable to the RO in question.

Longer time limit for paying designation fees

9. As of 1 July 1997 a new time limit for paying the designation fees for EP applications applies5. Designation fees are payable then only within six months of the date on which the European search report is published (Art. 79(2) EPC as amended). The time limit for paying the designation fees in EP applications will thus be the same as that for paying the examination fee (Art. 94(2) EPC).

It is to be noted however that the new time limit does not normally apply to European divisional applications and applications filed under Article 61(1)(b) EPC, for which the relevant fees will have to be paid within one month from filing of such application (Rules 25(2) and 15(2) EPC).

Neither does the new time limit apply to Euro-PCT applications. For these, designation fees continue to be payable on entry into the European phase before the EPO, ie within 21 or 31 months of the filing or priority date (Rule 104b(1) EPC).

10. Article 79(2) EPC as amended also applies to EP applications for which on 1 July 1997 the designation fees in force before that date have not yet been validly paid and the time limit for paying them, under Article 79(2) EPC as currently in force, has not expired. Thus in particular EP first filings, ie claiming no priority, made on or after 1 July 1996 enjoy the longer time limit for paying the designation fees at the new rate. EP applications claiming priority and filed at the very end of the priority year may profit from the new time limit only if the priority date is on or after 31 May 19966.

11. Any EP application for which the new time limit applies also enjoys the reduced designation fees.

12. The new time limit for paying designation fees equally affects the due date for extension fees (amount unchanged at DEM 200 per extension), since under the extension agreements and national implementing legislation extension fees are to be paid within the same time limits as the designation fees.

Modified system of designation

13. With the implementation of Article 79(2) EPC as amended, the system of designating contracting states, which has been developed under the EPO's practice, will be streamlined and adapted to the structural changes resulting from the longer time limit for paying designation fees.

14. Under the present system designations in EP applications must be made on filing by expressly indicating the states for which protection is sought. As, however, Article 79(1) EPC does not allow any subsequent designation, the system of express designation has been supplemented by a so-called precautionary designation. Under this system, applicants seeking a patent in only some contracting states at the time of filing can nonetheless keep their options open until the time limits for paying designation fees expire7. The practical effect of the system is that the applicant decides definitively on the geographical scope of the application only when paying the designation fees.

At present designation fees have to be paid for EP applications before the application is published (Art. 79(2) EPC as in force) and third parties can see from the published application, the European Patent Register and Bulletin for which contracting states protection is actually sought.

15. With the longer time limit for paying designation fees this will change however. On publication of an EP application it will still be open for which states protection will actually be sought. Consequently the European Patent Register and Bulletin will at this stage regularly indicate the designation of all contracting states party to the EPC on the day the application was filed. The same applies to published EP applications (A-documents).

The situation will thus be the same as for Euro-PCT applications, where the definitive geographical scope of the application has to be determined only on entry into the European phase, ie 21 or 31 months from the priority date.

Third parties and competitors are familiar with such a situation. They have already to consult the European Patent Register or Bulletin to find out whether the grant procedure has been initiated by the applicant filing the request for examination. In future they will be able to see at the same time which states were definitively designated in the application since these will be indicated in the European Patent Register and Bulletin once the basic time limit for paying the designation fees has expired. Such information will be available from the Register about eight months after publication of the European search report and appear about two weeks later in the form of a so-called "positive list" in the Bulletin (new section I.5).

The above applies mutatis mutandis to the information published by the EPO on extended EP applications.

16. Apart from the above changes the present precautionary designation will be replaced by an express designation of all EPC contracting states. The Request for Grant form (EPO Form 1001)8 will reflect the new designation system in section 32, containing a pre-crossed box to the effect that all states party to the EPC on filing the EP application are designated within the meaning of Article 79(1) EPC. Under section 32 the applicant should expressly indicate the states for which he intends (at the time of filing) to pay designation fees.

17. The indications under section 32 are combined with the applicant's request that no communications under Rule 85a(1) EPC and Rule 69(1) EPC be notified in regard of designated states not indicated there. For applicants participating in the EPO's automatic debiting procedure section 32 contains a request to the effect that designation fees be debited only for states indicated under section 32.

If a designation fee is not paid within the basic time limit of Article 79(2) EPC as amended communications from the EPO under Rule 85a(1) EPC and Rule 69(1) EPC will in principle only be issued with regard to designated states for which the applicant declared his intention to pay designation fees. With regard to other designated states for which designation fees have not been paid within the basic time limit, applicants will not receive any communication but may still validly pay any designation fee (with surcharge) until the end of the grace period under Rule 85a(2) EPC.

18. The modified designation system will apply to EP applications filed on or after 1 June 1997. Applicants are requested to use the revised request for grant form in the future. Please note that the changes to the EPO's designation system do not affect the Euro-PCT route and consequently there are no changes to EPO Form 1200 for entry into the European regional phase.