Pages 13-20

Annex A.1 to the ADA - Arrangements for the automatic debiting procedure (AAD)¹

CONTENTS

1. Automatic debiting procedure

2. Types of proceedings covered

3. Types of fees covered

4. Types of fees not covered

5. Automatic debit order and automatic debiting

6. Decisive payment date

7. Insufficient funds

8. Replenishing the deposit account following the communication regarding insufficient funds

9. Administrative fee

10. Amendment and correction of debit

11. Subsequent filing of the automatic debit order

12. Use of other forms of payment

13. Revocation of an automatic debit order

14. Termination of the automatic debiting procedure

15. Statements of account

1. Automatic debiting procedure

A deposit account may also be debited on the basis of an automatic debit order signed by the account holder (automatic debiting procedure). Such an order may only be filed on behalf of the applicant or the patent proprietor or his representative, and extends to all types of fees covered by the automatic debiting procedure and payable by him in respect of the proceedings specified in the automatic debit order. As the proceedings progress, each such fee shall be automatically debited and treated as having been paid in due time. The automatic debit order may not be restricted to specific types of fees.

2. Types of proceedings covered

Automatic debiting shall be allowed for:

(a) European patent applications,

(b) international applications entering the regional phase before the EPO (Euro-PCT applications),

(c) European patents on behalf of the patent proprietor as party to opposition proceedings or appeal proceedings following opposition proceedings.

3. Types of fees covered

Unless expressly excluded under point 4 below, automatic debiting shall be allowed for all types of fees, in particular:

(a) filing fee (Art. 78(2) EPC)

(b)* national basic fee (Rules 106(a) and 107(1)(c) EPC)

(c)* search fee for a European or supplementary European search (Art. 78(2), Rule 46(1), Rule 112, Art. 157(2)(b) EPC)

(d)* designation fee for each contracting state designated (Art. 79(2), Rules 106(b) and 107(1)(d) EPC)

(e)* claims fee for the eleventh and each subsequent claim (Rules 31(1), 51(7) and 110 EPC)

(f) renewal fees for European patent applications (Art. 86(1) EPC)

(g) examination fee (Art. 94(2) EPC)

(h) fee for grant, including fee for printing the European patent specification (Art. 97(2)(b) EPC)

(i) fee for printing a new European patent specification (Art. 102(3)(b) EPC)

(j) fee for further processing (Art. 121(2) EPC)

(k) fee for re-establishment of rights (Art. 122(3) EPC), provided a legally binding disposal of the application or patent has not already entered into force

(l) fee for appeal (Art. 108 EPC), if payable by the applicant or patent proprietor

(m) surcharge on the filing fee, search fee, a designation fee or the national basic fee (Rule 85a(1) EPC)

(n) surcharge for late filing of the request for examination (Rule 85b EPC)

(o) additional fee for late payment of a renewal fee for the European patent application (Art. 86(2) EPC)

(p) surcharge for late performance of the acts required under Rule 58(5) EPC (Rule 58(6) EPC)

(q) administrative fee for additional copy (copies) of the documents cited in the European search report

(r) administrative fee pursuant to point 9 below for late replenishment of the deposit account

(s) costs for additional European patent specification(s)

(t) extension fee for the extension of European patent applications and patents.

4. Types of fees not covered

Automatic debiting shall not be allowed for the following types of fees:

(a) all fees, particularly the opposition fee, payable by parties other than the applicant or patent proprietor

(b) conversion fee (Art. 136(1), 140 EPC)

(c) fee for the awarding of costs (Rule 63(3) EPC)

(d) fee for the conservation of evidence (Rule 75(3) EPC)

(e) fee for a technical opinion (Art. 25 EPC)

(f) all fees, costs and prices laid down by the President of the Office under Article 3 of the Rules relating to Fees, other than those listed in points 3(q) to (s) above.

5. Automatic debit order and automatic debiting

5.1 As from the date of receipt of the automatic debit order at the EPO, and as the proceedings progress, the EPO shall debit the account holder's deposit account in respect of all fees for which automatic debiting is allowed and which arise in respect of the proceedings specified in the automatic debit order in question, and shall treat such fees as having been paid in due time, provided they fall due on or after the date of receipt of the order and the deposit account contains sufficient funds.

5.2 Each debit shall be effected on the basis of the application documents then available. The EPO shall take into consideration, to the account holder's benefit or detriment, all factors known to it at that time and having a legal bearing on the fees, and shall do so in such a way as to safeguard all rights arising from the application.

5.3 The debit shall be effected in euro in the amount applicable for the fee in question on the date to be considered as the date on which payment is made (hereinafter "decisive payment date").

6. Decisive payment date

6.1 Except where otherwise provided under points 8 and 11 below, payments under the automatic debiting procedure shall be considered to have been received

(a) for fees subject to time limits for payment:

on the last day of the period for payment of the fee;

(b)* for renewal fees

• for European patent applications: on the date they fall due (Rule 37(1), first sentence, EPC);
• for European divisional applications: on the last day of the period under Rule 37(3), second sentence, EPC);
• for international applications entering the regional phase before the EPO: on the date they fall due (Rule 107(1)(f) in conjunction with Rule 37(1) EPC);

(c) for fees for re-establishment of rights, further processing and appeal:

on the date of receipt of the request for re-establishment or further processing, or of the appeal;

(d) for administrative fees and costs (see points 3(q), (r) and (s) above):

on their due date (Art. 4(1) RFees).

6.2 Provided the conditions under point 5 above are met, the above dates shall be the decisive payment date for the purposes of Article 8(2) RFees.

7. Insufficient funds

7.1 If on the decisive payment date there are insufficient funds in the deposit account to pay one or more fees in respect of a particular application, the account holder shall be informed accordingly.

7.2 If the funds are only partly insufficient, fees shall be debited in ascending order of application number until the funds are exhausted.

8. Replenishing the deposit account following the communication regarding insufficient funds

8.1 If, within one month of notification of the communication under point 7 above, the deposit account is sufficiently replenished to enable the fee and the administrative fee under point 9 below to be paid, the EPO shall debit the fee and the administrative fee automatically and payment shall be deemed to have been paid on the original decisive payment date.

8.2 If after replenishment there are sufficient funds to debit the fee but not the administrative fee as well, payment shall be deemed to have been made on the date on which the deposit account was thus replenished.

8.3 If the EPO is informed within the period referred to in point 8.1 above that recognition of the original decisive payment date is not required, only the fee will be debited; payment shall then be deemed to have been made on the date on which the deposit account was replenished.

9. Administrative fee

The administrative fee shall be 5% of the amount not covered by the account - but not less than euro 51 or more than euro 766 - for every decisive payment date affected2.

10. Amendment and correction of debit

10.1 If after actually debiting a fee the EPO becomes aware of any change to the legal basis on which it did so, and which was received by the EPO or, where applicable, the competent national authority (see point 6.9 ADA) before the decisive payment date, the EPO shall if need be amend the debit retroactively to the original decisive payment date.

10.2 If the EPO finds a mistake in its execution of an automatic debit order, it shall correct the debit retroactively to the original decisive payment date.

11. Subsequent filing of the automatic debit order

11.1 If an automatic debit order is not received by the EPO until after expiry of the basic time limit for paying a fee which may be paid late together with a surcharge, and after despatch of the communication informing the account holder that he can validly pay the fee together with a surcharge (Rules 85a(1) and 85b, Art. 86(2), Rule 58(6) EPC), both fee and surcharge shall be automatically debited; payment shall be deemed to have been received on the last day of the period of grace. If the automatic debit order is received before despatch of the communication regarding the possibility of paying a surcharge, this communication shall be despatched accompanied by a note indicating that in future the automatic debiting procedure will apply.

11.2 If an automatic debit order is not received by the EPO until during the period of grace for paying the claims fees under Rule 31(1), third sentence, EPC, the claims fees shall be debited automatically; payment shall be deemed to have been received on the last day of the period of grace. If the automatic debit order is received before despatch of the communication regarding the possibility of paying the claims fees during a period of grace, this communication shall be despatched accompanied by a note indicating that in future the automatic debiting procedure will apply.

11.3 If an automatic debit order is not received until during the period for requesting re-establishment or further processing or until during the period for appeal, automatic debiting of the fee for re-establishment, further processing or appeal shall be effected on the day on which the request or appeal is received by the EPO, provided the automatic debit order was received before or together with the request or appeal. If the automatic debit order is received after the request or appeal has been filed, but before expiry of the period for filing it, payment of the fee shall be deemed to have been received on the date on which the automatic debit order was received.

11.4 The types of fees not listed in points 11.1 to 11.3 above, and in particular fees not paid as a result of failure to perform a procedural act, are not covered by the automatic debiting procedure and must be paid by the applicant, patent proprietor or his representative on his own responsibility using another form of payment admissible under the Rules relating to Fees.

12. Use of other forms of payment

If in an individual case a fee is paid separately using another form of payment and before its decisive payment date, the EPO will not carry out the automatic debit order in respect of that fee.

13. Revocation of an automatic debit order

An automatic debit order may only be revoked for the proceedings as a whole. Debits cannot be revoked in respect of fees whose decisive payment date precedes the date on which the revocation was received.

14. Termination of the automatic debiting procedure

The automatic debit order ceases to be effective on the day on which

(a) the grant of the European patent takes effect; if an opposition to the granted European patent is filed, the patent proprietor's automatic debit order becomes effective again until the opposition or any ensuing appeal has been finally settled;

(b) the European patent application is withdrawn, refused or deemed withdrawn by final decision, or consolidated with another application to enable the examining division to carry out a single grant procedure;

(c) a request is received for a transfer of rights to be recorded in the Register of European Patents under Rule 20(1) EPC, provided the automatic debits were being made from the deposit account of the party withdrawing from the proceedings and said party at the same time revokes his automatic debit order;

(d) notification is received that the representative has terminated his appointment, provided the automatic debits were being made from the deposit account of the representative and he simultaneously revokes his automatic debit order;

(e) suspension of the proceedings under Rule 13 EPC takes effect;

(f) interruption of the proceedings under Rule 90 EPC takes effect.

15. Statements of account

The account holder shall receive each month several statements of all sums debited. Should his own records suggest that the statement contains errors, he shall inform the EPO without delay. The EPO shall check this information and if need be correct the debit retroactively to the original decisive payment date.