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Annex A.2 to the ADA - Information from the EPO concerning the automatic debiting procedure

The Arrangements for the automatic debiting procedure (AAD)1 gave holders of deposit accounts with the EPO an additional payment option.

The automatic debiting procedure is explained below.

I. General remarks

At present, some 50% of all fee payments are made by debiting deposit accounts with the EPO. This has proved the simplest and cheapest method of payment for both the Office and regular feepayers.

The debiting procedure is governed by the Arrangements for deposit accounts (ADA)2.

At the moment, fees and other payments are debited on the basis of debit orders which must give the necessary information about the purpose of the payment and reach the EPO before the relevant time limit expires. In other words, responsibility for ensuring that payment is made correctly, in full and on time lies with the payer.

The high filing figures of the last few years have led to a corresponding increase in the EPO's fee-processing work, which the Office would like to rationalise. Since it records applications' procedural data electronically for other reasons, it is normally already in possession of the relevant information for fee payments. A logical next step would be to use this data as the basis for an automatic debiting procedure, and so provide account holders with an additional means of payment. In future, therefore, deposit accounts can be debited either using debit orders as hitherto or by means of automatic debit orders under the automatic debiting procedure.

Under the automatic debiting procedure, as laid down in the Arrangements for the automatic debiting procedure, an account holder will only have to give the EPO a single debit order - the automatic debit order for a specified application. From the date of its receipt the EPO will debit by computer the appropriate amounts of all fees for the application in question which are covered by the automatic debiting procedure, and will treat the payment as having been made in due time. For those types of application for which automatic debiting is allowed, the procedure will cover all fees payable by the applicant, patent proprietor or representative except those expressly excluded under point 4 AAD. Responsibility for ensuring that payment is made correctly, in full and on time thus passes to the European Patent Office.

The new procedure will mean certain adjustments for users as well. Once they have issued the automatic debit order, they will not normally need to take any further action to effect payment. Whereas in the past, however, applicants could achieve certain legal consequences simply by not paying a particular fee, under the automatic procedure users must actively inform the EPO that no payment (or only one particular one) is to be made; otherwise payments will be debited automatically. The EPO has amended a number of its forms to draw applicants' attention to such situations. If the new procedure is to function smoothly, it is also essential that applicants make sure that their deposit accounts always contain sufficient funds in order to avoid disadvantages and unnecessary work.

The new Arrangements for the automatic debiting procedure (AAD) form part of the existing Arrangements for deposit accounts (ADA), which thus also apply to the new procedure. Attention is drawn in particular to point 2 ADA (opening a deposit account), point 3 (account to be kept in euro only), point 4 (servicing the account), points 5.1 and 5.2 (conditions of operation), point 6.8 (10-day safeguard), points 6.9 and 6.10 (filing with national authorities) and point 8 (closure of account).

II. Notes on individual provisions of the Arrangements for the automatic debiting procedure (AAD)

Re point 1 AAD: Automatic debiting procedure

Pursuant to point 6.3 ADA, the automatic debit order must give not only the particulars of the application for which it is issued but also the number of the account to be debited. See also notes to point 5 AAD below.

The automatic debiting procedure is open only to the applicant or patent proprietor or his representative, not for example to opponents (including appellants or respondents in appeal proceedings), third parties or persons other than the applicant or patent proprietor who inspect the file.

Once the procedure has been brought to a close (eg by withdrawal of the application or when the decision granting or refusing a patent becomes final), the automatic debit order is no longer valid (see point 14 AAD). For revocation of the order, see point 13 AAD.

Re point 2 AAD: Types of proceedings covered

The EPO is working to ensure that in future the automatic debiting procedure will also cover fee payments made for international applications in proceedings before the EPO as receiving Office, International Searching Authority, designated Office, elected Office, or International Preliminary Examining Authority.

Re point 3 AAD: Types of fees covered

The EPO takes into consideration, to the account holder's benefit or detriment, all relevant factors known to it when the automatic debit is effected, doing so in such a way as to safeguard all rights arising from the application (see point 5 AAD).

Notes on individual fees:

Point 3(a) AAD: Filing fee

Where the requirements of Article 14(2) and Rule 6 EPC for reduction of fees (language rebate) are met, only 80% of the fee will be debited under the automatic procedure (Article 12(1) RFees).

Point 3(c) AAD: Search fee for a European or supplementary European search

For the supplementary European search fee, the procedure will take account of circumstances where the fee is reduced or not payable, debiting accordingly only the reduced amount or no fee at all.

If the search division informs the applicant under Rule 46(1) EPC that an additional search fee is payable for each additional invention involved, the relevant number of additional search fees will be debited automatically on the last day of the time limit set. The applicant will be informed accordingly in the communication under Rule 46(1) EPC (EPO Form 1507.2). He can prevent automatic debiting, or limit it to specific inventions, by notifying the EPO to this effect before the time limit expires.

Point 3(d) AAD: Designation fee(s)

Under the automatic debiting procedure, designation fees will be debited for the contracting states indicated in Section 32.2 of the Request for Grant form (EPO Form 1001) or in Section 10.1 of the form for entry into the regional phase (EPO Form 1200), unless the applicant informs the EPO to the contrary within the basic period for paying the designation fees (Article 79(2) EPC). If the applicant has marked Section 32.1 (designation of all contracting states) and within the basic period for paying the designation fee informs the EPO that he does indeed wish to pay designation fees for additional or different states to those indicated in Section 32.2, then these designation fees will be debited automatically, with effect from the date of expiry of the basic period. If however he does not inform the EPO until during the period of grace under Rule 85a(2) EPC that he wishes to have the designation fees for additional contracting states debited, the relevant designation fees plus surcharges will be debited with effect from the date of expiry of the period of grace under Rule 85a(2) EPC.

If, exceptionally, no contracting states have been indicated in Section 32.2 of Form 1001, the EPO will take this as designation of all contracting states. As a result, when the time limit under Article 79(2) EPC expires it will automatically debit the designation fees for all the contracting states, unless the applicant informs the EPO beforehand for which states he wants the fees debited.

If an applicant wishes to pay designation fees before expiry of the basic period for paying them (eg in conjunction with the programme for accelerated prosecution of European patent applications ("PACE"), as last published in OJ EPO 1997, 340, or if in the final phase of the European grant procedure he requests the immediate grant of the patent in accordance with Article 97(6) EPC), these fees must be paid separately using another form of payment allowed under the Rules relating to Fees (see point 12 AAD).

For the automatic debiting of designation fees where the automatic debit order is not filed until after expiry of the basic period for paying them, see point 11.1 AAD.

Point 3(e) AAD: Claims fees (Rules 31(1) and 51(7) EPC)

Claims fees under Rule 31 EPC:

The EPO will take as the basis for the automatic debiting procedure the claims incurring fees under Rule 31(1) EPC contained in the European patent application as filed. Where there is more than one set of claims, it will take the set containing the greatest number (see Legal Advice No. 3, November 1985 revised version, OJ EPO 1985, 347). If the applicant does not want to pay for any or all of the claims incurring fees contained in the application documents, he must inform the EPO accordingly before the time limit under Rule 31(1), second sentence, EPC expires.

For Euro-PCT applications, the EPO will take the number of claims existing when the regional phase begins (see B.II.4 of the information for PCT applicants concerning time limits and procedural steps before the EPO as designated and elected Office under the PCT, Supplement No. 1 to OJ EPO 12/1992 and OJ EPO 1994, 131).

Regarding the decisive payment date for claims fees under Rule 31(1) EPC where the automatic debit order is not received until after filing the application, see point 11.2 AAD.

Claims fees under Rule 51(7) EPC:

If the European patent application in the text in which the examining division intends to grant the European patent comprises more than ten claims, the examining division invites the applicant to pay claims fees in respect of each additional claim unless the said fees have already been paid in accordance with Rule 31(1) EPC (Rule 51(7) EPC). Upon expiry of the time limit set in this communication the relevant number of claims fees will be debited automatically. The applicant will be informed of this beforehand in the communication under Rule 51(7) EPC (EPO Form 2005). He can prevent automatic debiting by notifying the EPO accordingly before the above time limit expires. Non-payment of the claims fees would however result in the application being deemed withdrawn under Rule 51(8) EPC.

The decisive payment date for claims fees under Rule 51(7) EPC is governed by point 6.1(a) AAD even where the automatic debit order is filed later. In other words, such fees will be automatically debited on the last day of the time limit set in the communication under Rule 51(7) EPC.

If an applicant wishes to pay claims fees in accordance with Rule 51(7) EPC before expiry of the period for paying them (eg if in the final phase of the European grant procedure he requests the immediate grant of the patent in accordance with Article 97(6) EPC (see OJ EPO 1997, 340)), these fees must be paid separately using another form of payment allowed under the Rules relating to Fees (see point 12 AAD).

Point 3(f) AAD: "European" renewal fees

With renewal fees for European patent applications, in the automatic debiting procedure the EPO will not use the possibility of either early payment under Rule 37(1), second sentence, EPC or of late payment plus additional fee under Article 86(2) EPC. In accordance with Article 86(4) EPC, the automatic debiting procedure ceases debiting "European" renewal fees after payment of the renewal fee due in respect of the year in which the mention of the grant of the European patent is published.

If an applicant wishes to pay "European" renewal fees before expiry of the basic period for paying them (eg in conjunction with the programme for accelerated prosecution of European applications ("PACE"), as last published in OJ EPO 1997, 340), or if in the final phase of the European grant procedure he requests the immediate grant of the patent in accordance with Article 97(6) EPC), these fees must be paid separately using another form of payment allowed under the Rules relating to Fees (see point 12 AAD). If the request in accordance with Article 97(6) EPC is made less than three months before the due date of the next renewal fee, the applicant is advised to pay this fee separately at the same time as filing the request.

Point 3(g) AAD: Examination fee

The examination fee will be automatically debited on the last day of the time limit specified in Article 94(2) EPC, if appropriate with allowance being made for any reduction under Article 14(2) and Rule 6 EPC in conjunction with Article 12(1) RFees (language rebate) and because an international preliminary examination report has previously been drawn up (Rule 104b(6) EPC, Article 12(2) RFees). The applicant will be informed in the communication pursuant to Rule 50 EPC (EPO Form 1081) that the automatic debit is about to be made. Since examination has already been requested in the Request for Grant, the applicant can only prevent a debit by revoking the automatic debit order or withdrawing the application in time. The possibility of paying the examination fee plus surcharge within the period of grace under Rule 85b EPC is not affected, provided the application has not been withdrawn, or its grant or refusal has become final.

If an applicant wishes to pay the examination fee before expiry of the basic period for paying it (eg in conjunction with the programme for accelerated prosecution of European applications ("PACE"), as last published in OJ EPO 1997, 340), this fee must be paid separately using another form of payment allowed under the Rules relating to Fees (see point 12 AAD).

Point 3(h) AAD: Fee for grant, including fee for printing the European patent specification

If appropriate, the automatic debiting procedure also covers fees for printing where the application documents to be printed comprise more than 35 pages (Art. 2, No. 8.2 RFees).

If the applicant wishes to pay the fee for grant, including the fee for printing, before expiry of the period for paying it (eg if in the final phase of the European grant procedure he requests the immediate grant of the patent in accordance with Article 97(6) EPC (see OJ EPO 1997, 340)), this fee must be paid separately using another form of payment allowed under the Rules relating to Fees (see point 12 AAD).

Point 3(j) AAD: Fee for further processing

For the automatic debiting of this fee, the EPO has to use the date of receipt of the request for further processing (see point 6.1(c) AAD), as the only date which can be reliably established. Another point to remember is that automatic debiting only covers the fee for further processing itself - not the other fees whose non-payment may have been the omitted act. Such fees must therefore be paid separately using some other form of payment.

Point 3(k) AAD: Fee for re-establishment of rights

Here too, for the automatic debit the EPO will take the date of receipt of the application for re-establishment (see point 6.1(c) AAD), as the only date which can be reliably established. And again, automatic debiting only covers the fee for re-establishment itself - not the other fees whose non-payment may have been the omitted act. Such fees must therefore be paid separately using some other form of payment. In addition, automatic debiting of this fee is only possible in cases where a legally binding disposal of the application or patent has not already entered into force.

Regarding later filing of the automatic debit order, see points 11.3 and 11.4 AAD.

Point 3(l) AAD: Fee for appeal

The automatic debiting procedure only covers appeal fees payable by the applicant or patent proprietor, or his representative. Where the requirements for the language rebate are met, only 80% of the appeal fee will be debited. Again, the date for automatic debiting purposes will be that of receipt of the appeal (see point 6.1(c) AAD), as the only one which can be reliably established.

Point 3(m) to (p) AAD: Surcharges

The automatic debiting procedure will ensure that fees are paid on time, provided the deposit account contains sufficient funds. Surcharges under point 3(m) to (p) AAD will therefore be exceptions: ie where the automatic debit order is filed only after a basic period expires (see point 11 AAD) or, in the case of insufficient funds, the applicant is late in replenishing the account and paying the administrative fee, with the result that the automatic debit is not deemed to have occurred on the last day of the basic period (see points 7 and 8 AAD).

Point 3(t) AAD: Extension fee

Under the automatic debiting procedure, extension fees will be debited for the non-contracting states to the EPO indicated in Section 34 of the Request for Grant form (EPO Form 1001) or in Section 11 of the form for entry into the regional phase (EPO Form 1200), unless the applicant informs the EPO to the contrary within the basic period for paying extension fees, which corresponds to the basic period for paying the designation fees (Art. 79(2) EPC). The notes concerning designation fees (see note to point 3(d) AAD) are also applicable as appropriate.

If extension fees are to be paid before expiry of the period for paying them, they must be paid using another form of payment allowed under the Rules relating to Fees (see point 12 AAD).

Re point 4 AAD: Types of fees not covered

Notes on individual fees

Point 4(a) AAD: Opposition fee, and others

Opponents cannot use the automatic debiting procedure either in opposition proceedings or in any subsequent appeal proceedings.

Point 4(f) AAD: Fees, costs and prices laid down by the President of the EPO under Article 3 RFees

Included amongst these are inter alia the administrative fees for the registration of transfers (Rule 20 EPC) and of licences and other rights (Rule 21 EPC).

Re point 5 AAD: Automatic debit order and automatic debiting

The automatic debit order should be issued at the same time as the European patent application is filed, or when the procedural steps are taken for entry into the regional phase before the EPO as designated or elected Office. To facilitate this, the new3 Request for Grant form (EPO Form 1001) and the form for entry into the regional phase (EPO Form 1200) will include a separate box and pre-printed text for issuing an automatic debit order.

An automatic debit order filed with a European patent application using Form 1001 or with a Euro-PCT application using Form 1200 can only be issued for the application in question; for each application, only one deposit account for debiting is to be indicated.

If the automatic debit order is submitted together with a European patent application, under point 6.9 ADA it may also be filed with the competent national authority of a contracting state (Article 75(1) EPC). In contrast, the form for taking the procedural steps for entry into the regional phase (EPO Form 1200) must be filed direct with the EPO.

In the case of European patent applications which initially remain with the central industrial property office of a contracting state pursuant to Article 77(3) EPC, the EPO will ensure in co-operation with the office concerned that any automatic debit order is nonetheless carried out. Where applicable, fees will be refunded pursuant to Article 77(5) EPC.

Divisional applications are not covered by the automatic debit order issued for the parent application; a separate automatic debit order must be issued for each.

An automatic debit order filed with a European patent application by fax is valid even without written confirmation.

For automatic debit orders filed subsequently, see point 11 AAD and the relevant notes.

Re point 6 AAD: Decisive payment date

Extensions of time limits under Rule 85(1) EPC will be taken into account when calculating the due date or date of payment.

Regarding the automatic debiting of fees for re-establishment and further processing, see notes to points 3(j) and (k), 11 and 14 AAD.

Regarding the special provisions for the decisive payment date where the automatic debit order is not filed together with the application, see point 11 AAD.

Re point 7 AAD: Insufficient funds

Deposit accounts containing insufficient funds will involve applicants in unnecessary work and necessitate payment of an administrative fee; to avoid this, account holders should make sure that their accounts always contain sufficient funds to cover the debits to be made under the automatic debiting procedure. The EPO may issue the communication pursuant to point 7 AAD by telex or fax.

Re point 8 AAD: Replenishing the deposit account following the communication regarding insufficient funds

The account holder must replenish his deposit account himself using another form of payment. He will be informed accordingly in the communication pursuant to point 8 AAD.

If the administrative fee is paid separately using another form of payment before the deposit account is replenished, in accordance with point 12 AAD the administrative fee under point 8 AAD will not be automatically debited.

Re point 10 AAD: Amendment and correction of debit

See also point 15 AAD for cases where the account holder notes errors.

Re point 11 AAD: Subsequent filing of the automatic debit order

Point 11 AAD allows automatic debit orders to be issued for proceedings that are already pending, and thus supplements point 6 AAD as regards the decisive payment date.

Subsequent filing of the automatic debit order is envisaged primarily for the transitional period following introduction of the automatic debiting procedure.

No special form is needed; the order should be sent to the EPO Treasury, and Accounts Directorate in Munich, indicating the number and holder of the deposit account, and the number of the application in question. If automatic debit orders are filed subsequently for more than one application, the EPO also accepts lists containing the necessary information. If confirmation of receipt is required, EPO Forms 1037 or 1038 (last published in OJ EPO 1991, 64) should be used.

Automatic debit orders can also be filed subsequently by telex or fax; no confirmation is necessary.

With subsequent filing, particular attention must be paid to the fee situation at the time the order is issued, to avoid incorrect or double debits or having to pay surcharges (see notes to point 3(m) to (p) AAD). This applies particularly during the phase just after filing the European patent application. Surcharges can only arise in exceptional cases where the automatic debit order is not issued until after expiry of a basic period (point 11 AAD) or, in the case of insufficient funds, the applicant is late in replenishing the account and paying the administrative fee, with the result that the automatic debit is not deemed to have occurred on the last day of the basic period (see points 7 and 8 AAD).

Regarding the automatic debiting of fees for re-establishment and further processing, see notes to points 3(j) and (k), 6 and 14 AAD.

Re point 12 AAD: Use of other forms of payment

This provision enables account holders wishing to make a faster payment in a particular case, eg in connection with the programme for accelerated prosecution of European patent applications ("PACE"), as last published in OJ EPO 1997, 340, or in the final phase of the European grant procedure when making a request under Article 97(6) EPC (OJ EPO 1995, 841, and OJ EPO 1997, 340, point 7 and footnote 5), to pay fees at the time they want using another form of payment allowed under the Rules relating to Fees. Such requests are valid only if the fee for grant and the fee for printing as well as any other claims fees to be paid are paid at the latest when the request is made. Furthermore, they may only be processed if payment of the designation fees, the renewal fees already due and any surcharge fees has been made. If the request is made less than three months before the due date of the next renewal fee, the applicant is advised to pay this fee at the same time as filing the request.

If a fee is paid early it will no longer be covered by the automatic debiting procedure and so will not be debited automatically.

Regarding the special situations which can arise in the event of early payment of designation fees, see the notes to point 3(d) AAD above.

If a payment made early in another form is insufficient to cover the fee concerned, this will not be rectified under the automatic debiting procedure. Instead, the EPO will react as appropriate in the procedural situation in question.

Re point 13 AAD: Revocation of an automatic debit order

It is particularly important to note that in the automatic debiting procedure the party to the proceedings/account holder must take action if he wishes to prevent a fee being paid.

Notice of revocation of an automatic debit order should be sent to the EPO Treasury and Accounts Directorate in Munich, indicating the number and holder of the deposit account, and the number of the application in question.

Once such a notice is received, no more fees will be debited automatically if their decisive payment date falls on or after the date of receipt of the revocation notice, and any such debits already made will be corrected by the EPO.

The EPO will issue the account holder with confirmation of the date of receipt of the revocation notice.

An automatic debit order cannot be revoked in part for individual fees or types of fees. It is however possible whilst a time limit is running to prevent the automatic debiting of certain fees by notifying the EPO accordingly (see General remarks, penultimate paragraph, and notes to point 3(c), (d), (e) and (g) AAD). See also point 12 AAD.

As explained in the notes to point 1 AAD above, an automatic debit order lapses once the proceedings are concluded. It may however be in an applicant's interests to revoke the order before then, for example to prevent payment of an impending renewal fee where he has already decided not to pursue the application.

Re point 14 AAD: Termination of the automatic debiting procedure

An automatic debit order ceases to be effective when the proceedings in question are concluded (see point 14(a) and (b) AAD). This means that subsequent applications for re-establishment are no longer covered by the order, and all the fees arising have to be paid by the applicant himself using another form of payment. See also the notes to points 3(k) and 11 AAD.

There are a number of different sets of circumstances in which an applicant or patent proprietor, or his representative, can withdraw from the proceedings. It is therefore necessary to establish whether or not he wishes to continue with the automatic debit procedure. Hence the requirement under point 14(c) and (d) AAD that he himself revoke the automatic debit order. If he does not, the automatic debiting procedure continues with that party or representative.

Changes of name of the applicant or patent proprietor, or his representative, or their respective firms, not involving a transfer of rights within the meaning of Rule 20 EPC, do not cause the automatic debit order to lapse. Nor does a change in the identity of the person handling the application within a patent attorney's practice.

Automatic debit orders do however cease to be effective if the proceedings are suspended under Rule 13 EPC (as a result of national entitlement proceedings) or interrupted under Rule 90 EPC (in the event of death or legal incapacity, or of action being taken against the issuer's property): see point 14(e) and (f) AAD. If, when such proceedings are resumed, the automatic debiting procedure is to be used again, a new automatic debit order has to be issued.

Re point 15 AAD: Statements of account

See also point 10 AAD for cases where the EPO notes errors.