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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 offer 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 fee-payers.

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

Conventional procedure is for fees and other payments to be 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 it is seeking to rationalise. Since the EPO 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 was to use this data as the basis for an automatic debiting procedure, and so provide account holders with an additional means of payment.

Nowadays, 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 only has to give the EPO a single debit order – the automatic debit order for a specific application. From the date of its receipt the EPO debits by computer the appropriate amounts of all fees for the application in question which are covered by the automatic debiting procedure, and treats the payment as received in due time.

For those types of proceedings for which automatic debiting is allowed, the procedure covers all fees whose payment is in the interest of the applicant or patentee, 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 EPO.

This procedure means certain adjustments for users as well. Once they have issued the automatic debit order, in most cases they need take no further action to make payments. 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 are debited automatically. The EPO has amended a number of its forms to draw applicants' attention to such situations. For automatic debiting to function smoothly, it is also essential that applicants make sure that their deposit accounts always contain sufficient funds to avoid inconvenience and unnecessary work.

The Arrangements for the automatic debiting procedure (AAD) form part of the existing Arrangements for deposit accounts (ADA), which thus also apply to the procedure. Attention is drawn in particular to point 2 ADA (opening the account), point 3 (accounts kept in euro only), point 4 (inpayments), point 5.1 and 5.2 (conditions of operation), point 6.8 (10-day safeguard), point 6.9 and 6.10 (filing with national authorities) and point 10 (closing the 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 patentee or his representative, not for example to opponents (including appellants or respondents in appeal proceedings), third parties or persons other than the applicant or patentee who inspect the file.

When the procedure is 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 ceases to be 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, or International Preliminary Examining Authority.

Re point 3 AAD: Fee types 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 is 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 takes 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 is debited automatically on the last day of the time limit set. The applicant is 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)

For European and international applications, payment of seven times the designation fee is deemed to cover all the contracting states (Article 2, No. 3 RFees). Section 32.1 of the Request for Grant form (EPO Form 1001, or the corresponding section in EPO

Form 1001E) and Section 10.1 of the form for entry into the European phase (EPO Form 1200, or the corresponding section in EPO Form 1200E) are precrossed to indicate that the applicant wishes to pay this amount. An amount equal to seven times the designation fee is then debited under the automatic debiting procedure, unless the EPO is instructed to do otherwise before expiry of the normal time limit for payment of the designation fees (Article 79(2), Rule 107(1)(d) EPC).

However, if applicants wish to pay designation fees for fewer than seven contracting states when filing the application or on entry into the European phase, they should indicate those states in Section 32.2 of EPO Form 1001 (or the corresponding section of EPO Form 1001E) or Section 10.2 of EPO Form 1200 (or the corresponding section of EPO Form 1200E). Designation fees are then debited under the automatic debiting procedure for those states only. If the applicant wishes to make use of the possibility – created by the designation of all states in Section 32.1 of EPO Form 1001 (or the corresponding section of EPO Form 1001E) or automatic designation of all the EPC contracting states under Rule 4.9(a) PCT) – of paying designation fees for states additional to or different from those indicated in the abovementioned Sections 32.2 or 10.2, and informs the EPO accordingly within the normal time limit for paying them, then these designation fees are debited automatically, with effect from the date of expiry of the normal time limit. If, in the case of a European patent application or an international application entering the European phase, the EPO is not thus informed until during the period of grace under Rule 85a(2) EPC or Rule 108(3) or (4) EPC3 respectively, then the relevant designation fees, plus surcharges, are debited with effect from the date of expiry of the period of grace in question.

If an applicant wishes to pay designation fees before expiry of the normal time limit (eg in connection with the programme for accelerated prosecution of European patent applications ("PACE"), as last published in OJ EPO 2001, 459, or if in the final phase of the European grant procedure he requests immediate grant of the patent under Article 97(6) EPC), these fees must be paid separately using another method of payment allowed under the RFees (see point 12 AAD).

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

Point 3(e) AAD: Claims fees (Rules 31(1), 110 and 51(7) EPC)

Claims fees under Rule 31 EPC:

The EPO takes 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 takes 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.

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

Claims fees under Rule 110 EPC:

In the case of international applications, any claims fees payable on entry into the European phase are computed and, where appropriate, debited under the automatic debiting procedure on the basis of the documents on which the European grant procedure is to be based (Rule 110 EPC). If these documents comprise more than ten claims, a claims fee is payable for the eleventh and each subsequent claim within the period provided for in Rule 107(1) EPC. Without prejudice to Rule 86(2) to (4) EPC, the application may be amended once, within a non-extendable period of one month as from notification of a communication informing the applicant accordingly (Rule 109 EPC). If within this period amended claims are filed, the claims fees due are computed on the basis of such amended claims (Rule 110(2) EPC).

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 is debited automatically. The applicant is 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 results however 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 are 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 under Rule 51(7) EPC before expiry of the period for doing so (eg if in the final phase of the European grant procedure he requests immediate grant of the patent under Article 97(6) EPC (see OJ EPO 2001, 459)), these fees must be paid separately using another method of payment allowed under the RFees (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 does 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 the due date (eg in connection with the programme for accelerated prosecution of European applications ("PACE"), as last published in OJ EPO 2001, 459), or if in the final phase of the European grant procedure he requests immediate grant of the patent under Article 97(6) EPC), these fees must be paid separately using another method of payment allowed under the RFees (see point 12 AAD). If the request under 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 is automatically debited on the last day of the time limit specified in Article 94(2) EPC, making due allowance for any reduction under Article 14(2) and Rule 6 EPC in conjunction with Article 12(1) RFees (language rebate) and/or because an international preliminary examination report has previously been drawn up (Rule 107(2) EPC, Article 12(2) RFees). The applicant is informed in the communication under 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 prevent a debit only 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 finally settled.

If an applicant wishes to pay the examination fee before expiry of the basic period for doing so (eg in connection with the programme for accelerated prosecution of European applications ("PACE"), as last published in OJ EPO 2001, 459), he must pay it separately using another method of payment allowed under the RFees (see point 12 AAD).

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

The automatic debiting procedure also covers any additional fees for printing application documents comprising more than 35 pages (Article 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 doing so (eg if in the final phase of the European grant procedure he requests immediate grant of the patent under Article 97(6) EPC (see OJ EPO 2001, 459)), he must pay it separately using another method of payment allowed under the RFees (see point 12 AAD).

Point 3(j) AAD: Fee for further processing

For this fee, the EPO takes the date of receipt of the request for further processing (see point 6.1(c) AAD), this

being the only date reliably definable for automatic debiting purposes. Another point to note is that automatic debiting only covers the fee for further processing itself – not other fees whose non-payment may have been the omitted act. Such fees must therefore be paid separately using some other method of payment.

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

Here too, the EPO takes the date of receipt of the application for re-establishment (see point 6.1(c) AAD), as the only date reliably definable. And again, automatic debiting only covers the fee for re-establishment itself – not other fees whose non-payment may have been the omitted act. Such fees must therefore be paid separately using some other method 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 automatic debit orders filed subsequently, see point 11.3 and 11.4 AAD.

Point 3(l) AAD: Fee for appeal

The automatic debiting procedure only covers this fee if the appeal is filed by the applicant or patentee. Where the requirements for the language rebate are met, only 80% of the appeal fee is debited. Again, the date for automatic debiting purposes is that of receipt of the appeal (see point 6.1(c) AAD), this being the only one reliably definable.

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

The automatic debiting procedure ensures that fees are paid on time, provided the deposit account contains sufficient funds. Surcharges under point 3(m) to (q) AAD are therefore 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).

There is an exception in the case of the surcharge for late filing of the translation of an international application entering the European phase (under point 3(o) AAD). This surcharge is payable after expiry of a time limit for performing a procedural act, not of a basic period for payment of a fee. In such cases, if the EPO notifies the applicant under Rule 108(3), first sentence, EPC that the translation has not been filed in due time, and if the translation is then filed within the period of grace, the surcharge for its late filing is debited with effect from the date of expiry of the period of grace under Rule 108(3), third sentence, EPC.

Point 3(u) AAD: Extension fee

Under the automatic debiting procedure, extension fees are debited for the non-EPC contracting states indicated in Section 34 of the Request for Grant form (EPO Form 1001 or the corresponding section of EPO Form 1001E) or in Section 11 of the form for entry into the European phase (EPO Form 1200 EPO or the corresponding section of EPO Form 1200E), unless the applicant informs the EPO to the contrary within the normal time limit for paying these fees – which is the same as for paying the designation fees (Article 79(2), Rule 107(1)(d) EPC). The notes concerning designation fees (see note to point 3(d) AAD) thus apply mutatis mutandis.

To pay extension fees before expiry of the period for doing so, another method of payment allowed under the RFees (see point 12 AAD) must be used.

Re point 4 AAD: Fee types not covered

Notes on individual fees:

Point 4(a) AAD: Opposition and other fees

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

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

These include the administrative fees for registration of transfers (Rule 20 EPC), 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 the procedural steps are taken for entry into the European phase (EPO as designated or elected Office). To facilitate this, the Request for Grant form (EPO Form 1001 and 1001E) and the form for entry into the European phase (EPO Form 1200 and 1200E) include a separate box with pre-printed text for issuing an automatic debit order which can be crossed or inserted by selecting that method of payment.

An automatic debit order filed with a European patent application using EPO Form 1001 or 1001E or with a Euro-PCT application using EPO Form 1200 or 1200E may be issued only for the application in question, giving only one deposit account to be debited.

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 European phase (EPO Form 1200 or 1200E) must be filed direct with the EPO.

In the case of European patent applications initially retained by the central industrial property office of a contracting state under Article 77(3) EPC, the EPO ensures in co-operation with that office that any automatic debit order is nonetheless carried out. Where applicable, fees are refunded under Article 77(5) EPC.

Divisional applications are not covered by an automatic debit order issued for the parent application; for them, separate automatic debit orders must be issued.

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

Regarding 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 are 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 (shortfall)

Deposit accounts with insufficient funds involve unnecessary work and payment of an administrative fee; to avoid this, account holders should make sure that their accounts always contain sufficient funds to cover their automatic-debit bookings.

Re point 8 AAD: Replenishing the account in case of insufficient funds

Account holders must replenish their deposit accounts on their own initiative using another method of payment.

They are informed accordingly in the communication under point 7 AAD.

If the administrative fee is paid separately using another method of payment before the deposit account is replenished, in accordance with point 12 AAD the administrative fee under point 9 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's Treasury and Accounts Directorate in Munich, indicating the number and holder of the deposit account, and the number of the application in question. It can also be filed online using EPO Form 1038E. 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, 1038 (last published in OJ EPO 2000, 369) or 1038E should be used.

Automatic debit orders can also be filed subsequently by 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 (q) 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 methods of payment

This provision enables account holders wishing to make faster payments in individual cases, eg in connection with the programme for accelerated prosecution of European patent applications ("PACE"), as last published in OJ EPO 2001, 459, 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 2001, 459, point 7 and footnote 7), to pay fees at the time they want using another method of payment allowed under the RFees. Such requests are valid only if the fees for grant and printing as well as any further claims fees payable are paid at the latest when the request is made, and they can be processed only if the designation fees and any renewal fee plus surcharge due have already been paid. 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.

Fees paid early are no longer covered by the automatic debiting procedure and so are not 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 by another method is insufficient to cover the fee concerned, this deficiency is not rectified under the automatic debiting procedure. Instead, the EPO reacts as appropriate to the given situation.

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's 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 revocation notice is received, no more fees whose decisive payment date would be on or after the date of receipt of the notice are debited automatically, and the EPO corrects any such debits already made.

The EPO issues account holders 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 points 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 a forthcoming renewal fee when he no longer wants 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 closed (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 method of payment. See also the notes to points 3(k) and 11 AAD.

There are various different sets of circumstances in which the applicant, patentee or representative can withdraw from the proceedings. It is therefore necessary to be clear about 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 the party concerned.

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

Automatic debit orders do however cease to be effective if the proceedings are suspended under Rule 13 EPC (national entitlement proceedings) or interrupted under Rule 90 EPC (death, legal incapacity, or action against 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 must be issued.

Re point 15 AAD: Statements of account

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