Pages 192-198

INFORMATION FROM THE EPO

Notice from the European Patent Office dated 1 March 2006 concerning search and examination fees

On 1 April 2006 two Administrative Council decisions of 15 December 2005 enter into force:

• the fee adjustment (CA/D 4/05, OJ EPO 2006, 8), hereinafter referred to as "RFees 2006", and
• CA/D 15/05 (OJ EPO 2006, 13), adapting CA/D 3/05 of 10 June 2005 (OJ EPO 2005, 422) as formulated in CA/D 6/05 of 27 October 2005 (OJ EPO 2005, 546) to RFees 2006.1 The Notice dated 28 October 2005 concerning search and examination fees (OJ EPO 2005, 577) is therefore republished here with the amounts of the fees updated to reflect RFees 2006.

The new amounts of the fees will be binding on payments made on or after 1 April 2006. If within six months of 1 April 2006 a fee is paid in due time but only in the amount due before 1 April 2006, it will be deemed to have been validly paid if the deficit is made good within two months of an invitation to that effect from the European Patent Office.

The diagrams annexed to this Notice give an overview of standard cases.

1. Extended European search report for applications filed on or after 1 July 2005

Under Article 3(2) of the Administrative Council's decision of 9 December 2004 (OJ EPO 2005, 5), new Rule 44a EPC2 applies to European applications and international applications entering the European phase that are filed on or after 1 July 2005. For such applications, the European or supplementary European search report is accompanied by an opinion on whether the application and the invention to which it relates seem to meet the requirements of the EPC.3

The procedure established by Rule 44a EPC specifically applies to:

• European patent applications filed on or after 1 July 2005, including
• divisional applications under Article 76 EPC filed on or after 1 July 2005 (even if the earlier application has a filing date prior to 1 July 2005), and
• international applications filed on or after 1 July 2005 and subsequently entering the European phase.

Such applications are subject to the following fees:4

• The search fee for the European or supplementary European search under RFees 2006 is EUR 1 000 (but pursuant to Council decisions taken under Article 157(3) EPC the fee for the supplementary European search is in certain cases not payable or is reduced, see point 3 below).
• The examination fee under RFees 2006 is EUR 1 335, or EUR 1 490 in the cases referred to in point 3(a) below.

2. Applications filed before 1 July 2005

Extended European search reports are not drawn up for European patent applications filed before 1 July 2005. The same applies to international applications filed before 1 July 2005, even if they enter the European phase on or after 1 July 2005.

The search fee for the supplementary European search5 under RFees 2006 is EUR 720 (but pursuant to Council decisions taken under Article 157(3) EPC the fee for the supplementary European search is in certain cases not payable or is reduced, see point 3 below).

The examination fee under RFees 2006 is EUR 1 490.

3. Supplementary European search report dispensed with or fee reduced

Under Article 157(2) EPC, a supplementary European search report is drawn up in respect of international applications entering the European phase, and the search fee must be paid in respect of that report at the time of European phase entry. Under Article 157(3) EPC, however, the Council may decide that the supplementary European search report is to be dispensed with or that the fee is to be reduced. The situation under the Council decisions now in force pursuant to Article 157(3) EPC is as follows:

(a) No supplementary European search report is drawn up in respect of an international application for which the EPO was the International Searching Authority.6

Hence no search fee pursuant to Article 157(2)(b) EPC is payable.

The examination fee under RFees 2006 is EUR 1 490.7

(b) No supplementary European search report is drawn up in respect of an international application

• which was filed before 1 July 2005
• and for which

the Austrian Patent Office,

the Spanish Patent and Trademark Office or

the Swedish Patent and Registration Office

was the International Searching Authority.

Hence no search fee pursuant to Article 157(2)(b) EPC is payable.8

The examination fee under RFees 2006 is EUR 1 490.9

(c) A supplementary European search report including an opinion pursuant to Rule 44a EPC is drawn up in respect of an international application

• which is filed from 1 July 2005 up to and including 30 June 2008
• and for which

the Austrian Patent Office,

the National Board of Patents and Registration of Finland,

the Spanish Patent and Trademark Office or

the Swedish Patent and Registration Office

was the International Searching Authority.

The fee for the supplementary search is reduced by EUR 84510 and thus amounts to EUR 155.

The examination fee under RFees 2006 is EUR 1 335.

(d) A supplementary European search report without an opinion pursuant to Rule 44a EPC is drawn up in respect of an international application which was filed from 1 April 2005 up to and including 30 June 2005 and for which the National Board of Patents and Registration of Finland was the International Searching Authority.

No fee is payable for the supplementary European search.11

The examination fee under RFees 2006 is EUR 1 490.12

(e) The fee for the supplementary European search is reduced if the United States Patent and Trademark Office (USPTO), the Japan Patent Office, the Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation), the Australian Patent Office, the State Intellectual Property Office of the People's Republic of China (SIPO) or the Korean Intellectual Property Office was the International Searching Authority.

• If the international application was filed before 1 July 2005, the fee for the supplementary European search is reduced by 20%13 and thus amounts to 80% of EUR 720, ie EUR 576.
  The examination fee is EUR 1 490.
• If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is reduced by EUR 19014 and thus amounts to EUR 1 000 minus EUR 190, ie EUR 810.
  The examination fee under RFees 2006 is EUR 1 335.

(f) At present there is no Council decision reducing the fee for the supplementary European search if the Canadian Intellectual Property Office was the International Searching Authority.

• If the international application was filed before 1 July 2005, the fee for the supplementary European search under RFees 2006 is EUR 720.
  The examination fee is EUR 1 490.
• If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is EUR 1 000.
  The examination fee is EUR 1 335.

4. Reduction of the examination fee under Rule 107(2) EPC

Under Rule 107(2) EPC and Article 12(2), first sentence, RFees the examination fee is reduced by 50% if the EPO has drawn up an international preliminary examination report (IPER) pursuant to Rule 70 PCT.15 If the IPER was established on certain parts of the international application in accordance with Article 34(3)(c) PCT, the reduction will be allowed only if the examination is to be performed on the subject-matter covered by the IPER.

The examination fee payable under Rule 107(1)(f) EPC is as follows:

• for international applications filed before 1 July 2005, 50% of EUR 1 490, ie EUR 745
• for international applications filed on or after 1 July 2005, 50% of EUR 1 335, ie EUR 667.50 (see point 3(c) above), or 50% of EUR 1 490, ie EUR 745 (see point 3(a) above).

5. Lack of unity

In cases of lack of unity, the amount of the search fee for each further invention is

• EUR 720 if the application was filed before 1 July 2005
• EUR 1 000 if the application was filed on or after 1 July 2005.