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
Some 80% of all fee payments are now made by debiting deposit accounts held with the EPO, which has thus proved to be the simplest and cheapest method of payment for both the Office and regular fee-payers.
Account holders may use the conventional debiting procedure, as governed by the Arrangements for deposit accounts (ADA)2 for fees and other payments by means of individual debit orders which must give the necessary information about the purpose of the payment and reach the EPO before the relevant period for payment expires. In these cases, responsibility for ensuring that payment is made correctly, in full and on time lies with the payer.
The automatic debiting procedure provides an additional means of payment for the benefit of applicants, patent proprietors and their representatives. Under this procedure, as laid down in the Arrangements for the automatic debiting procedure (AAD), 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, on the basis of its electronically stored procedural data for the application in question, the appropriate amounts of all fees for the application 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 patent proprietor, 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 also means certain adjustments for users. Once they have issued the automatic debit order, in most cases they need take no further action to make payments. However, whereas with other means of payment, including the conventional debiting procedure, applicants can 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. Applicants' attention is drawn to such situations in the relevant EPO forms. For automatic debiting to function smoothly, it is also essential that users 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 Arrangements for deposit accounts (ADA), which thus also apply to the procedure as appropriate. Attention is drawn in particular to point 2 ADA (opening the account), point 3 (accounts kept in euro only), point 4 (inpayments), point 5 (conditions of operation), point 6.2 (ways of filing a debit order), point 6.8 (10-day safeguard), point 6.9 to 6.11 (filing with competent national authorities) and point 11 (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 patent proprietor or his representative, not for example to opponents (whether in first instance proceedings or as a party to subsequent appeal or review proceedings), third parties or persons other than the applicant or patent proprietor 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.
A new automatic debit order is required for limitation or revocation proceedings (see EPO Form 2380).
Re point 2 AAD: Types of proceedings covered
The automatic debiting procedure covers not only appeal proceedings but also review proceedings under Article 112a EPC to which the applicant or patent proprietor is a party.
The automatic debiting procedure is currently not available to make fee payments 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 14(1) RFees).
Point 3(b) AAD: Search fee for a European or supplementary European search
If, for a European patent application, the search division informs the applicant under Rule 64(1) EPC that a further search fee is payable for each additional invention involved, the relevant number of further search fees is debited automatically on the last day of the period set. The applicant is informed accordingly in the communication under Rule 64(1) EPC (EPO Form series 1507). He can prevent automatic debiting, or limit it to specific inventions, by notifying the EPO to this effect before the period for payment expires.
For the supplementary European search fee, the procedure takes account of circumstances in which the fee is reduced or not payable, debiting accordingly only the reduced amount or no fee at all.
Point 3(c) AAD: Designation fee(s)
For European patent applications and international applications entering the European phase, payment of seven times the designation fee is deemed to cover all the contracting states (Article 2, item 3 RFees). If the applicant wishes to pay designation fees for all contracting states no further action need be taken since according to Article 79(1) EPC all contracting states party to the EPC at the time of filing the European patent application are deemed designated, while for Euro-PCT applications the automatic designation of all EPC contracting states under Rule 4.9(a) PCT applies. Accordingly, where no specific contracting states are indicated in the relevant section of the Request for Grant form (EPO Form 1001 or 1001E) or of the form for entry into the European phase (EPO Form 1200 or 1200E) an amount equal to seven times the designation fee is debited under the automatic debiting procedure, unless the EPO is instructed to do otherwise before expiry of the period for paying these fees (Rules 39(1) and 159(1)(d) EPC).
However, applicants wishing to pay designation fees for fewer than seven contracting states should expressly indicate those states by completing the individual boxes in the relevant section of EPO Form 1001 (1001E) or of EPO Form 1200 (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 deemed designation of all states under Article 79(1) EPC 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 which he indicated in the above-mentioned section of EPO Form 1001 (1001E) or EPO Form 1200 (1200E) , and informs the EPO accordingly within the period for paying them, then these designation fees are debited automatically, with effect from the date of expiry of that period. Furthermore, provided that the applicant has not waived his right to receive a loss of rights communication under Rule 112 EPC (see waiver box in designations section of EPO Form 1001 (1001E) or 1200 (1200E), versions from 12.07), he may still inform the EPO before expiry of the period for requesting further processing (Article 121, Rule 135(1) EPC) that he wishes to designate states additional to those already paid for, together with an indication of the states concerned. In this case the relevant designation fees, plus the corresponding fees for further processing, are debited with effect from the date of expiry of the period for requesting further processing.
If an applicant wishes to pay designation fees before expiry of the period for doing so, they must be paid separately by another means of payment allowed under the RFees (see point 12 AAD). This applies, for example, at the end of the European grant procedure if, exceptionally, these fees become due only after the communication under Rule 71(3) EPC (Rule 71(8) EPC). They should be paid early by another means to prevent delay in the publication of the mention of grant. The applicant is informed of this situation in the communication under Rule 71(3) EPC (EPO Form 2004).
For the automatic debiting of designation fees where the automatic debit order is not filed until after expiry of the period for paying the fees, see point 11.3 AAD.
For the automatic debiting of extension fees, see note to point 3(t) AAD.
Point 3(d) AAD: Claims fees (Rules 45, 162 and 71(6) EPC)
Claims fees under Rule 45 EPC:
The EPO takes as the basis for the automatic debiting procedure the claims incurring fees under Rule 45 EPC contained in the first set of claims 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 these claims incurring fees, he must inform the EPO accordingly before the period under Rule 45(2), first sentence, EPC expires.
Regarding the decisive payment date for claims fees under Rule 45 EPC where the automatic debit order is not received until after filing of the claims but before expiry of the period under Rule 45(2), second sentence, EPC, see point 11.2 AAD.
Claims fees under Rule 162 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 162 EPC). If these documents comprise more than ten claims, a claims fee is payable for the eleventh and each subsequent claim within the period under Rule 159 EPC. Without prejudice to Rule 137(2) to (4) EPC, the application may be amended once, within one month of notification of a communication informing the applicant accordingly (Rule 161 EPC). If within this period amended claims are filed, the claims fees due are computed on the basis of such amended claims (Rule 162(2) EPC). The claims fees are debited automatically on the last day of the period under Rule 162(2) EPC.
See also note to point 11 AAD for cases in which the automatic debit order is filed subsequently during the period for requesting further processing following the non-payment of claims fees under Rule 45 or 162 EPC.
Claims fees under Rule 71(6) EPC:
If the European patent application in the text intended for grant comprises more than ten claims, the examining division invites the applicant to pay claims fees in respect of each additional claim within the period under Rule 71(3) EPC, unless the said fees have already been paid in accordance with Rule 45 or 162 EPC (Rule 71(6) EPC). The relevant number of claims fees is debited automatically on the date of filing of the translation of the relevant claims, or on the last day of the period set. The applicant is informed of this beforehand in the communication under Rule 71(3) EPC (EPO Form 2004). The same applies where the applicant files amended claims and the corresponding translation of these under Rule 71(5) EPC.
Point 3(e) AAD: "European" renewal fees
In the automatic debiting procedure, apart from the particular cases listed under point 6.1(f) AAD, renewal fees are debited on the date on which they become due under Rule 51(1) EPC or Rule 159(1)(g) EPC.
However, if an applicant wishes to pay a "European" renewal fee before the due date, it must be paid separately by another means of payment allowed under the RFees (see point 12 AAD). This applies, for example, if in the final phase of the European grant procedure a renewal fee becomes due after the communication under Rule 71(3) EPC (Rule 71(9) EPC). The fee should be paid early by another means to prevent delay in the publication of the mention of grant. The applicant is informed of this situation in the communication under Rule 71(3) EPC (EPO Form 2004).
For the decisive payment date of a renewal fee in cases in which the fee becomes due following a decision to grant re-establishment or a decision of the Enlarged Board of Appeal to reopen proceedings before the Board of Appeal under Article 112a EPC, see point 6.1(f) AAD.
Point 3(f) AAD: Examination fee
The examination fee is automatically debited on the last day of the period specified in Rule 70(1) EPC, making due allowance for any reduction under Article 14(4) and Rule 6(3) EPC in conjunction with Article 14(1) RFees (language rebate) and/or because an international preliminary examination report has previously been drawn up by the EPO (Article 14(2) RFees). The applicant is informed in the communication under Rule 69 EPC (EPO Form 1081) that the automatic debit is about to be made. Since examination was already requested in the Request for Grant (EPO Form 1001 or 1001E), the applicant can prevent a debit of this fee only by revoking the automatic debit order or withdrawing the application in time. The possibility of paying the examination fee after expiry of the period under Rule 70(1) EPC by way of a request for further processing under Article 121 and Rule 135 EPC is not affected, provided the application has not been withdrawn or finally settled.
For cases in which the examination fee is automatically debited before expiry of the period for payment, see point 6.1(b) AAD.
Point 3(g) AAD: Fees for grant and printing the European patent specification
These fees are debited automatically on the date on which the applicant files the translation of the claims, or on the last day of the period set. The applicant is informed accordingly in the communication under Rule 71(3) EPC (EPO Form 2004).
The automatic debiting procedure also covers any additional fees for printing application documents comprising more than 35 pages (Article 2, item 7.2 RFees).
Note should also be taken of the relevant information on claims fees due under Rule 71(6) EPC (see note to point 3(d) AAD above), and on designation fees (see note to point 3(c) AAD above) and "European" renewal fees (see note to point 3(e) AAD above), when these become due in the final phase of the grant procedure.
Point 3(h) AAD: Limitation or revocation fee
Where the requirements for the language rebate are met (Article 14(4), Rule 6(3) EPC), only 80% of the revocation or limitation fee is debited. The date for automatic debiting purposes is that of receipt of the request for limitation or revocation.
Point 3(j) AAD: Fee for further processing
Here, the decisive payment date is defined according to the nature of the omitted act or acts. In the case of non-performance of a procedural act other than the payment of a fee, the EPO takes as the decisive payment date the date of completion of the omitted act (filing of document) (see also points 6.1(g) and 11.3 AAD). For cases in which the omitted act was the non-payment of a procedural fee, see also point 11.3 AAD.
Point 3(k) AAD: Fee for re-establishment
References in the Arrangements for the automatic debiting procedure (Annex A.1) and in the notes of the present Information to "re-establishment" are to be understood as applying not just to re-establishment of rights under Article 122 EPC, but also, as appropriate, to reinstatement of rights under Rule 49.6(d)(i) PCT and restoration of the priority right under Rule 49ter.2(d) PCT.
For these, the EPO takes the date of receipt of the application for re-establishment (see point 6.1(h) AAD). It must be noted that in this case automatic debiting only covers the fee for re-establishment itself - not other fees (eg renewal fee and additional fee) the non-payment of which constituted the omitted act. Such fees must therefore be paid separately using some other means 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 11.4 and 11.5 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 patent proprietor. Where the requirements for the language rebate are met (Article 14(4), Rule 6(3) EPC), only 80% of the appeal fee is debited. The date for automatic debiting purposes is that of receipt of the appeal (see point 6.1(h) AAD).
Point 3(m) AAD: Fee for petition for review
Again, the automatic debiting procedure only covers this fee if the petition for review is filed by the applicant or patent proprietor. Where the requirements for the language rebate are met (Article 14(4), Rule 6(3) EPC), only 80% of the fee is debited. The date for automatic debiting purposes is that of receipt of the petition for review (see point 6.1(h) AAD).
Point 3(n) AAD: Late furnishing fee
The fee for the late furnishing of a sequence listing is debited automatically on the last day of the period under Rule 30(3) EPC, provided that the sequence listing is filed within the same period.
Points 3(o) and (p) AAD: Additional fee and surcharges
The automatic debiting procedure ensures that fees are paid on time, provided the deposit account contains sufficient funds. The additional fee under point 3(o) and the surcharges under point 3(p) AAD are therefore exceptions: ie where the automatic debit order is filed only after the due date for a renewal fee or after expiry of the relevant period for payment (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 considered to have occurred on the due date or the last day of the period for payment (see points 7 and 8 AAD).
Point 3(t) AAD: Extension fee
Under the automatic debiting procedure, extension fees are debited for the extension states which the applicant has specifically indicated in the relevant section of the Request for Grant form (EPO Form 1001 or 1001E) or of the form for entry into the European phase (EPO Form 1200 or 1200E), unless the applicant instructs the EPO otherwise within the period for paying these fees – which is the same as for paying the designation fees (Rules 39(1) and 159(1)(d) EPC). However, whereas the designation fees for all contracting states are debited automatically unless the applicant indicates six or fewer specific states, extension fees are only debited automatically for those extension states specifically indicated on EPO Form 1001 (1001E) or 1200 (1200E) or subsequently within the period for payment. Where an extension state is not thus indicated and the request for extension in respect of it is deemed to be withdrawn as a result, further processing is only available if a communication is issued under Rule 112(1) EPC in respect of designations deemed to be withdrawn due to non-payment of the designation fees. Such communication will mention any extension state for which the extension fee was not paid in due time. Attention is also drawn to the notes concerning designation fees (note to point 3(c) AAD).
To pay extension fees before expiry of the period for doing so, another means of payment allowed under the RFees must be used (see point 12 AAD and note to point 3(c) AAD, third paragraph).
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 or review proceedings.
Point 4(f) AAD: Fees, expenses and prices laid down by the EPO President under Article 3 RFees
These include the administrative fees for registration of transfers (Rule 22 EPC), licences and other rights (Rule 23 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 section which can be completed in order to select this means 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.
An automatic debit order may be submitted together with a European patent application filed with the competent national authority of a contracting state under Article 75(1)(b) EPC (point 6.9 ADA). 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 Rule 37(1)(b) 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 Rule 37(2) 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.
A new automatic debit order is required for limitation or revocation proceedings (see EPO Form 2380).
An automatic debit order filed by means of Online Filing or by fax together with a European patent application requires no confirmation copy.
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 134(1) EPC are taken into account when calculating the due date or date of payment.
Regarding the automatic debiting of fees for further processing and re-establishment, 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 in accordance with point 4.2 ADA. 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.
No special form is needed; the order should be addressed 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. 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 Form 1037 or 1038 should be used. Automatic debit orders can also be filed subsequently online by means of Online Fee Payment via My.epoline® or using EPO Form 1038E (one form for each application concerned). Automatic debit orders can also be filed subsequently by fax. These should be sent to the EPO's central fax number in Munich (+49 (0)89 2399-4465). No confirmation copy is necessary.
With subsequent filing, special attention must be paid to the fee situation at that time (particularly during the phase just after filing the European patent application), in order to avoid incorrect or double debits or having to pay further processing fees (see notes to point 3(j) AAD) or surcharges or additional fees (see notes to point 3(o) and (p) AAD). Such further fees can only arise in exceptional cases, namely where the automatic debit order is not received until after expiry of a period for payment within which the fee was not paid (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 been made on the original decisive payment date (see points 7 and 8 AAD).
If the automatic debit order is not filed until after expiry of the period under Rule 45 or 162 EPC but before expiry of the period for requesting further processing in respect of claims deemed withdrawn as a result of non-payment of the claims fees, and the applicant now wishes to pay for fewer claims than those for which fees have become due, he should indicate these before expiry of the period for requesting further processing. Otherwise all claims fees which have become due and the corresponding further processing fees are debited automatically on the last day of this period.
Regarding the automatic debiting of fees for further processing and re-establishment, see notes to points 3(j) and (k), 6 and 14 AAD.
Re point 12 AAD: Use of other means of payment
This provision enables account holders wishing to make faster payments in individual cases to pay fees at the time they want using another means of payment allowed under the RFees.
Regarding situations necessitating earlier payment of designation fees and renewal fees by another means, see the respective notes to points 3(c) and (e) AAD above.
Where, in the event of a fee increase, the decisive payment date of a fee under the automatic debiting procedure falls on or after the date on which the fee increase takes effect, then, provided that the fee may be paid before that date (eg a renewal fee), it may be so paid in the old amount using another means of payment. The same applies to fees subject to an automatic debit order which is included with a European patent application filed under Article 75(1)(b) EPC with a competent national authority.
Fees paid early are no longer covered by the automatic debiting procedure and so are not debited automatically.
If a payment made early by another means 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 addressed 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 while a payment period 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(b), (c), (d), (f) and (t) 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 by another means of payment. See also the notes to points 3(k) and 11 AAD.
There are various different sets of circumstances in which an applicant, patent proprietor 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 debiting procedure. Hence the requirement under point 14(c) and (d) AAD that he himself also revokes the automatic debit order. If he does not, the automatic debiting procedure continues with the party or representative as hitherto.
Changes of name of the applicant, patent proprietor or representative (or their respective firms) not involving a transfer within the meaning of Rule 22 EPC do not cause the automatic debit order to lapse. Nor does a change of person handling the application in a representative's office.
Automatic debit orders do however cease to be effective if the grant proceedings are stayed under Rule 14 EPC (as a result of national entitlement proceedings) or interrupted under Rule 142 EPC (in the event of death or legal incapacity, or an action against property): see point 14(e) and (f) AAD. If, when the proceedings are resumed, the automatic debiting procedure is to be used again, a new automatic debit order must be issued.
Likewise, a new automatic debit order is required for limitation or revocation proceedings (see EPO Form 2380).
Re point 15 AAD: Statements of account
See also point 10 AAD for cases where the EPO notes errors.