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Overview

Pages 130-136

Citation: OJ EPO 2008, 130
Online publication date: 31.3.2008
INFORMATION FROM THE EPO

Notice from the European Patent Office dated 11 February 2008 concerning search and examination fees

On 1 April 2008 two Administrative Council decisions of 14 December 2007 enter into force:

The present Notice updates the amounts of search and examination fees to reflect RFees 2008 and replaces the corresponding Notice of 1 March 2006 (OJ EPO 2006, 192)

The new amounts of the fees will be binding on payments made on or after 1 April 2008.

If within six months of 1 April 2008 a fee is paid in due time but only in the amount due before 1 April 2008, 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

In accordance with Article 3(2) of the Administrative Council's decision of 9 December 2004 (OJ EPO 2005, 5), Rule 62 EPC (= Rule 44a EPC 1973) 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.2

The procedure established by Rule 62 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:3

  • The search fee for the European or supplementary European search under RFees 2008 is EUR 1 050 (but pursuant to Council decisions taken under Article 153(7) 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 2008 is EUR 1 405, or EUR 1 565 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 search4 under RFees 2008 is EUR 760 (but pursuant to Council decisions taken under Article 153(7) 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 2008 is EUR 1 565.

3. Supplementary European search report dispensed with or fee reduced

Under Article 153(7) 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. 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 153(7) 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.5

The examination fee under RFees 2008 is EUR 1 565.6

(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 153(7) EPC is payable.7.

The examination fee under RFees 2008 is EUR 1 565.8

(c) A supplementary European search report including an opinion pursuant to Rule 62 EPC is drawn up in respect of an international application

  • which is filed from 1 July 2005 up to and including 30 June 2013
  • and for which

the Austrian Patent Office,

the National Board of Patents and Registration of Finland,

the Spanish Patent and Trademark Office

the Swedish Patent and Registration Office or

the Nordic Patent Institute

was the International Searching Authority.

The fee for the supplementary search is reduced by EUR 8909 and thus amounts to EUR 160.

The examination fee under RFees 2008 is EUR 1 405.

(d) A supplementary European search report without an opinion pursuant to Rule 62 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.10

The examination fee under RFees 2008 is EUR 1 565.11

(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%12 and thus amounts to 80% of EUR 760, i.e. EUR 608.

The examination fee is EUR 1 565.

  • If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is reduced by EUR 19013 and thus amounts to EUR 1 050 minus EUR 190, i.e. EUR 860.

The examination fee under RFees 2008 is EUR 1 405.

(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 2008 is EUR 760.

The examination fee is EUR 1 565.

  • If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is EUR 1 050.

The examination fee is EUR 1 405.

4. Reduction of the examination fee under Article 14(2) RFees

Under Article 14(2) 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. 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 Article 14(2) RFees is as follows:

  • for international applications filed before 1 July 2005, 50% of EUR 1 565, i.e. EUR 782.50
  • for international applications filed on or after 1 July 2005, 50% of EUR 1 405, i.e. EUR 702.50 (see point 3(c) above), or 50% of EUR 1 565, i.e. EUR 782.50 (see point 3(a) above).

5. Lack of unity

In cases of lack of unity (Rule 64(1) EPC), the amount of the search fee for each further invention is

  • EUR 760 if the application was filed before 1 July 2005
  • EUR 1 050 if the application was filed on or after 1 July 2005.
 

1 Decision of the Administrative Council of 25 October 2007 dispensing with the supplementary European search where the international search report was drawn up by the European Patent Office and reducing the fee for the supplementary European search where the international search report was drawn up by the Austrian Patent Office, by the National Board of Patents and Registration of Finland, by the Spanish Patent and Trademark Office, by the Swedish Patent and Registration Office or the Nordic Patent Institute. Please note that the decisions of 10 June 2005 and 27 October 2005 referred to in Article 4 of this decision were published in OJ EPO 2005, 422 (not 415) and OJ EPO 2005, 546 (not 454), respectively.

2 Please note that an applicant who pays the examination fee before receiving the European search report and waives the communication under Rule 70(2) EPC is sent a communication under Rule 71(1) or (3) EPC rather than an opinion under Rule 62 EPC, since a valid request for examination has already been made and the examining division becomes responsible under Rule 10(4) EPC; the explanations relating to the EPC 1973 in section II of the Notice from the EPO dated 1 July 2005 (OJ EPO 2005, 435, 437) still apply mutatis mutandis.

3 In the special cases mentioned in footnote 2, under RFees 2008 the search fee amounts to EUR 1 050 and the examination fee to EUR 1 405.

4 In the case of European applications filed before 1 July 2005 the time limit for the payment of the fee for the European search (Article 78(2) EPC) will already have expired at 1 April 2008.

5 Decision of the Administrative Council of 25 October 2007 dispensing with the supplementary European search where the international search report was drawn up by the European Patent Office and reducing the fee for the supplementary European search where the international search report was drawn up by the Austrian Patent Office, the National Board of Patents and Registration of Finland, the Spanish Patent and Trademark Office, the Swedish Patent and Registration Office or the Nordic Patent Institute (CA/D 41/07, OJ EPO 2007, 642)

6 For international applications filed before 1 July 2005 point 2 above applies. For international applications filed on or after 1 July 2005 in respect of which the EPO acted as ISA, the higher examination fee is payable because no supplementary European search report is drawn up.

7 Council decisions of 21 December 1978 (OJ EPO 1979, 4, Corr. 50), 17 May 1979 (OJ EPO 1979, 248) and 9 June 1995 (OJ EPO 1995, 511).

8 Point 2 above applies.

9 Council decision of 14 December 2007 (CA/D 46/07, OJ EPO 2008, 12).

10 There is no Council decision dispensing with a supplementary European search report in cases where the National Board of Patents and Registration of Finland was the International Searching Authority. However, the reduction in the fee for the supplementary European search under the Council decision of 10 June 2005 (OJ EPO 2005, 422), which was adapted to RFees 2006 by the Council decision of 15 December 2005 (see footnote 1), also applies to the international applications referred to in point 3(d). Reducing the search fee for applications filed before 1 July 2005 by an amount greater than the fee itself means that there is no charge.

11 Point 2 above applies.

12 Council decisions of 14 September 1979 (OJ EPO 1979, 368), 11 December 1980 (OJ EPO 1981, 5), 9 December 1993 (OJ EPO 1994, 6) and 8 June 2000 (OJ EPO 2000, 321).

13 Council decision of 27 October 2005 (OJ EPO 2005, 548).