Pages 212-218

INFORMATION FROM THE EPO

Notice from the European Patent Office dated 6 February 2012 concerning search and examination fees

On 1 April 2012 an Administrative Council decision enters into force:

• CA/D 06/11 of 27 October 2011 (OJ EPO 2011, 616), introducing the fee adjustment, hereinafter referred to as "RFees 2012", and adjusting the amount of the reduction in the fee for the supplementary European search where the international search report (ISR) or supplementary international search report (SISR) was drawn up by one of the European International Searching Authorities

The present notice updates the amounts of search and examination fees to reflect RFees 2012. It replaces the corresponding notice of 8 February 2010 (OJ EPO 2010, 133)

The new amounts of the search and examination fees will be binding on payments made on or after 1 April 2012.

Transitional arrangement: If within six months of 1 April 2012 a fee is paid in due time but only in the amount due before 1 April 2012, 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 applies to European patent 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.1

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:2

• The search fee for the European or supplementary European search under RFees 2012 is EUR 1 165 (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 2012 is EUR 1 555, or EUR 1 730 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 search3 under RFees 2012 is EUR 840 (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 2012 is EUR 1 730.

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 or a Supplementary International Searching Authority.4

The examination fee under RFees 2012 is EUR 1 730.5

(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.

The examination fee under RFees 2012 is EUR 1 7306.

(c) A supplementary European search report including an opinion7 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 or a Supplementary International Searching Authority

The fee for the supplementary search is reduced by EUR 9908 and thus amounts to EUR 175.

The examination fee under RFees 2012 is EUR 1 555.

(d) 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%9 and thus amounts to 80% of EUR 840, i.e. EUR 672.

The examination fee is EUR 1 730.

• If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is reduced by EUR 19010 and thus amounts to EUR 1 165 minus EUR 190, i.e. EUR 975.

The examination fee under RFees 2012 is EUR 1 555.

(e) At present there is no Council decision reducing the fee for the supplementary European search if the Canadian Intellectual Property Office or the Brazilian National Institute of Industrial Property was the International Searching Authority.

• If the international application was filed before 1 July 2005, the fee for the supplementary European search under RFees 2012 is EUR 840.

The examination fee is EUR 1 730.

• If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is EUR 1 165.

The examination fee is EUR 1 555.

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 1 730, i.e. EUR 865
• for international applications filed on or after 1 July 2005, 50% of EUR 1 555, i.e. EUR 777.50 (see point 3(c) above), or 50% of EUR 1 730, i.e. EUR 865 (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 840 if the application was filed before 1 July 2005
• EUR 1 165 if the application was filed on or after 1 July 2005.