Pages 13-25

Annex A.1 to the ADA: Arrangements for the automatic debiting procedure (AAD)¹

CONTENTS

1. Automatic debiting procedure

2. Types of proceedings covered

3. Fee types covered

4. Fee types not covered

5. Automatic debit order and automatic debiting

6. Decisive payment date

7. Insufficient funds (shortfall)

8. Replenishing the account after communication of insufficient funds

9. Amendment and correction of debit

10. Subsequent filing of the automatic debit order

11. Use of other means of payment

12. Revocation of an automatic debit order

13. Termination of the automatic debiting procedure

14. Statements of account

1. Automatic debiting procedure

A deposit account may also be debited on the basis of an automatic debit order signed by or on behalf of the account holder (automatic debiting procedure). It may be filed, preferably with the request for grant of a European patent application (EPO Form 1001) or upon entry into the European phase of an international application (EPO Form 1200), on paper, by fax, or by means of EPO Online Filing. It may also be filed by means of Online Fee Payment via Online services. Such an order may be filed on behalf of the applicant or patent proprietor or his representative, and extends to all types of fees covered by the automatic debiting procedure and payable by him in respect of the proceedings specified in the automatic debit order. As the proceedings progress, each such fee is debited automatically and recognised as received in time. The automatic debit order may not be restricted to specific types of fees or to a specific period of time.

2. Types of proceedings covered

Automatic debiting is allowed for:

(a) European patent applications, in grant and any subsequent appeal or review proceedings,

(b) international applications from entry into the European phase,

(c) European patents, for the patent proprietor as party to opposition or subsequent appeal or review proceedings,

(d) European patents, in limitation or revocation proceedings and any subsequent appeal or review proceedings, on the basis of a new automatic debit order which must be filed for this purpose.

3. Fee types covered

Automatic debiting is allowed for all fee types except those expressly excluded under point 4 below, and in particular for the following:

(a) filing fee for European patent applications and international applications entering the European phase (Article 78(2), Rule 38(1) and Rule 159(1)(c) EPC), including any additional fee for a European patent application comprising more than 35 pages (Rule 38(2), (3) EPC, Article 2, item 1a, RFees2) and/or any additional fee in the case of a divisional application filed in respect of any earlier application which is itself a divisional application (Rule 38(4) EPC, Article 2, item 1b, RFees3)

(b) search fee for a European or supplementary European search (Article 78(2), Rule 64(1), Article 153(7) and Rule 164 (2)(a) EPC4)

(c) designation fee(s) for contracting states designated5 (Article 79(2), Rules 39(1) and 159(1)(d) EPC, Article 2, item 3, RFees)

(d) claims fee for the sixteenth6 and each subsequent claim (Rules 45(1), 71(6) and 162 EPC, Article 2, item 15, RFees)

(e) renewal fees for European patent applications (Article 86(1) EPC)

(f) examination fee (Article 94(1) EPC)

(g) fee for grant, including fee for publication of the European patent specification (Rule 71(3) EPC, Article 2, item 7, RFees7)
or
fees for grant and printing the European patent specification8

(h) limitation or revocation fee (Article 105a(1) EPC)

(i) fee for publishing a new specification of the European patent (Rule 82(2) and 95(3) EPC, Article 2, item 8, RFees9)
or
fee for printing a new European patent specification10

(j) fee for further processing (Rule 135(1) EPC), except where a loss of rights does not result directly from the non-observance of the period concerned

(k) fee for re-establishment of rights (Rule 136(1) EPC), for reinstatement of rights (Rule 49.6(d)(i) PCT) and for requesting restoration (Rule 49ter.2(d) PCT) (all hereinafter "re-establishment"), provided the European patent application or European patent has not already been finally disposed of

(l) fee for appeal (Article 108 EPC), if payable by the applicant or patent proprietor

(m) fee for petition for review (Article 112a(4) EPC), if payable by the applicant or patent proprietor

(n) fee for late furnishing of a sequence listing (Rule 30(3) EPC)

(o) additional fee for late payment of a renewal fee for the European patent application (Rule 51(2) EPC)

(p) surcharge for late performance of the acts required under Rule 82(2) or 95(3) EPC (Rules 82(3) and 95(3) EPC)

(q) administrative fee for additional copy (copies) of the documents cited in the European search report

(r) extension fee(s) for the extension of European patent applications and European patents

(s) validation fee(s) for the validation of European patent applications and European patents.

4. Fee types not covered

Automatic debiting is not allowed for the following:

(a) all fees payable by parties other than the applicant or patent proprietor, notably the opposition fee

(b) conversion fee (Articles 135(3), 140 EPC)

(c) fee for the awarding of costs (Rule 88(3) EPC)

(d) fee for the conservation of evidence (Rule 123(3) EPC)

(e) fee for a technical opinion (Article 25 EPC)

(f) all fees, expenses and prices laid down by the EPO President under Article 3 RFees, other than the administrative fee referred to in point 3(q) above.

5. Automatic debit order and automatic debiting

5.1 As from the date of receipt of the automatic debit order at the EPO, and as the proceedings progress, the EPO debits the account holder's deposit account in respect of all fees for which automatic debiting is allowed as they arise in respect of the proceedings specified in the automatic debit order in question, and treats them as paid in time, provided they fall due on or after the date of receipt of the order and the deposit account contains sufficient funds.

5.2 Each debit occurs on the basis of the application documents available when it is effected. The EPO takes into consideration, to the account holder's benefit or detriment, all factors known to it at that time which have a legal bearing on the fees, doing so in such a way as to safeguard all rights arising from the application.

5.3 The debit is effected in euro in the amount applicable for the fee in question on the date to be considered as the date on which payment is made (hereinafter "decisive payment date").

6. Decisive payment date

6.1 Except as otherwise provided under points 8 and 10 below, payments under the automatic debiting procedure are considered to have been received

(a) subject to point 6.1(b) to (e) below, for fees to be paid within a specific period:

on the last day of the period for paying the fee;

(b) for the examination fee

• where the applicant has waived his right to the invitation under Rule 70(2) EPC:

on the date of receipt of the waiver;

• where the applicant has requested accelerated examination under the PACE programme before the date of expiry of the period under Rule 70(1) EPC or Rule 159(1), as appropriate11:

on the date of receipt of the request;

(c) for the fee for grant and publishing12 the European patent specification

• where the translation of the claims is filed before the date of expiry of the period under Rule 71(3) EPC:

on the date of its receipt;

(d) for claims fees

• where these are payable under Rule 162(1) or (2) EPC:

on the last day of the period under Rule 162(2) EPC;

• where these are payable under Rule 71(6) EPC and the translation of the relevant claims is filed before the date of expiry of the period under Rule 71(6) EPC:

on the date of its receipt;

(e) for the fee for publishing13 a new European patent specification

• where the translation of the amended claims is filed before the date of expiry of the period under Rule 82(2) or 95(3) EPC:

on the date of its receipt;

(f) for renewal fees

• for European patent applications:

on the date they fall due (Rule 51(1), first sentence, EPC);

• for international applications entering the European phase:

on the date they fall due (Rule 159(1)(g) in conjunction with Rule 51(1) EPC);

• for newly filed European divisional applications:

on the last day of the period under Rule 51(3), second sentence, EPC;

• for European patent applications in respect of which the applicant's rights are re-established:

on the last day of the period specified under Rule 51(4)(a) or (b) EPC, whichever is applicable;

• for European patent applications in respect of which the Enlarged Board of Appeal re-opens proceedings before the Board of Appeal (Article 112a(5), second sentence, EPC):

on the last day of the period specified under Rule 51(5)(a) or (b) EPC, whichever is applicable;

(g) for the fees for further processing, and subject to point 10.3:

• where the omitted act was the non-payment of a fee:

on the last day of the period for requesting further processing;

• where the omitted act was the non-performance of a procedural act other than payment of a fee:

on the date of completion of the omitted act;

• where by expiry of the relevant period there was more than one omitted act, at least one of which was the non-payment of a fee and one of which was the non-performance of a procedural act, and subject to completion of said procedural act:

on the last day of the period for requesting further processing;

and for a fee the non-payment of which constitutes the omitted act:

on the same date as for the corresponding fee for further processing;

(h) for the fee for re-establishment of rights, limitation or revocation fee, fee for appeal and for petition for review:

on the date of receipt of the request for re-establishment, the request for limitation or revocation, the appeal or the petition for review;

(i) for administrative fees under point 3(q) above:

on their due date (Article 4(1) RFees).

6.2 Provided the conditions under point 5 above are met, the above dates are the decisive payment date for the purposes of Article 7(2) RFees.

7. Insufficient funds (shortfall)

7.1 If on the decisive payment date there are insufficient funds in the deposit account to cover all the fees in respect of a particular application, the automatic debit is not carried out and the account holder is informed accordingly by post, fax or e-mail.

7.2 Where more than one application is affected, fees are debited in ascending order of application number and only for those applications in respect of which the fees are completely covered by the funds in the account.

8. Replenishing the account after communication of insufficient funds

If the deposit account is sufficiently replenished to enable each fee to be paid, the EPO debits each fee automatically. The payment is considered to have been made on the date on which the deposit account is duly replenished.

9. Amendment and correction of debit

9.1 If after actually debiting a fee the EPO becomes aware of any change to the legal basis on which it did so, and which was brought to the attention of the EPO or competent national authority (see point 6.6 ADA) before the decisive payment date, if need be the EPO amends the debit retroactively to the original decisive payment date.

9.2 If the EPO finds that an automatic debit order was wrongly executed, it corrects the debit with effect for the original decisive payment date.

10. Subsequent filing of the automatic debit order

10.1 If an automatic debit order is not received by the EPO until after expiry of the period for paying a fee which may be paid late together with an additional fee or surcharge, both fee and additional fee or surcharge are debited automatically and payment is considered to have been received on the last day of the additional period.

10.2 If an automatic debit order is not received by the EPO until during the period for paying the fee for late furnishing of a sequence listing under Rule 30(3) EPC or claims fees under Rule 45(2), second sentence , or Rule 162(2) EPC, the late furnishing fee or claims fees are debited automatically and payment is considered to have been received on the last day of the period for payment.

10.3 If an automatic debit order is not received until during the period for requesting further processing, and the omitted act was the non-performance of a procedural act other than payment of a fee, automatic debiting of the fee for further processing is effected on the date on which the omitted act is completed, provided that the automatic debit order is received at the latest on that date. If the automatic debit order is received after the date of completion of the omitted act, payment of the fee for further processing is considered to have been received on the date on which the automatic debit order is received.

If, however, the omitted act was the non-payment of a fee, or the omitted acts were non-payment of a fee and non-performance of a procedural act (other than as required under Rule 71(3) and (6) EPC), point 10.1 applies mutatis mutandis. In an exceptional case concerning the acts required under Rule 71(3) or (6) EPC, automatic debiting is effected on the date of receipt of the automatic debit order or of filing of the translation of the claims, as appropriate.

10.4 For an automatic debit order not received until during the period for requesting re-establishment or for filing an appeal or a petition for review, the fee for re-establishment, appeal or petition for review is debited automatically on the day on which the request, appeal or petition is received by the EPO, provided the automatic debit order was received before or together with the request, appeal or petition. If the automatic debit order is received after the request, appeal or petition has been filed, but before expiry of the period for doing so, payment of the fee is considered to have been received on the date on which the automatic debit order was received.

10.5 Fee types not listed in points 10.1 to 10.4 above, and in particular fees which must be paid in order to complete the omitted act for a request for re-establishment, are not covered by the automatic debiting procedure and must be paid by the applicant, patent proprietor or representative on his own responsibility using another means of payment allowed under the RFees.

11. Use of other means of payment

If in an individual case a fee is paid separately using another permitted means of payment and before its decisive payment date, the EPO will not carry out the automatic debit order in respect of that fee, provided it receives the payment at least four days before the decisive payment date.

12. Revocation of an automatic debit order

An automatic debit order may be revoked as laid down in point 7 ADA or by means of Online Fee Payment via Online services (see point 3.8 of Annex B to ADA). It may be revoked only for the proceedings as a whole. Debits may not be revoked in respect of fees whose decisive payment date precedes the date on which the revocation is received.

13. Termination of the automatic debiting procedure

The automatic debit order ceases to be effective on the day on which

(a) the grant of the European patent takes effect; if an opposition to the granted European patent is filed, the patent proprietor's automatic debit order becomes effective again until the opposition or any subsequent appeal or petition for review is finally settled

(b) the European patent application is withdrawn, finally refused or finally deemed withdrawn

(c) a request is received for a transfer of rights to be recorded in the European Patent Register under Rule 22(1) EPC, provided the automatic debits were being made from the deposit account of the party withdrawing from the proceedings and the said party simultaneously explicitly revokes his automatic debit order, either online or on paper

(d) notification is received of the representative's withdrawal, provided the automatic debits were being made from the deposit account of the representative and he simultaneously explicitly revokes his automatic debit order, either online or on paper

(e) a stay of the proceedings under Rule 14 EPC takes effect

(f) an interruption of the proceedings under Rule 142 EPC takes effect

(g) the limitation (revocation) proceedings in respect of a European patent for which the automatic debit order was filed are finally terminated.

14. Statements of account

Registered online users can inspect their transactions and download their statements via Online Fee Payment. Other registered account holders are sent a detailed statement of account several times a month by post. Any errors noted must be notified to the EPO without delay. The EPO checks this information and, if need be, corrects the transaction retroactively to the original decisive payment date.