Pages 22-42

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 debiting of fees

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

1. Automatic debiting procedure

1.1 A deposit account may also be debited on the basis of an automatic debit order for a specific European or international patent application signed by or on behalf of the account holder (automatic debiting procedure). By filing an automatic debit order, the deposit account holder authorises the EPO to debit fees automatically as the proceedings progress.

1.2 Filing an automatic debit order for European patent applications, European patents and international applications before the EPO as designated or elected Office

The automatic debit order must be filed in an electronically processable format (XML), e.g. via EPO Online Filing or the EPO case management system (CMS) using EPO Forms 1001E, 1200E or 1038E, or via Online Fee Payment in Online services.

The signature may take the form of a text string signature, a facsimile signature or an enhanced electronic signature. In the case of Online Fee Payment, authorisation by smart card takes the place of a signature.

Points 5.1.3 and 5.4.2 of the ADA apply mutatis mutandis.

1.3 Filing an automatic debit order for international applications before the EPO as receiving Office, International Searching Authority or International Preliminary Examining Authority

The automatic debit order must be filed in an electronically processable format (XML), e.g. using the EPO Online Filing software or PCT-SAFE, or via Online Fee Payment in Online services, CMS and ePCT using the PCT fee calculation and payment feature.2

Points 5.1.3 and 5.4.2 of the ADA apply mutatis mutandis.

1.4 The order may be filed on behalf of the applicant or patent proprietor or his representative or agent. It extends to all types of fees covered by the automatic debiting procedure and payable in respect of the proceedings specified in the automatic debit order in accordance with point 2 below. As the proceedings progress, each such fee is debited automatically and recognised as received in time.

1.5 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

2.1 Automatic debiting is allowed for:

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

(b) international applications, in proceedings before the EPO as designated or elected Office ("Euro-PCT applications"), including those for which early processing under Article 23(2) or 40(2) PCT is requested,

(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 under Article 112a EPC to which the applicant or patent proprietor is a party, on the basis of a new automatic debit order which must be filed for this purpose,

(e) international applications, in proceedings before the EPO as receiving Office, International Searching Authority and International Preliminary Examining Authority.

2.2 A separate automatic debit order must be filed for each of the proceedings under point 2(b) and 2(e) above.

3. Fee types covered

3.1 Automatic debiting is allowed for all fee types except those expressly excluded under point 4 below.

3.2 In respect of European patent applications, European patents and international applications before the EPO as designated or elected Office, automatic debiting is allowed, in particular, for the following:

(a)(i) filing fee for European patent applications (Article 78(2), Rule 38(1) EPC), including any additional fee for a European patent application comprising more than 35 pages (Rule 38(2) and (3) EPC, Article 2, item 1a, RFees)3 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, RFees)4

(a)(ii) filing fee for international applications entering (early) into the European phase (Rule 159(1)(c) EPC; Article 23(2) or 40(2) PCT), including any additional fee for a Euro-PCT application comprising more than 35 pages (Rule 38(2) EPC, Article 2, item 1a, RFees)and, for international applications entering into the European phase with a request for early processing (Article 23(2) or 40(2) PCT), any other fee under point 3.2(b) to (f) below, depending on the type of international application concerned and the date on which the request for early processing is filed5

(b) search fee for a European or supplementary European search (Article 78(2), Rule 64(1), Article 153(7), Rules 159(1)(e) and 164(2)(a) EPC)6

(c) designation fee(s) for contracting states designated7 (Article 79(2), Rules 39(1) and 159(1)(d) EPC, Article 2(1), item 3, RFees)

(d) claims fee for the sixteenth8 and each subsequent claim (Rules 45(1), 71(6) and 162 EPC, Article 2(1), item 15, RFees)

(e) renewal fees for European patent applications (Article 86(1) and Rule 159(1)(g) EPC)

(f) examination fee (Article 94(1) and Rule 159(1)(f) EPC)

(g) fee for grant, including fee for publication of the European patent specification (Rule 71(3) EPC, Article 2, item 7, RFees)9

and

fee for grant and printing the European patent specification10

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

(i) fee for publishing a new specification of the European patent (Rules 82(2) and 95(3) EPC, Article 2, item 8, RFees)11

and

fee for printing a new European patent specification12

(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 of the right of priority (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 an additional copy of the documents cited in the European search report (Article 3 RFees)

(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.

3.3 In respect of international applications before the EPO acting as receiving Office, International Searching Authority or International Preliminary Examining Authority, automatic debiting is allowed, in particular, for the following:

(a) transmittal fee (Rule 14.1 PCT)

(b) search fee (Rule 16.1 PCT)

(c) international filing fee (Rule 15.2 PCT)

(d) supplement for each sheet in excess of 30 sheets (Schedule of Fees annexed to the Regulations under the PCT)

(e) administrative fee for a certified copy of a European patent application or an international application (priority document) (Rule 17.1 PCT, Rule 54 EPC, Article 3 RFees), but only if the certified copy requested is of an application the priority of which is claimed in an international application for which the EPO is acting as receiving Office

(f) late payment fee for any fee due under Rules 14.1, 15.2 and 16.1 PCT (Rule 16bis.2 PCT)

(g) fee for restoration of the right of priority (Rule 26bis.3(d) PCT)

(h) administrative fee for the late furnishing of sequence listings (Rule 13ter.1(c) and 13ter.2 PCT, Article 3 RFees)

(i) additional search fee (Rule 40.2(a) PCT, Rule 158(1) EPC)

(j) protest fee relating to an additional international search fee (Rule 40.2(e) PCT, Rule 158(3) EPC)

(k) administrative fee for an additional copy of the documents cited in the international search report or international preliminary examination report (Article 20(3) PCT, Rules 44.3(b) and 71.2(b) PCT)

(l) late payment fee for the fees due under Rules 57 and 58 PCT (Rule 58bis.2 PCT)

(m) fee for preliminary examination (Rule 58 PCT, Rule 158(2) EPC)

(n) handling fee (Rule 57 PCT)

(o) additional fee for preliminary examination (Rule 68.3(a) PCT, Rule 158(2) EPC)

(p) protest fee relating to an additional fee for preliminary examination (Rule 68.3(e) PCT, Rule 158(3) EPC).

4. Fee types not covered

4.1 In respect of European patent applications, European patents and international applications before the EPO as designated or elected Office, 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) and 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).

4.2 In respect of international applications before the EPO as Supplementary International Searching Authority, automatic debiting is not allowed for the following:

(a) fee for a supplementary international search (Rule 45bis.3(a) PCT)

(b) review fee relating to a supplementary international search (Rule 45bis.6(c) PCT)

(c) supplementary search handling fee (Rule 45bis.2 PCT)

(d) late payment fee relating to a supplementary international search (Rule 45bis.4(c) PCT).

4.3 Automatic debiting is not allowed for any of the fees, expenses and prices laid down by the President of the EPO under Article 3 RFees, other than the administrative fees referred to in points 3.2(q), 3.3(e), 3.3(h) and 3.3(k) above.

5. Automatic debiting of fees

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. In international applications for which early processing under Article 23(2) or 40(2) PCT is requested, the fees debited will depend on the type of international application concerned and the date on which the request for early processing is filed.13 The fees to be debited over the next 40 days are shown under the "Payment Plan" tab in Online Fee Payment.

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 in respect of European patent applications, European patents and international applications before the EPO as designated or elected Office are considered to have been received

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

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

(b) for international applications for which early processing has been requested (Article 23(2) or 40(2) PCT):

• for the fees falling due on the date of the request:

on the date of receipt of the request for early processing, provided that the documents under Article 20 PCT are available to the EPO;

(c) 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 programme14 before the date of expiry of the period under Rule 70(1) or 159(1) EPC, as appropriate:15

on the date of receipt of the request;

(d) for the fee for grant and publishing16 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;

(e) 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(4) EPC and the translation of the relevant claims is filed before the date of expiry of the period under Rule 71(4) EPC:

on the date of its receipt;

(f) for the fee for publishing17 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;

(g) for renewal fees

• for European patent applications:

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

• for international applications before the EPO as designated or elected Office:

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 reopens proceedings before the boards 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;

(h) for the fees for further processing, and subject to point 10.1(c):

• 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;

(i) for the fee for re-establishment of rights, limitation or revocation, and appeal or 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;

(j) for the administrative fee under point 3.2(q) above:

on its due date (Article 4(1) RFees).

6.2 Except as otherwise provided under points 8 and 10 below, payments under the automatic debiting procedure in respect of international applications before the EPO as receiving Office, International Searching Authority or International Preliminary Examining Authority are considered to have been received

(a) subject to point 6.2(b) to (d) below, for any fee to be paid within a specific period:

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

(b) for the fee for restoration of the right of priority (point 3.3(g) above):

on the date of receipt of the request for restoration;

(c) for the administrative fee for a certified copy of the priority document (point 3.3(e) above):

on its due date (Article 4(1) RFees);

(d) for the administrative fee for an additional copy of the documents cited in the international search report or international preliminary examination report (point 3.3(k) above):

on its due date (Article 4(1) RFees).

6.3 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 (shortfall), the fees are automatically debited in ascending order of fee codes, as long as the funds allow.18 The deposit account holder is informed accordingly by fax or email.

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 outstanding 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 5.6 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 In respect of European patent applications, European patents and international applications before the EPO as designated or elected Office, the following applies if an automatic debit order is received late:

(a) If an automatic debit order is received by the EPO 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.

(b) If an automatic debit order is received by the EPO 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) EPC, 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.

(c) If an automatic debit order is received 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 those required under Rule 71(3) and (4) EPC), point 10.1(a) applies mutatis mutandis. In an exceptional case concerning the acts required under Rule 71(3) or (4) 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.

(d) For an automatic debit order received 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.

(e) Fee types not listed in points 10.1(a) to (d) 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.

10.2 In respect of international applications before the EPO as receiving Office, International Searching Authority or International Preliminary Examining Authority, the following applies if an automatic debit order is received late:

(a) If an automatic debit order is received by the EPO as receiving Office after the invitation under Rule 16bis.1(a) PCT to pay the fees due under Rules 14.1(c), 15.3 and 16.1(f) PCT together with a late payment fee (Rule 16bis.2 PCT) has been sent, any fee due under Rules 14.1(c), 15.3 and 16.1(f) PCT and the late payment fee are debited automatically and payment is considered to have been received on the last day of the time limit under Rule 16bis.1(a) PCT.

(b) If an automatic debit order is received by the EPO as receiving Office after the expiry of the period for paying the fees due under Rules 14.1(c), 15.3 and 16.1(f) PCT but before the invitation under Rule 16bis.1(a) PCT to pay these fees together with a late payment fee (Rule 16bis.2 PCT) has been sent, any fee due under Rules 14.1(c), 15.3 and 16.1(f) PCT is debited automatically and payment is considered to have been received on the date on which the automatic debit order was received.

(c) For an automatic debit order received during the period for restoration of the right of priority under Rule 26bis.3 PCT before the EPO as receiving Office, the fee for restoration of priority (Rule 26bis.3(d) PCT) is debited automatically on the day on which the request is received by the EPO, provided the automatic debit order was received before or together with the request. If the automatic debit order is received after the request was filed but before expiry of the period for doing so, payment is considered to have been received on the date on which the automatic debit order was received.

(d) If an automatic debit order is received by the EPO as International Searching Authority or International Preliminary Examining Authority after the invitation under Rule 13ter.1(a) and 13ter.2 PCT to furnish a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions together with a late furnishing fee (Rule 13ter.1(c) PCT) has been sent to the applicant, the late payment fee is debited automatically and payment is considered to have been received on the last day of the time limit under Rules 13ter.1(a) and 13ter.2 PCT.

(e) If an automatic debit order is received by the EPO as International Searching Authority or International Preliminary Examining Authority after the invitation under Articles 17(3)(a) and 34(3)(a) PCT to pay additional search fees or additional preliminary examination fees has been sent, the additional search fees or additional preliminary examination fees and, if the applicant indicates that these fees are being paid under protest, the protest fee (Rules 40.2(e) PCT or 68.3(e) PCT) are debited automatically and payment is considered to have been received on the last day of the time limit under Rules 40.1(iii) or 68.2(v) PCT.

(f) If an automatic debit order is received by the EPO as International Preliminary Examining Authority after the invitation under Rule 58bis.1(a) PCT to pay the fees due under Rules 57.3 and 58.1(b) PCT together with a late payment fee (Rule 58bis.2 PCT) has been sent, any fee due under Rules 57.3 and 58.1(b) PCT and the late payment fee are debited automatically and payment is considered to have been received on the last day of the time limit under Rule 58bis.1(a) PCT.

(g) If an automatic debit order is received by the EPO as International Preliminary Examining Authority after the expiry of the period for paying the fees due under Rules 57.3 and 58.1(b) PCT, but before the invitation under Rule 58bis.1(a) PCT to pay these fees together with a late payment fee (Rule 58bis.2 PCT) has been sent, any fee due under Rules 57.3 and 58.1(b) PCT is debited automatically and payment is considered to have been received on the date on which the automatic debit order was received.

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

12.1 An automatic debit order must be revoked via Online Fee Payment in Online services. 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.

Points 5.1.3 and 5.4.2 of the ADA apply mutatis mutandis.

12.2 The EPO reserves the right to revoke any automatic debit order ex officio if the procedure is used improperly, and in particular if the conditions for operating the account laid down in point 4.1 ADA are not complied with.

13. Termination of the automatic debiting procedure

13.1 In respect of European patent applications, European patents and international applications before the EPO as designated or elected Office, an 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 in accordance with point 12 above

(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 in accordance with point 12 above.

(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.

13.2 In respect of international applications before the EPO as receiving Office, International Searching Authority or International Preliminary Examining Authority, an automatic debit order ceases to have effect on the day on which

(a) the international application is withdrawn (Rule 90bis.1 PCT) or considered to be withdrawn

(b) notification of a change of applicant is received (Rule 92bis.1(i) PCT), provided that fees were being automatically debited from that applicant's deposit account and he has revoked the automatic debit order with the EPO in accordance with the procedure in point 12 above.

(c) notification of a change of agent is received (Rule 92bis.1(ii) PCT), provided that fees were being automatically debited from that agent's deposit account and he has revoked the automatic debit order with the EPO in accordance with the procedure in point 12 above.

13.3 In respect of international applications before the EPO as International Preliminary Examining Authority, an automatic debit order ceases to have effect in respect of any fee payable to the EPO in that capacity on the day on which the demand is withdrawn (Rule 90bis.4 PCT) or considered to be withdrawn.

13.4 In cases other than those specified under points 13.2 and 13.3 above, an automatic debit order ceases to have effect from the moment the proceedings before the EPO as receiving Office, International Searching Authority or International Preliminary Examining Authority are terminated.