Article 21

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 19 February 2019 concerning amendments of the Arrangements for deposit accounts (ADA)

Introduction

To further improve the quality of the services the EPO provides for account holders and to facilitate the payment process, some changes have been made to the ADA. Specifically, the current validation functionality in Online Fee Payment has been extended (see point 1 below); the transparency of the administration of deposit accounts has been enhanced (see points 2 and 3 below); the availability of deposit accounts has been brought into line with current practice (see point 4 below); clarity has been provided concerning the order of priority for processing debit orders (see point 5 below).

1. Extension of the validation functionality

1.1 Background

To offer more flexibility and safeguards for account holders and to further enhance the refund procedure, the EPO added a validation functionality to the Online Fee Payment service. In operation since 5 July 2017,1 the validation functionality enables the EPO to automatically reject, at source, debit orders included in a batch debit order submitted via the Online Fee Payment tool that relate to payments of renewal fees (or additional fees) for "definitively closed" European patent applications or granted patents, or to payments for transfers of rights in respect of such applications (see point 5.3 ADA).

Encouraged by the very positive response from account holders, the EPO has decided to extend this functionality to further categories of payments under specific circumstances.

1.2 Extension of scope of the validation functionality

As from 1 April 2019, the validation functionality is extended to single payments and other categories of batch payments, in the following scenarios:

• individual payments of renewal fees in respect of granted patents or European patent applications that are definitively closed;
• batch and individual payments of renewal fees that are made before the earliest valid payment dates under Rule 51(1) EPC,2namely a renewal fee in respect of the third year paid more than six months before it falls due and all other renewal fees paid more than three months before they fall due;
• double-payment of fees, except those listed in new Annex A.3 to the ADA (see also point 1.3 below);
• individual payments of fees for transfer of rights in respect of "definitively closed" European patent applications.

The extended validation functionality has the advantage that fees that are not due or that have already been paid will not be debited, thereby reducing the refund-processing burden on both users and the EPO.

As for the current validation functionality, a message confirming that the debit order was not carried out is generated by the system after validation, and stored in the account history in Online Fee Payment. Furthermore, to make all payment-related processes more transparent for the parties to the proceedings and third parties, the confirmation of rejection will be uploaded to the public part of the EPO's electronic file.

Point 5.3 ADA has been amended accordingly.

1.3 Fees excluded from the validation functionality

Fees that can be paid several times during the proceedings before the EPO are excluded from the scope of applicability of the validation functionality. The fees in question, such as opposition fee, claims fee, search fee, etc., are listed in new Annex A.3 to the ADA.

Double-payments made on the same day and double-payments relating to a debit order with a deferred payment date are excluded from the validation functionality.

2. Amendment of point 4.2 ADA – annual account balance confirmation

Deposit account holders can monitor their account balances, view all payment transactions (pending or executed) or download their statement of account via Online Fee Payment for an up-to-date overview of all movements. In addition, at the close of the financial year, the EPO sends deposit account holders an annual account balance confirmation by post. Point 4.2 ADA has been amended accordingly.

3. Ex-officio closure or deactivation of deposit accounts

For administrative reasons deposit accounts should be as transparent as possible. Therefore, deposit accounts showing a zero balance with no transactions recorded in the last four years will be closed ex-officio by the EPO. Deposit accounts showing a positive balance with no transactions recorded in the last four years will be set ex-officio to status "inactive" by the EPO. In the latter case, the account can be closed upon request and the credit balance refunded to the account holder in accordance with point 2.4 ADA. If, on the other hand, a debit order is given using an "inactive" deposit account, it is reactivated ex-officio without any administrative burden for the account holder.

In the case of closure, the possibility of reopening the account remains. In this regard, reference is made to point 2.5 ADA.

In both cases, the EPO will notify the account holder one month before the effective deactivation or closure takes place.

Inactive accounts are marked with XXX before the deposit account holder name in Online Fee Payment and in the annual account balance confirmation.

The above is reflected in new point 4.3 ADA.

4. Amendment of point 1 ADA – General provision

Current point 1 provides, in particular, that deposit accounts are available for paying fees, expenses and prices to the EPO. Expenses for any services rendered by the EPO and prices for publications according to Article 3 RFees can, however, only be paid via credit card or bank transfer. Point 1 ADA is therefore amended to reflect the current situation.

5. Amendment of point 5.2 – Order of priority for processing debit orders

The EPO has amended point 5.2 ADA to clarify the order in which it processes debit orders that are received or that are to be executed on the same day.

Revised point 5.2.1 makes clear that automatic debit orders are processed first.

As is now explained under point 5.2.2, once a debit order cannot be executed in its entirety in ascending order of fee codes due to insufficient funds, no other fees relating to that debit order or any other debit orders are booked until the account is duly replenished. Only then will the EPO process any outstanding debit order in the prescribed order of priority.

The example below shows the handling of debit orders in the case of a shortfall:

A European application having 35 pages is filed on 12 June 2018. The filing fee, the search fee, the designation fee and the examination fee are paid on the same day by debit order filed via new online filing (CMS). The deposit account shows a balance of EUR 950.

On 14 June 2018 the same party files an opposition and pays the corresponding fee by debit order via new online filing (CMS).

Considering the order of priority under point 5.2.1 ADA, the debit order of 12 June 2018 is processed first. However, the funds on the account are insufficient to cover all the fees to be debited on 12 June 2018 (shortfall). The fees are booked in ascending order of the fee codes, as long as the funds allow, beginning with the filing fee (001). Since the funds available in the account equal EUR 950 , none of the further fees covered by the debit order (002, 005 and 006) can be booked until the account is duly replenished. This applies also to the designation fee (005), even though the funds remaining after booking the filing fee, i.e. EUR 830, would in principle be sufficient to cover that fee.

As clarified in point 5.2.2, no other subsequently filed debit order will be processed even if there are sufficient funds. Thus the opposition fee from the debit order of 14 June 2018 will only be booked once the account is duly replenished to cover all the fees from the debit order of 12 June 2018.