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Notice from the European Patent Office dated 20 August 2019 concerning revision of the Arrangements for deposit accounts and their annexes

Since the last full publication of the Arrangements for deposit accounts (ADA) and their annexes in 2017,1 several provisions have been amended, including point 5.3 ADA concerning the validation functionality.2 Further amendments aimed at facilitating end-to-end electronic processing of refunds and increasing the transparency of account management will enter into force on 1 October 2019. To reflect all changes made, the EPO has now published a new consolidated version of the ADA and their annexes.

The first section of the present notice deals with the amendments to the ADA that will enter into force on 1 October 2019, the main change being the introduction of the requirement to file refund instructions in an electronically processable format.

The second section focuses on the revision of the provisions governing the automatic debiting procedure. In particular, the texts of Annexes A.1 (Arrangements for the automatic debiting procedure (AAD)) and A.2 to the ADA have been streamlined to improve their readability and clarity. This revision resulted in no substantive changes to the automatic debiting procedure.

The third section gives an overview of the main provisions that have been amended by separate decisions of the President and are now included in the consolidated version of the ADA and their annexes.

Given the varied nature of the changes, users are recommended to read the individual revised provisions carefully.

I. ADA

1. Filing and format requirements for refund instructions (point 8 ADA)

The EPO published its new fee refund procedures in March 2019.3 At the time, users were informed that the filing of refund instructions in an electronically processable format would become obligatory in the near future. The EPO has now completed the necessary technical preparations for this next step, which will further streamline workflows and facilitate the processing of refunds.

Accordingly, new point 8 ADA establishes the filing and format requirements for refund instructions. Under point 8.2 ADA, such instructions must be filed in an electronically processable format (XML) and using one of the permitted electronic means, namely:

• OLF, CMS and ePCT using EPO Forms 1001E, 1200E, 1038E, PCT Form PCT/RO/101, PCT-SFD (eOLF) and PCT-DEMAND (eOLF).

Instructions not complying with these requirements or filed by a third party will not be processed. As a courtesy service, the party concerned will be informed accordingly (point 8.3 ADA). It is noted that the filing of invalid refund instructions does not result in any loss of procedural rights for the party concerned. It merely implies that, until valid instructions are filed, the EPO will invite the applicant to claim the refund via its website.

For more information about the fee refund procedures applicable as from 1 October 2019, please see the notice from the EPO dated 20 August 20194 concerning the revised fee refund procedures.

2. Deletion of obsolete debit orders (point 5.2.5 ADA)

If funds in a deposit account are insufficient to execute a debit order on the date of receipt or the deferred execution date under point 5.4.1, second paragraph, ADA, the order will remain pending until the account has been sufficiently replenished. In certain cases, such pending orders may become obsolete, for instance, if the applicant pays the relevant fees via another valid means of payment or if the patent application for which the fees are to be paid is abandoned.

To avoid such obsolete debit orders remaining pending indefinitely, a legal basis for deleting them has been introduced in point 5.2.5 ADA. It is important to note that the scope of application of this provision is limited to orders the deletion of which does not result in any negative legal consequences for parties to the proceedings before the EPO.

Point 5.2.5 ADA applies mutatis mutandis to the automatic debiting procedure (see point 6 AAD), i.e. to automatic debits of fees which are still pending two months after their decisive payment date.

3. Other minor changes and clarifications

‒ Order of processing of debit orders (point 5.2.2 ADA)

If the deposit account does not contain sufficient funds on the date of receipt of a debit order or the deferred execution date under point 5.4.1, second paragraph, ADA for a particular application, fees are booked in ascending order of fee codes, as long as the funds allow. As an exception to this provision, the additional fee for European patent applications comprising more than 35 pages (fee code 501 or 520) will be debited together with the filing fee (fee code 001 or 020), as it forms part of the latter.

‒ Information about insufficient funds (point 5.2.2 ADA)

If a debit order cannot be executed due to insufficient funds, the deposit account holder is informed accordingly via EPO Form 9004. Under the EPO's new workflows, this form will no longer be issued by fax, but only by email or post. Point 5.2.2 ADA has been amended to reflect this change. Deposit account holders should therefore ensure that an up-to-date email address is available by going to the EPO website and selecting the update account details option on the Deposit account request web form.

‒ Repayments of deposit account balances (point 3.4 ADA)

Repayments of deposit account balances can be made only to the deposit account holder. Point 3.4 ADA has been reformulated to clarify that in order to ensure compliance with this requirement the EPO may request evidence that the person requesting repayment is authorised to act on behalf of the deposit account holder and that the bank account provided belongs to the deposit account holder.

‒ Format requirements for debit orders (point 5.1.3 ADA)

The online forms to be used for filing debit orders with the EPO include an annotation field which the party to proceedings can use to communicate additional information. In accordance with EPO practice, debit orders filed using the annotation field itself are invalid and will not be carried out. This has now been expressly clarified in point 5.1.3 ADA.

II. Annexes A.1 and A.2 to the ADA concerning the automatic debiting procedure

1. Streamlining of the texts of Annexes A.1 and A.2 to the ADA

Over the past several years, the scope of the automatic debiting procedure has been significantly extended to cover the majority of fees payable in European and PCT proceedings before the EPO. At the same time, a limited number of exceptions to the automatic debiting procedure have been introduced, e.g. exception in the case of a waiver of a further communication under Rule 71(3) EPC.

All these changes have also increased the complexity of the texts of Annexes A.1 and A.2 to the ADA. The texts of both annexes have therefore been streamlined in order to improve their clarity and readability, thereby increasing legal certainty for EPO users. The functioning of the automatic debiting procedure, e.g. the dates on which the different fees are automatically debited, has not changed as a result of this simplification exercise.

‒ Annex A.1 to the ADA

The main change in the structure of Annex A.1 is the merging of the provisions governing the automatic debiting of European and PCT fees because they are both based on the same general principles, e.g. regarding the decisive payment date.

Apart from the above restructuring, the simplified text of Annex A.1 provides that all European and PCT proceedings and fees are covered and lists only the exceptions to the general rule rather than each type of proceedings and fees covered by the automatic debiting procedure (see points 2-3 AAD).

The provisions governing decisive payment dates under the automatic debiting procedure have been merged into a single provision (point 5 AAD). This provision now lists all the exceptions from the general rule according to which fees under the automatic debiting procedure are considered to have been received on the last day of the applicable period.

The decisive payment date of the further processing fee will depend on the circumstances of a particular case, e.g. on the omitted act or the point in time at which an automatic debit order is filed. To provide for more transparency, the different possible decisive payment dates of the further processing fee are now established in a separate provision (point 5.2 AAD).

If the deposit account does not contain sufficient funds to cover all the fees to be debited automatically in respect of a particular application, the fees will be debited in ascending order of fee codes, as long as the funds allow. Thus, the same general principles as provided in point 5.2 ADA apply mutatis mutandis. Point 6 AAD on insufficient funds has therefore been simplified to refer only to the general provision of the ADA.

The provisions governing revocation of debit orders and termination of proceedings have also been streamlined and simplified. As a result, the obligation of a party withdrawing from European or PCT proceedings, or its representative (agent), to also separately revoke an automatic debit order has been moved to the AAD provision governing the revocation of automatic debit orders (see new point 10.2 AAD).

‒ Annex A.2 to the ADA

Annex A.2 to the ADA is intended to provide users with additional information explaining the automatic debiting procedure. The content of Annex A.2 to the ADA has therefore been streamlined to focus on the information needed to understand the functioning of the individual rules governing the automatic debiting procedure. All details not directly relevant for the automatic debiting procedure have been removed.

Section "Re point 3 AAD" in the updated Annex A.2 to the ADA has been revised to focus on those fees due in European and PCT proceedings for which specific aspects of the automatic debiting procedure must be taken into account by the users, e.g. the claims fees under Rule 162 or the additional search fees under Article 17(3)(a) PCT.

2. Later effective debiting of additional fees in cases of non-unity of application (see Re point 3 AAD, I.2 and II.4)

If the EPO establishes that an application in European or PCT proceedings lacks unity, it will invite the applicant to pay further search fee(s) under Rules 64(1) or 164(1) or (2) EPC or additional search fees under Article 17(3)(a) PCT, as appropriate. In order to enable more accurate automatic debiting of any such fees due, e.g. in the light of applicant submissions made at the end of the applicable period, they will be effectively debited 10 days after the decisive payment date. The same practice already applies for the automatic debiting of claims fees under Rule 162 EPC.

III. Editorial changes

The ADA and their annexes have been consolidated to include the provisions amended by separate decisions of the President in 2019. In particular, the decision of the President dated 19 February 2019 (OJ EPO 2019, A20)5 amended point 5.3 ADA to extend the scope of the validation tool and introduced a new Annex A.3 to the ADA listing fees excluded from the double-payment validation functionality. Some further changes and clarifications concerning the management of deposit accounts and the order of processing of debit orders were also made by this decision (see amended points 1, 4.2, 4.3, 5 and 5.2 ADA).

Furthermore, by decision of the President dated 22 May 2019 (OJ EPO 2019, A46), the decisive payment date for the automatic debiting of the international preliminary examination and handling fees has been changed from the last day of the applicable period to the date of receipt of the demand for preliminary examination. These changes have now been included in point 5.1(c) AAD, fifth subsection, and Annex A.2, Re point 3 AAD, II.8.

For more information on these changes, please refer to the relevant publications in the Official Journal.

IV. Entry into force

The revised texts enter into force on 1 October 2019 and supersede those dated 1 December 2017 (supplementary publication 5, OJ EPO 2017) as amended by decisions of the President of the European Patent Office dated 19 February 2019 (OJ EPO 2019, A20) and 22 May 2019 (OJ EPO 2019, A46).