Pages 32-51

Annex A.2 to the ADA - Information from the EPO concerning the automatic debiting procedure

The Arrangements for the automatic debiting procedure (AAD)1 offer holders of deposit accounts with the EPO an additional payment option. The AAD form part of the Arrangements for deposit accounts (ADA), which thus also apply to the automatic debiting procedure.

The automatic debiting procedure is explained below.

I. General remarks

Under the procedure laid down in the AAD, an account holder may file with the EPO an automatic debit order to ensure automated payment of all the fees due in the proceedings for which the order is filed, except those expressly excluded under point 3.2 AAD. In the case of automatic debiting, the responsibility that payment is made correctly, in full and on time lies with the EPO, provided that the deposit account always contains sufficient funds to cover the payments arising. Payments due to be debited within the next 40 days are shown on the Payment Plan page in Online Fee Payment in Online services.

Once an automatic debit order has been filed, the user of the automatic debiting procedure does not usually need to take any further action to ensure correct and timely payment. However, in certain circumstances, users must actively inform the EPO that no payment of a fee is to be made or that only one particular fee amongst a number of fees due is to be paid; otherwise fees are debited automatically in full. An example is the invitation by the EPO to pay further search fees under Rules 64(1) or 164(1) or (2) EPC or additional search fees under Article 17(3)(a) PCT. If these fees are due, the applicant must inform the EPO that he wishes to pay none or only one or more, but not all of them. Otherwise all the search fees for which the invitation was issued will be debited automatically. The same applies for claims fees (see Re point 3 AAD below).

This does not however mean that applicants may request that specific fees (e.g. renewal fees) be excluded from the automatic debiting procedure.

II. Notes on individual provisions of the AAD

Re point 1 AAD: Automatic debiting procedure and filing of automatic debit orders

The automatic debiting procedure is open only to applicants or patent proprietors and their representatives, but not to opponents (whether in first-instance proceedings or as a party to subsequent appeal or review proceedings), third parties or persons (other than the applicant or patent proprietor) who inspect the file.

Re point 2 AAD: Types of proceedings covered

An automatic debit order may be filed for:

(i) European grant proceedings for a specific European patent application or international application before the EPO as designated or elected Office ("Euro-PCT application"), including requests for early processing under Article 23(2) or 40(2) PCT,

(ii) PCT proceedings for a specific international application before the EPO as receiving Office, ISA or IPEA,

(iii) appeal and review proceedings under Article 112a EPC to which the applicant or patent proprietor is a party,

(iv) limitation and revocation proceedings.

An automatic debit order cannot be filed for international applications before the EPO as Supplementary International Searching Authority.

An automatic debit order ceases to have effect from the moment the proceedings before the EPO as receiving Office, ISA or IPEA are terminated (point 11.2 AAD). Accordingly, separate orders must be filed for PCT proceedings under (ii) above and for European proceedings under (i) above in respect of a specific international application. For limitation or revocation proceedings under (iv) above, a new automatic debit order has to be filed.

For 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.2 In particular, any fees due will be automatically debited on the date the request for early processing under Article 23(2) or 40(2) PCT is filed, provided the documents referred to in Article 20 PCT are available to the EPO on that date. Otherwise the fees will only be debited and the request for early processing will only take effect on the day the EPO receives the documents referred to in Article 20 PCT from the IB under Rule 47.4 PCT.

Re point 3 AAD: Fee types covered

The automatic debiting procedure covers the majority of the fees due in European and PCT proceedings before the EPO. The fees excluded from automatic debiting are set out in point 3.2 AAD. The EPO takes into consideration, to the account holder's benefit or detriment, all relevant factors known to it when the automatic debit is effected, doing so in such a way as to safeguard all rights arising from the application (see point 4 AAD).

I. For European applications or international applications before the EPO as designated or elected Office ("Euro-PCT applications"), attention is drawn to the specific aspects of the automatic debiting procedure for the following:

I.1 Filing fee including any additional fees

For European and Euro-PCT applications, an additional fee as part of the filing fee is due if the application comprises more than 35 pages. For European applications, the additional fee is debited automatically on the last day of the one-month period from filing the European patent application (together with the filing fee) or of the one-month period from filing the first set of claims or of the one-month period from filing the certified copy referred to in Rule 40(3) EPC, whichever is applicable (Rule 38(3) EPC). For Euro-PCT applications, the filing fee and the additional fee is debited on the last day of the time limit under Rule 159(1) EPC, except where early processing is requested (see Re point 2 AAD above).

For divisional applications, an additional fee is due in respect of any earlier application which is itself a divisional application (Rule 38(4) EPC). The additional fee will be debited automatically, together with the filing fee, on the last day of the one-month period from filing the application.

Where the requirements of Article 14 RFees and Rule 6 EPC are met, only 70% of the filing fee, including any additional fee, is debited.3

I.2 Search fee for a European or supplementary European search

If, for a European patent application, the search division makes a finding of non-unity, it informs the applicant under Rule 64(1) EPC, when it transmits the partial European search report, that a further search fee is payable for each additional invention involved. If the applicant does not want any, one or more of the further inventions to be searched, he must notify the EPO to this effect before the period for payment expires, in order to prevent the automatic debit of all the further search fees being carried out.

The same applies if, upon entry into the European phase, the applicant is invited to pay search fees under Rules 164(1) or (2) EPC4 and an automatic debit order is on file.

To enable the EPO to process any payment instructions received up to the last day of the periods under Rules 64 or 164 EPC, the effective debiting of further search fees will take place 10 days after the decisive payment date. The provisional amount of further search fees due will be shown in the payment plan until the debit based on the final number of inventions to be searched has taken place. The fees will only be automatically debited if the deposit account contains sufficient funds on the effective debiting date.

For the supplementary European search fee, the automatic debiting procedure takes account of circumstances in which the fee is reduced or not payable, debiting accordingly only the reduced amount or no fee at all.

I.3 Designation fee⁵

If an applicant wishes to pay the designation fee before expiry of the period for doing so, payment must be made separately by another means of payment allowed under the RFees (see point 9 AAD). This applies, for example, at the end of the European grant procedure if, exceptionally, the fee(s) become(s) due only after the communication under Rule 71(3) EPC (Rule 71a(3) EPC). The fee(s) should be paid early by another means to prevent delay in the publication of the mention of grant.

For automatic debiting of the extension and validation fee(s), see point I.11 below.

I.4 Claims fees (Rules 45, 162 and 71(4) EPC)

Claims fees under Rules 45 and 162 EPC

The EPO takes as the basis for the automatic debiting procedure the claims incurring fees under Rule 45 EPC contained in the first set of claims. Where there is more than one set of claims, it takes the set containing the greatest number. If the applicant does not want to pay any or all of these claims fees, he must inform the EPO accordingly before the period under Rule 45(2), first sentence, EPC expires. The same applies where the automatic debit order is not received until after filing of the claims but before expiry of the period under Rule 45(2), second sentence, EPC.

For Euro-PCT applications, any claims fees payable on entry into the European phase are computed and, where appropriate, debited under the automatic debiting procedure on the basis of the documents on which the European grant procedure is to be based (Rule 162 EPC). If amended claims are filed in response to the combined communication under Rules 161 and 162 EPC, the claims fees due are computed on the basis of the last set of amended claims (Rule 162(2) EPC), unless the EPO is instructed otherwise before expiry of the period for payment. To enable the EPO to process any payment instructions received up to the last day of the six-month period for filing amendments, the effective debiting of claims fees will take place 10 days after the decisive date of payment. The provisional amount of claims fees due will be shown in the payment plan until the debit based on the final number of claims has taken place. The fees will only be automatically debited if the deposit account contains sufficient funds on the effective debiting date.

If the automatic debit order is not filed until after expiry of the period under Rule 45 or 162 EPC but before expiry of the period for requesting further processing in respect of claims deemed withdrawn as a result of non-payment of the claims fees, and the applicant now wishes to pay for fewer claims than those for which fees have become due, he should indicate these before expiry of the period for requesting further processing. Otherwise all claims fees which have become due and the corresponding further processing fees are debited automatically on the last day of the period for requesting further processing.

Account holders participating in the automatic debiting procedure and waiving their right to the communication under Rules 161(1) or (2) and 162 EPC must pay any claims fees due on entry into the European phase by another permitted means of payment (see point 9 AAD).6

Claim fees under Rule 71(4) EPC

If the European patent application in the text intended for grant under Rule 71(3) EPC comprises more than fifteen claims for which fees have not already been paid in accordance with Rule 45 or 162 EPC, any claims fees due are debited automatically on the date of filing of the translation of the relevant claims, or on the last day of the period under Rule 71(3) EPC. If amendments requested within the period under Rule 71(3) EPC introduce additional claims, the applicable number of claims fees for these is debited automatically on the last day of the period.

If in response to the communication under Rule 71(3) EPC an applicant files amendments or corrections and waives the right to a further communication under Rule 71(3) EPC, any additional claims fees must be paid separately by another means of payment (see point 9 AAD).7

I.5 Renewal fees

If an applicant wishes to pay a renewal fee before the due date as provided for in Rule 51(1) EPC, the fee must be paid separately by another means of payment allowed under the RFees (see point 9 AAD). This applies, for example, if in the final phase of the European grant procedure a renewal fee becomes due after the communication under Rule 71(3) EPC (Rule 71a(4) EPC). The fee should be paid early by another permitted means to prevent delay in the publication of the mention of grant.

I.6 Examination fee

The examination fee is automatically debited on the last day of the period specified in Rule 70(1) EPC. Since the request for examination is always included in EPO Form 1001 or 1001E, the applicant can prevent the automatic debiting of the examination fee only by revoking the automatic debit order or withdrawing the application in time.

For cases in which the examination fee is automatically debited before expiry of the period for payment, i.e. where the applicant has waived his right to the invitation under Rule 70(2) EPC8 or has requested, before the expiry of the period under Rule 70(1) or 159(1) EPC, as appropriate, that his application be processed under the PACE programme, the examination fee will be automatically debited on the date of receipt of the waiver or of the PACE request, respectively (see point 5.1(c) AAD).

Where the requirements of Article 14 and Rule 6 EPC for the reduction of fees are met, only 70% of the examination fee is debited under the automatic debiting procedure.9

I.7 Fee for grant and publication/fee for grant and printing¹⁰

The fee for grant and publication/fee for grant and printing, whichever is due, is debited automatically on the date on which the applicant files the translation of the claims (point 5.1(d) AAD). It is in any event debited on the last day of the period under Rule 71(3) EPC.

If in his response to the communication under Rule 71(3) EPC the applicant files amendments or corrections and waives his right to a further communication under Rule 71(3) EPC, the fee for grant and publication/fee for grant and printing must be paid separately by another means of payment (see point 9 AAD).

I.8 Fee for further processing

The decisive payment date for the further processing fee is defined depending on the nature of the omitted act(s) or the point in time at which an automatic debit order is filed in the specific proceedings before the EPO. The different decisive payment dates are established in points 5.2 AAD.

I.9 Fee for re-establishment, limitation or revocation and for appeal or petition for review

References in the AAD and the present notes to "re-establishment" are to be understood as applying not just to re-establishment of rights under Article 122 EPC, but also, as appropriate, to reinstatement of rights under Rule 49.6(d)(i) PCT and restoration of the priority right under Rule 49ter.2(d) PCT.

The automatic debiting procedure only covers the fee for re-establishment itself – it does not cover other fees (e.g. renewal fee and additional fee) the non-payment of which constituted the omitted act. Such fees must therefore be paid separately by another permitted means of payment. In addition, automatic debiting of the re-establishment fee is only possible in cases where a legally binding disposal of the application or patent has not already entered into force.

The fees for appeal or petition for review are only covered by automatic debiting if the appeal or petition for review is filed by the applicant or patent proprietor. The automatic debiting procedure takes account of circumstances under which the appeal fee is reduced, debiting accordingly only the reduced amount.11

I.10 Administrative fee for an additional copy of the documents cited in the European search report

This administrative fee is considered to have been paid on its due date (Article 4(1) RFees), i.e. the date of receipt of the request for an additional copy. If this request is submitted before the fees under Rule 38 EPC were debited, the administrative fee is debited together with those fees.

I.11 Extension and validation fees

Under the automatic debiting procedure, these fees are debited for the states which the applicant has specifically indicated in the relevant section of the request for grant (EPO Form 1001 or 1001E) or of the form for entry into the European phase (EPO Form 1200 or 1200E), unless the applicant instructs the EPO otherwise within the period for paying these fees – which is the same as for paying the designation fee(s) (Rules 39(1)  and 159(1)(d) EPC). However, the following essential feature should be noted. The designation fee is debited automatically for all the contracting states except for any which have been expressly withdrawn. Extension and validation fees, on the other hand, are debited automatically only for those states specifically indicated on EPO Form 1001 (1001E) or 1200 (1200E) or subsequently within the relevant period for payment.

If the fee for an extension or validation state has not been paid within the basic period, the applicant can still validly pay it, together with a 50% surcharge,

(a) within two months of expiry of the basic period ("re-introduced grace period") or

(b) within two months of notification of a communication of loss of rights with regard to non-payment of the designation fee.

The communication under (b) will mention any extension or validation state for which the relevant fee was not paid in due time.

II. For international applications before the EPO acting as receiving Office, ISA or IPEA, attention is drawn to the specific aspects of the automatic debiting procedure for the following:

II.1 International filing fee (Rule 15.2 PCT) and the supplement for each page in excess of 30 pages

The automatic debiting procedure takes account of circumstances in which the international filing fee under Rule 15.2 PCT is reduced (see points 4-5 of the PCT Schedule of Fees), so the reduced amount will be debited where appropriate.

II.2 Administrative fee for the preparation and transmittal of a certified copy of a European or international application (priority document) (Rule 17.1(b) PCT and Rule 54 EPC)

Where the applicant claims the priority of an earlier application, a certified copy of it ("the priority document") must be filed with the receiving Office or the International Bureau within 16 months after the priority date. However, if the earlier application was filed with the EPO, the applicant may request the EPO to prepare and transmit a priority document to the International Bureau. Box No. VI of the request Form PCT/RO/101 contains a check box for that purpose. Except for this case, the administrative fee for a certified copy of a priority document is excluded from the automatic debiting procedure (see point 3.2(a) AAD).

An administrative fee for a certified copy of the priority document is considered to have been paid on its due date, i.e. on the date of receipt of the request.

However, for administrative reasons, if the request for a certified copy is submitted before the fees under Rules 14.1, 15.2 and  16.1 PCT have been debited, the administrative fee is debited together with those fees. In all other cases, it is debited within seven days from the date of receipt of the request for the certified copy.

II.3 Late-payment fee for the fees due under Rules 14.1, 15.2  and 16.1 PCT (Rule 16bis.2 PCT)

The automatic debiting procedure ensures that fees are paid on time, provided the deposit account contains sufficient funds. Therefore, a late-payment fee will be debited only if the automatic debit order is filed after expiry of the period for paying the transmittal, international filing and search fees and provided that an invitation to pay these fees together with a late-payment fee under Rule 16bis.2 PCT has been issued.

II.4 Additional search fee (Rule 40.2(a) PCT, Rule 158(1) EPC)

If the EPO as ISA considers that the international application claims more than one invention, it invites the applicant to pay an additional search fee for each further invention. At the same time, it informs the applicant of the result of the partial international search on the first invention in the claims. If the applicant does not want one or more of the further inventions to be searched, he must notify the EPO to this effect before the period for payment expires, in order to prevent the automatic debit of the additional search fee(s) being carried out.

To enable the EPO to process any payment instructions received up to the last day of the applicable period, the effective debiting of additional search fees will take place 10 days after the decisive payment date. The provisional amount of additional search fees due will be shown in the payment plan until the debit based on the final number of inventions to be searched has taken place. The fees will only be automatically debited if the deposit account contains sufficient funds on the effective debiting date.

The automatic debiting procedure takes account of circumstances in which the additional search fee is reduced, so only the reduced amount is debited.

II.5 Protest fee relating to the payment of an additional search fee (Rule 40.2(e) PCT and Rule 158(3) EPC)

If the applicant informs the EPO that the additional search fee is being paid under protest, the protest fee is debited automatically and payment is considered to have been received on the last day of the time limit under Rule 40.1(iii) PCT, i.e. the one-month period from the invitation to pay the additional search fee.

II.6 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)

This administrative fee is considered to have been paid on the date of receipt of the request for an additional copy. However, for administrative reasons, it is debited within seven days of that date.

II.7 Late-payment fee (Rule 58bis.2 PCT) for both the handling fee (Rule 57 PCT) and the fee for preliminary examination (Rule 58 PCT, Rule 158(2) EPC)

Late-payment fees will only become due if an automatic debit order is received by the EPO as IPEA after an invitation under Rule 58bis.1(a) PCT to pay the handling fee and the international preliminary examination fee together with the late-payment fee has been sent to the applicant. In this case, all three fees are debited automatically, and the late payment of these fees is considered to have been received on the last day of the one-month time limit as from the date of the invitation.

II.8 Fee for preliminary examination (Rule 58 PCT, Rule 158(2) EPC) and handling fee (Rule 57 PCT)

Both fees are automatically debited on the date of receipt of the demand for preliminary examination. The fee amounts payable are those applicable on the date of payment. The automatic debiting procedure takes account of circumstances in which these fees are reduced, so only the reduced amounts are debited. The handling fee is reduced by 90% under the same conditions as for the international filing fee, and the fee for international preliminary examination by 75% under the same conditions as for the international search fee.

II.9 Additional fee for preliminary examination (Rule 68.3(a) PCT, Rule 158(2) EPC)

Where the EPO as IPEA considers that the international application lacks unity of invention, it invites the applicant either to restrict the claims so as to rectify that or, if the inventions have been searched, to pay additional preliminary examination fees.

If the applicant does not want one or more of the further inventions to be examined, he must notify the EPO to this effect before the period for payment expires, in order to prevent the automatic debit of all the additional fees for preliminary examination from being carried out.

The automatic debiting procedure takes account of circumstances in which the additional fee is reduced, so only the reduced amount is debited.

Re point 4 AAD: Automatic debiting of fees

An automatic debit order should preferably be submitted at the same time as the international or European patent application is filed or the procedural steps are taken to initiate (early) processing before the EPO as designated or elected Office (entry into the European phase).

To facilitate this, the Form PCT/RO/101, request for grant (EPO Form 1001E) and the form for entry into the European phase (EPO Form 1200E) include a separate section with a drop-down menu enabling applicants to select this means of payment.

An automatic debit order may be submitted together with a European patent application filed with the competent national authority of a contracting state under Article 75(1)(b) EPC (point 5.6 ADA). This can be done by selecting this payment method in the drop-down menu or by selecting the appropriate check box in EPO Form 1020. In contrast, the form for taking the procedural steps for entry into the European phase (EPO Form 1200E) must be filed direct with the EPO.

In the case of European patent applications initially retained by the central industrial property office of a contracting state under Rule 37(1)(b) EPC, the EPO ensures in co-operation with that office that any automatic debit order is nonetheless carried out. Where applicable, fees are refunded under Rule 37(2) EPC.

In proceedings under the PCT, an automatic debit order may not be submitted together with an international application filed with a receiving Office other than the EPO. In such cases, the order must be submitted direct to the EPO as ISA and/or IPEA.

Divisional applications are not covered by an automatic debit order issued for the parent application; for them, separate automatic debit orders must be filed.

Automatic debit orders may also be filed subsequently, using the means of filing under point 1.2 AAD. With subsequent filing, special attention must be paid to the fee situation at that time (particularly during the phase just after filing the European patent application), in order to avoid incorrect or double debits or having to pay further processing fees, additional fees or surcharges.

If automatic debit orders are filed for more than one application at the same time, the procedural status of each application should be carefully checked, so as to ensure that each subsequently filed order does actually cover the fees which are intended. Surcharges or additional fees can only arise in exceptional cases, namely where the automatic debit order is not received until after expiry of a period for payment within which the fee was not paid.

Re point 5 AAD: Decisive payment date

Extensions of time limits under Rule 134(1) EPC are taken into account when calculating the due date or date of payment. For further comments on individual fee types, see "Re point 3 AAD" above.

Re point 6 AAD: Insufficient funds (shortfall)

Please see point 6 AAD for the order of priority in which fees are automatically debited if there are insufficient funds in the deposit account.

Re point 7 AAD: Replenishing the account in case of insufficient funds

Account holders must replenish their deposit accounts on their own initiative in accordance with point 3.2 ADA.

Re point 8 AAD: Amendment of debit; correction of debit

Please see point 8 AAD for cases where the account holder notes errors.

Re point 9 AAD: Use of other means of payment

Amongst other things, this provision enables account holders wishing to make faster payments in individual cases to pay fees at the time they want using another means of payment allowed under the RFees. Regarding situations necessitating earlier payment of the designation fee(s) and renewal fees or the fee for grant and any claims fees under Rule 71(4) EPC by another means, see notes under points I.3, I.4, I.5 and I.7 above.

If the applicant wants an early start to the processing before the EPO in the European phase ("early entry", Articles 23(2) and 40(2) PCT), and the documents referred to in Article 20 PCT are not yet available to the EPO as designated or elected Office, the fees due on filing the request for early processing must be paid by another means than automatic debiting if the applicant wants the request to take effect immediately. Otherwise the request for early processing will only take effect on the day the EPO receives the documents referred to in Article 20 PCT from the IB under Rule 47.4 PCT.

Where, in the event of a fee increase, the decisive payment date of a fee under the automatic debiting procedure falls on or after the date on which the fee increase takes effect, then provided the fee may be paid before that date (e.g. a renewal fee)it may be so paid in the old amount using another means of payment. The same applies to fees subject to an automatic debit order which is included with a European patent application filed under Article 75(1)(b) EPC with a competent national authority.

Fees paid early by another means are no longer covered by the automatic debiting procedure and so are not debited automatically.

If a payment made early by another means is insufficient to cover the fee concerned, this deficiency is not rectified under the automatic debiting procedure. Instead, the EPO reacts as appropriate to the given situation.

Re point 10 AAD: Revocation of an automatic debit order

It is particularly important to note that in the automatic debiting procedure the party to the proceedings/account holder must take action if he wishes to prevent a fee from being paid.

An automatic debit order must be revoked via Online Fee Payment in Online services (under "Payment Plan"). Account holders must pay special attention to the timing of the revocation of an automatic debit order so as to ensure that the relevant fees are included in or excluded from the automatic debiting procedure. Once an automatic debit order has been revoked, no more fees whose decisive payment date is on or after the date of revocation are debited automatically, and the EPO corrects any such debits already made. The EPO confirms the revocation of an automatic debit order.

There are various sets of circumstances in which an applicant, patent proprietor or representative (agent) can withdraw from the European or PCT proceedings before the EPO. It is therefore necessary to establish whether the automatic debiting procedure is to be continued. Hence the requirement to explicitly revoke the automatic debit order is to be complied with. Otherwise the automatic debiting procedure continues with the party or representative (agent) as hitherto.

Re point 11 AAD: Termination of the automatic debiting procedure

An automatic debit order ceases to be effective in cases provided for in points 11.1-11.2 AAD.

If a withdrawal of a patent application is retracted by the applicant, the automatic debiting procedure will be automatically reactivated unless the automatic debit order was revoked according to point 10.1 AAD.

If proceedings are resumed after a stay under Rule 14 EPC or interruption under Rule 142 EPC and the automatic debiting procedure is to be used again, a new automatic debit order must be filed.