Article 38

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 30 March 2020 concerning the extension of periods for the payment of fees

1. On 15 March 2020 the European Patent Office announced that in view of the disruptions arising from the COVID-19 outbreak, time limits expiring on or after that date were to be extended until 17 April 2020 under Rule 134(2) EPC.1It also set out the conditions under which Rule 134(5) EPC and Rule 82quater.1 PCT can be invoked in cases of non-observance of a time limit caused by a general dislocation in the areas affected by the outbreak (see Notice from the European Patent Office dated 15 March 2020 concerning the disruptions due to the COVID-19 outbreak, OJ EPO 2020, A29).

2. The extension of time limits under these provisions applies to all periods provided for under the EPC and the PCT,2 including those specified by the Office under Rule 132 EPC. According to established principles of procedural law, a time limit involves a period of a fixed length for accomplishing a procedural act.

3. The safeguards outlined above do not however apply to procedural acts which must be performed under specific conditions (e.g. the filing of a divisional application under Article 76 EPC) or by a specific date (e.g. the final date for making written submission in preparation for oral proceedings under Rule 116 EPC).

4. The general safeguards under Rule 134 EPC and Rule 82quater.1 PCT apply without restriction to payments made by bank transfer and credit card (see e.g. Point 14 of the Notice from the European Patent Office dated 22 August 2017 concerning the payment of fees by credit card, OJ 2017 A73). For payments made by debit order, Point 5.5 of the Arrangements for deposit accounts (ADA) and their annexes (see Supplementary publication 4, OJ EPO 2019) contains provisions covering certain contingencies similar to those foreseen in Rule 134 EPC. Rule 134(2) EPC applies mutatis mutandis.

5. The principles outlined in point 2 above thus apply to periods for paying fees, including the due date for paying renewal fees. According to the generally accepted interpretation and the established case law of the Boards of Appeal, Rule 134 EPC applies mutatis mutandis to the due date pursuant to Rule 51 EPC, even though a due date is not a time limit which can be extended (see J 4/91, OJ EPO 1992, 402). Hence, the due date for renewal fees falling due on 31 March 2020 is deferred to 20 April 2020 (Rule 134(1) EPC).

6. By virtue of the decision of the Administrative Council of 12 December 2019 amending Articles 2 and 7 of the Rules relating to Fees (CA/D 12/19 – OJ EPO 2020, A3; hereinafter: decision of 12 December 2019), there will be a general increase in fees with effect from 1 April 2020. When fees are increased, the date of payment is considered to be the relevant date for determining the amount of the fees (see Guidelines for Examination in the EPO, A-X, 5.1.2; see also Article 2 of the decision of the Administrative Council of 5 June 1992, OJ EPO 1992, 344 and Article 5 of the decision of 12 December 2019). It should be noted that, apart from the exceptions mentioned in the Guidelines for Examination in the EPO, A-X, 5.1.1(i) and (ii), fees cannot be validly paid before the due date. When effecting payments, users are therefore advised to pay careful attention to which fee amounts apply. Whether the old or the new fee amount is due depends on the due date of the fee, the last day of the period for making the payment and the date on which the payment is effected.

7. To allow users to fully benefit from the extension of payment periods and the deferral of the due date for paying renewal fees until 17 April 2020, the Office has decided that the new amounts of the fees fixed by the decision of 12 December 2019 will not apply to payments effected on or after 1 April 2020 in respect of fees having a due date on or before 31 March 2020 or for which the period for payment expires on that date.3 In accordance with the principles set out in point 6 above, for all other payments the following main rules apply:

Unless otherwise provided for in the decision of 12 December 2019,4 the new amounts of the fees apply to:

(a) any fee with a due date on or after 1 April 2020 and paid on or after that date

(b) any fee with a due date before 1 April 2020 for which the last day of the period for payment expires on or after 1 April 2020 and which is paid on or after that date

The fee amounts as in force until 31 March 2020 apply to:

(a) any fee with a due date on or after 1 April 2020 which are validly paid before that date (i.e. renewal fees and fee for grant and publishing)

(b) any fee with a due date before 1 April 2020 for which the last day of the period for payment expires on or after 1 April 2020, and which is paid before that date

8. Users of the automatic debiting procedure are informed that automatic debit orders will continue to be executed in accordance with the rules defined in Point 5 Annex A.1 to the ADA - Arrangements for the automatic debiting procedure (AAD). Where a deposit account contains insufficient funds to cover the payments arising, the fees will be deemed to have been paid in due time if payments to replenish the account are entered in the EPO bank account by 20 April 2020 (Rule 134(1) EPC) at the latest. In such circumstances, the EPO will ensure that the correct amount is debited in accordance with the principles set out in Point 7 above.

9. Should the extension of periods due to the COVID-19 outbreak be extended beyond 17 April 2020, the periods referred to in this notice will automatically be extended accordingly.