Pages 10-19

Decision of the President of the European Patent Office dated 24 April 2023 concerning the revision of the Arrangements for deposit accounts and their annexes in view of the entry into force of the Unitary Patent system

The President of the European Patent Office,

Having regard to Articles 5(2) and 7(2) of the Rules relating to Fees and to Articles 1 and 6 of the Rules relating to Fees for Unitary Patent Protection,

Has decided as follows:

Article 1

The Arrangements for deposit accounts (ADA) are amended as follows:

(1) Point 7 ADA reads as follows:

"Subject to point 16, deposit accounts may be debited only in respect of fees payable to the EPO in connection with European and PCT proceedings and proceedings relating to European patents with unitary effect."

(2) Point 7.1.1 ADA reads as follows:

"Debiting occurs only on the basis of an electronic debit order which has been duly signed1 or authenticated by the account holder, the authorised representative or a person authorised by the account holder using means accepted for the online service in question.2

The debit order may be

• a debit order for individual fees for one or more patent applications, i.e. a single or a batch debit order, or
• an automatic debit order for one or more patent applications, authorising the EPO to debit fees automatically as the proceedings progress.ʺ

(3) Point 7.3 ADA reads as follows:

"Debit orders for payments for multiple applications are processed in ascending order of application number ("PCT" before "EP" before "UP"). For Euro-PCT applications and European patents with unitary effect, the EP application number is the relevant number.

Individual fees are booked in the following order of priority, for as long as sufficient funds are available:

(a) appeal fee (011)

(b) opposition fee (010)

(c) all other fees in ascending order of their fee codes.ʺ

(4) Point 7.5.2 ADA reads as follows:

"If no evidence is provided, or if the evidence is insufficient, the period for paying the fee will be deemed not to have been observed. The party to the proceedings may then make use of any of the legal remedies available under the EPC, the PCT or the Rules relating to Unitary Patent Protection (UPR)."

(5) Point 8.1 ADA reads as follows:

"Debit orders still pending two months after the date of receipt or after the date specified under point 10.2 will not be executed by the EPO, if, on expiry of this period, any of the following conditions is met:

(a) the fee specified in the debit order was paid by another means of payment

(b) the European patent application or the European patent with unitary effect for which the debit order concerned was received is considered definitively closed within the meaning of point 9.2 or 9.3."

(6) The heading of point 9 ADA reads as follows:

"Validation and rejection of payments in Central Fee Payment and repayments"

(7) The following new point 9.3 ADA is added:

"For the above purposes, a European patent with unitary effect is considered to be definitively closed if a lapse or revocation of the European Patent with unitary effect or of the underlying European patent has become final, i.e. if

(a) the European patent with unitary effect has lapsed and no means of redress, except a request for re-establishment of rights, has been filed;

(b) the decision on the means of redress is negative and no action has been filed before the Unified Patent Court; or, if an action has been filed, it is rejected and no appeal has been filed or the action is withdrawn; or, if an appeal has been filed, it is rejected or the appeal is withdrawn;

(c) the European patent with unitary effect has been revoked by the Unified Patent Court and no appeal against that revocation decision has been filed; or, if an appeal has been filed, it is rejected or the appeal is withdrawn;

(d) the underlying European patent has been revoked in proceedings before the EPO and no appeal before the Boards of Appeal has been filed; or, if an appeal has been filed, the decision on that appeal is negative or the appeal is withdrawn."

(8) Existing point 9.3 is renumbered to 9.4.

(9) The following new point 9.5 is added:

"Where fees for European patents with unitary effect that are not due are paid by debit order submitted other than via Central Fee Payment or are included in a batch debit order, the amounts concerned will be repaid to the deposit account indicated in the debit order."

(10) Point 10.3 ADA reads as follows:

"If a debit order is submitted via a non-accepted means of filing or in an invalid format, the date of receipt will not be regarded as the payment date. If this means that a time limit for paying a fee has expired, the party to the proceedings may make use of any of the legal remedies available under the EPC, the PCT or the UPR."

Article 2

Annex A.1 to the ADA ‒ Arrangements for the automatic debiting procedure (AAD) is amended as follows:

(1) Points 1.1 and 1.2 AAD read as follows:

"1.1 A deposit account may be debited on the basis of an automatic debit order for one or more specific European or international patent applications or European patents with unitary effect (hereinafter referred to as Unitary Patents) signed or authenticated 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 An automatic debit order must be filed in an electronically processable format (xml) via one of the following:

• for European patent applications or patents and international applications before the EPO as designated or elected Office: via EPO Online Filing or Online Filing 2.0 using EPO Forms 1001E, 1200E or 1038E, or via Central Fee Payment;
• for international applications before the EPO as receiving Office, International Searching Authority or International Preliminary Examining Authority: via EPO Online Filing, Central Fee Payment or ePCT using the PCT fee calculation and payment feature, or via Online Filing 2.0 using the PCT fee calculator and payment feature with Forms PCT/RO/101 and PCT/IPEA/401;
• for Unitary Patents: via EPO Online Filing or Online Filing 2.0 using EPO Forms 7000 or 7038, or via Central Fee Payment.

Points 7.1.3 and 10.3 ADA apply mutatis mutandis."

(2) Point 2 AAD reads as follows:

"2. Types of proceedings covered

2.1 Automatic debiting is allowed for all types of European and PCT proceedings and proceedings relating to Unitary Patents before the EPO, except those expressly indicated in point 2.4 below.

2.2 An automatic debit order filed during the international phase has no effect in proceedings before the EPO as designated or elected Office. A separate automatic debit order must be filed for international applications entering the European phase.

2.3 A new automatic debit order must be filed for European patents in limitation and revocation proceedings and any subsequent appeal or review proceedings, as well as for proceedings relating to Unitary Patents.

2.4 Automatic debiting is not available for international applications before the EPO as Supplementary International Searching Authority."

(3) Point 3.1 AAD reads as follows:

"Subject to point 3.2 below, the automatic debiting procedure covers all fees in European and PCT proceedings, proceedings for Unitary Patents before the EPO and the following administrative fees:

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

(b) 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

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

(d) administrative fee provided for in Rule 10(4) relating to Unitary Patent Protection (UPR)."

(4) Point 4.5 AAD reads as follows:

"If fees for multiple applications are to be debited automatically from the same deposit account at the same time, the EPO processes these automatic debit orders in ascending order of application number ("PCT" before "EP" before "UP"). For Euro-PCT applications and Unitary Patents, the EP application number is the relevant number.

Individual fees are booked in the following order of priority, for as long as sufficient funds are available:

(a) appeal fee (011)

(b) all other fees in ascending order of their fee codes."

(5) Point 5.1 AAD, first paragraph, reads as follows:

"For the purposes of Article 7(2) RFees, payments under the automatic debiting procedure in European and PCT proceedings and proceedings relating to Unitary Patents before the EPO are considered to have been received:"

(6) Point 5.1(e) AAD reads as follows:

"on their due date for

• the renewal fees (Rule 51(1) EPC, if appropriate, in conjunction with Rule 159(1)(g) EPC; Rule 13(2) and (5) UPR)"

(7) Point 11.1 AAD reads as follows:

"An automatic debit order ceases to be effective on the day on which

(a) the grant of the European patent takes effect, provided that no opposition is filed; if an opposition is filed against the granted European patent, 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 international or European patent application is withdrawn or finally deemed withdrawn, or the European patent application is finally refused;

(c) a stay of the proceedings under Rule 14 EPC takes effect;

(d) an interruption of the proceedings under Rule 142 EPC takes effect;

(e) the limitation (revocation) proceedings in respect of a European patent for which the automatic debit order was filed are finally terminated;

(f) the demand for International Preliminary Examination is withdrawn (Rule 90bis.4 PCT) or considered to be withdrawn;

(g) the Unitary Patent has finally lapsed or has been finally revoked, or the underlying European patent is finally revoked."

Article 3

Annex A.2 to the ADA – Information from the EPO concerning the automatic debiting procedure is amended as follows:

(1) Re point 2 AAD reads as follows:

"Re point 2 AAD: Types of proceedings covered

An automatic debit order may be filed for:

(i) European grant proceedings for one or more specific European patent applications or international applications 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 specific international applications 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 under Article 105a EPC,

(v) proceedings relating to European patents with unitary effect (hereinafter referred to as Unitary Patents) before the EPO.

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) and proceedings relating to Unitary Patents before the EPO under (v) 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. 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. If the request is received on a day on which the EPO is not open for the receipt of documents, the decisive payment date will be the next day it is open for this."

(2) Re point 3 AAD, first paragraph, reads as follows:

"Re point 3 AAD: Fee types covered

The automatic debiting procedure covers the majority of the fees due in European and PCT proceedings and proceedings relating to Unitary Patents 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 European patent application or Unitary Patents (see point 4 AAD)."

(3) Point I.9 of Re point 3 AAD reads as follows:

"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, as well as to re-establishment of rights under Rule 22 relating to Unitary Patent Protection (UPR).

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, and only the reduced amount is debited."

Article 4

This decision enters into force on 1 June 2023. It applies to debit orders filed as of that date.

Done at Munich, 24 April 2023

António CAMPINOS

President