Article 82

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 25 September 2024 concerning the repayment of renewal fees not due and additional fees not due for European patent applications

The EPO will extend the practice applied for European patents with unitary effect of repaying fees that are paid without being due. As of 7 October 2024 the same practice will apply to renewal fees for European patent applications and additional fees under Rule 51(2) EPC. This will further reduce the number of refunds that need to be made and claimed, and improve the efficiency of the EPO's fee payment system.

1. In June 2023 the EPO successfully implemented a new fee architecture for fees paid for European patents with unitary effect.1 This system allows for the early detection of fees that are paid without being due and the swift repayment of such fees to the payment source. The EPO will now extend this architecture to renewal fees not due for European patent applications whenever such fees are paid without using Central Fee Payment (CFP) by bank transfer or from an EPO deposit account. This will benefit both users and the EPO by reducing the number of renewal-fee refunds that need to be made and claimed.

2. The present notice gives an overview of how the new fee architecture impacts the processing of renewal fee payments for European patent applications. It also outlines the changes made in the Arrangements for deposit accounts (ADA) to reflect this development.

I. Display of renewal fees and additional fees under Rule 51(2) EPC under FEES DUE in Central Fee Payment

3. To avoid having to make and claim refunds of renewal fees and additional fees under Rule 51(2) EPC that were not due at the time of payment, CFP displays in the fee group FEES DUE only those renewal and additional fees that are due, based on the status of the application concerned, at the time of accessing CFP. Only those renewal and additional fees can be selected for payment. The separate fee group RENEWAL FEES has been removed.

4. The validation functionality in CFP2 for renewal and additional fees included in batches has been refined to also detect and reject payments of such fees when the amount is wrong. This means that the validation functionality will automatically reject at the check-out stage any renewal and additional fee payments that are not due where such payments are included in a batch. For the purposes of the validation functionality, renewal and additional fees are considered not due if:

(i) they are paid for definitively closed European patent applications or granted patents,

(ii) they are paid before the earliest valid payment date,

(iii) they have already been paid (i.e. double payments), or

(iv) their amount is different from the amount due at the time of payment.

5. This is reflected in a new point 9.2 of the ADA. Therefore, to ensure that you pay only those renewal and additional fees that are due and to pay the correct amount of such fees, you are strongly encouraged to use CFP to make your payments. In exceptional circumstances, such as requests for re-establishment of rights under Article 122 EPC in respect of the time limit for payment of renewal fees, where a renewal fee and additional fee have to be paid to complete the omitted act, these fees may not be displayed as due fees in CFP. Should you be of the opinion that a renewal fee or an additional fee under Rule 51(2) EPC is due although no such fee is displayed in the FEES DUE section, please contact the EPO via the contact form3 selecting Central fee payment in the Topic dropdown menu.

II. Repayment of renewal fees not due and additional fees not due for European patent applications

6. If you choose not to use CFP to pay your renewal and additional fees ‒ i.e. where you instead pay them by bank transfer without using CFP or by submitting a debit order via EPO Online Filing or Online Filing 2.0, you will still be able to pay renewal fees and additional fees under Rule 51(2) EPC that are not due. However, as is the case for fees for European patents with unitary effect, as of 7 October 2024, payments of these fees that are not due will be automatically flagged by the EPO's fee processing systems and repaid directly to the payment source.4 In the case of overpayments, only the overpaid amount will be repaid. Point 9.6 ADA (formerly point 9.5) has been amended to reflect this repayment process for debit orders in respect of renewal fees for European patent applications and additional fees under Rule 51(2) EPC.

7. Please note that this repayment process only applies to fees for European patents with unitary effect, renewal fees for European patent applications and additional fees under Rule 51(2) EPC. All other fees that are paid without being due will continue to be refunded to the applicant or their representative authorised to receive payments in accordance with the EPO notice dated 15 February 2024 governing the fee refund procedure5, irrespective of whether the fees concerned were paid by the applicant or a third party6. Exceptionally, where renewal fees or additional fees are considered due at the time of their payment, but owing to a retroactive procedural change these fees are in fact no longer due, such fees are also refunded to the applicant or their representative in accordance with the applicable refund procedure.

8. When repaying fees to the payment source, by transferring the funds to the deposit account from which the fee was paid or by transferring the funds to the bank account used for the payment, the EPO will indicate the number of the European patent application in question in the comments field.

III. Additional changes in the ADA

9. In point 12 of the notice from the European Patent Office dated 24 April 2023 concerning the revision of the Arrangements for deposit accounts (ADA) and their annexes in view of the entry into force of the Unitary Patent system (Supplementary publication 3, OJ EPO 2023, 20), the EPO indicated that the validation functionality in CFP would be extended so that payments of fees not due for European patents with unitary effect included in batch debit orders uploaded via CFP would also be rejected at source. This functionality is now available in CFP and point 9.1 ADA has been amended accordingly by addition of a new point (e). The circumstances under which a fee for European patents with unitary effect is considered as being not due are listed in point 4 above and in point 9.2 ADA.

10. In addition, for editorial reasons, previous points 9.1 (a) and (b) ADA have been combined to "the payment of renewal fees that are not due". A new point 9.2 has been added to explain the scenarios under which renewal fees, additional fees under Rule 51(2) EPC or fees paid for a European patent with unitary effect are considered as not due for the purposes of the validation in CFP under point 9.1 and the repayment under point 9.6. Previous points 9.2 to 9.5 have been renumbered accordingly.

11. Lastly, point 7.1.2 ADA has been updated to reflect the possibility of validly filing debit orders in an electronically processable format using EPO Forms 2300E and 3002E in Online Filing 2.0.

12. The present notice enters into force on 7 October 2024 and the repayment procedure will apply to payments of renewal fees for European patent applications and additional fees under Rule 51(2) EPC made as of that date.