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Notice from the European Patent Office dated 15 February 2024 concerning the revision of the Arrangements for deposit accounts and their annexes

Since 2022, when the Arrangements for deposit accounts (ADA) and their annexes were last published in full,1 several of their provisions have been amended by separate decisions of the President of the European Patent Office. Further amendments are now needed to reflect numerous changes in the fee structure as of 1 April 2024.

The first section of this notice deals with the amendments to the ADA that will enter into force on 1 April 2024. The main changes relate to the Contingency Upload Service and the revised process for claiming fee refunds in Central Fee Payment.

The second section focuses on the revision of provisions governing the automatic debiting procedure. The texts of Annexes A.1 (Arrangements for the automatic debiting procedure (AAD)) and A.2 (Information from the EPO concerning the automatic debiting procedure (AAD)) to the ADA have been revised to reflect the abolition of several administrative fees and the introduction of a fee reduction for micro-entities as of 1 April 2024.2

The third section provides an overview of the main provisions amended by various decisions of the President since September 2022. These amended provisions are now included in a new, consolidated version of the ADA and their annexes.

Given the varied nature of the changes, users are advised to read the revised and consolidated texts carefully and in full.

I. Arrangements for deposit accounts (ADA)

1. Contingency Upload Service

On 1 July 2023, the EPO Contingency Upload Service was introduced for emergency use in the unlikely event that EPO online filing services are not available or in urgent cases. It allows users to upload PDF documents securely without creating or using an EPO account, but does not provide the added benefits and validations offered by other EPO online filing services.3

Under point 7.1.2 ADA, debit orders must be filed in an electronically processable format. As a result, the EPO Contingency Upload Service cannot be used to file debit orders and is excluded from the valid means of filing debit orders under revised point 7.1.3 ADA. Nor can it be used to submit refund instructions (see revised point 15.3 ADA).

2. Year-end balance of deposit accounts

In the past the EPO sent deposit account holders year-end balance statements by post. To support the digitalisation of fee payment and reduce the associated paper consumption during the patent grant procedure, the EPO will now make year-end balance statements available electronically in Central Fee Payment, where they can be downloaded via the Documents tab in the Deposit account management section. Point 6.2 ADA has been amended accordingly.

3. Revised procedure for claiming refunds online

To fully digitalise the claiming of refunds, the EPO will offer an improved procedure via Central Fee Payment as of 2 April 2024. Revised point 15.3 ADA specifies that, except where they have submitted clear refund instructions in an electronically processable format and via an accepted means of filing, users of MyEPO Portfolio can directly claim refunds in Central Fee Payment, while other users can claim them there after receiving a refund code. A separate notice on this revised fee refund procedure has been published in this Official Journal.4

4. Extension of the validation functionality in Central Fee Payment

To date, Central Fee Payment has only rejected at source payments of additional fees under Rule 51(2) EPC for definitively closed European patent applications or granted patents. To further reduce the number of refunds, the validation functionality has now been extended to cover the undue payment of any additional fees under Rule 51(2) EPC.

So, in cases where only a renewal fee is due, any payment of an additional fee under Rule 51(2) EPC included in an individual or batch debit order will be rejected automatically at the check-out stage of the payment process. The rejected payment will remain visible in the overview of rejected payments under the Rejected payments tab. The additional fees under Rule 51(2) EPC have been added to the list of validated fees under point 9.1 ADA.

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

1. Abolition of various administrative fees and reductions for MyEPO Portfolio users

Pursuant to the decision of the President dated 25 January 2024, several administrative fees will be abolished as of 1 April 2024,5 namely the:

• fee for conservation of evidence (see Rule 123(3) EPC)
• fee for publishing a new specification (see Rules 82(2) and 95(3) EPC)
• surcharge for late performance of the acts required to maintain a European patent in amended form (see Rules 82(3) and 95(3) EPC)
• administrative fee for the communication of information contained in the files (see Rule 146 EPC)
• fee for additional copies of documents cited in the European search report

In addition, the conversion fee under Article 135(3) EPC will be set to zero.

Similarly, the fee for:

• the registration of a transfer
• the registration or cancellation of a licence or other right
• a certified copy (application, priority document, patent certificate, other documents)

will also be set to zero if the related request is made via MyEPO Portfolio.

Due to their abolition, the fee for conservation of evidence (see Rule 123(3) EPC) and the fee for additional copies of documents cited in the European search report have been deleted from the list of fees mentioned in point 3.1 and 3.2 AAD. The sections relating to these fees have also been removed from the "Information from the EPO concerning the automatic debiting procedure". As it will be set to zero, the conversion fee under Article 135(3) EPC has also been removed from point 3.2 AAD.

Of the fees listed as set to zero if the initial requests are made via MyEPO Portfolio, the administrative fee for a certified copy of a European patent application or an international application is the only one covered by the automatic debiting procedure (point 3.1 AAD). Re point 3, II.2 AAD has been amended to reflect that the automatic debiting procedure takes account of this reduction.

2. Fee reductions for micro-entities (Rule 7a(3) EPC)

As of 1 April 2024 the EPO will introduce additional fee reductions for micro-entities, irrespective of their nationality and place of business/residence. More information, particularly on the requirements to be met, is available in the notice from the European Patent Office dated 25 January 2024 concerning fee-related support measures for small entities.6

Under point 4.2 AAD, the automatic debiting procedure takes into consideration, to the account holder's benefit or detriment, all factors known to the EPO on the date the fees are debited and that have a legal bearing on those fees. This includes fee reductions for which the applicant is potentially eligible at the time of payment. Point 4.2 AAD has therefore been revised to indicate that the automatic debiting procedure takes any fee reduction into account under Rule 7a EPC, provided that applicants meet all of the eligibility criteria for a reduction on the decisive payment date.

More specifically, this means that applicants need to meet the cap on eligible applications and must have filed a declaration stating that they are a micro-entity. The declaration can be made either by selecting the applicable checkbox in the online filing forms or by submitting correctly completed EPO Form 1011. Provided that these requirements are met, the reduced fee amounts are debited automatically.

A similar statement to the one made in point 4.2 AAD has also been included in the revised ADA Annex A.2 under "Re point 4 AAD", which applies to the filing, search, examination, designation and grant fee and renewal fees. This general statement covers the more specific situation of reductions in filing and examination fees under former Rule 6 EPC. The references to this reduction have therefore been deleted under "Re point 3 AAD, I.1 and I.6".

III. Consolidated version featuring all changes since September 2022

The ADA and their annexes have been consolidated to include all provisions separately amended by the following decisions of the President in 2023.

The decision of the President dated 24 April 2023 (Supplementary publication 3, OJ EPO 2023, 10)7 was adopted in view of the entry into force of the Unitary Patent system and revised the ADA and their annexes to reflect the fact that fees arising in the course of Unitary Patent proceedings can be paid using deposit accounts held with the EPO.

The decision of the President dated 13 June 2023 (OJ EPO 2023, A58), amended the ADA and their Annex A.1 to reflect the possibility of submitting debit orders via MyEPO Portfolio.

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

IV. Entry into force

The revised and consolidated texts enter into force on 1 April 2024 and supersede those dated 10 September 2022 (Supplementary publication 3, OJ EPO 2022) as amended by the decisions of the President of the European Patent Office dated 24 April 2023 (Supplementary publication 3, OJ EPO 2023, 10) and 13 June 2023 (OJ EPO 2023, A58).