Pages 24-35

Annex A.1 to the ADA - Arrangements for the automatic debiting procedure (AAD)¹

CONTENTS

1. Automatic debiting procedure and filing of automatic debit orders

2. Types of proceedings covered

3. Fee types covered

4. Automatic debiting of fees

5. Decisive payment date

6. Insufficient funds (shortfall)

7. Replenishing the account after communication of insufficient funds

8. Amendment and correction of debit

9. Use of other means of payment

10. Revocation of an automatic debit order

11. Termination of the automatic debiting procedure

1. Automatic debiting procedure and filing of automatic debit orders

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 feature2 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.

1.3 An automatic debit order may be filed on behalf of the applicant or patent proprietor or their representative (agent). It may not be restricted to specific types of fees or to a specific period of time. The requirements applicable to the signature of the debit order laid down in point 7.1.1 ADA apply mutatis mutandis.

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.3

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. Fee types covered

3.1 Subject to point 3.2 below, the automatic debiting procedure covers all fees in European and PCT proceedings, proceedings before the EPO relating to Unitary Patents and the following administrative fees laid down by the President of the EPO under Article 3 RFees:

(a) 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

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

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

3.2 Automatic debiting is not available for the following fees:

(a) any of the fees, expenses and prices laid down by the President of the EPO under Article 3 RFees, other than the administrative fees expressly referred to in point 3.1 above

(b) all fees not payable by the applicant or patent proprietor, notably the opposition fee

(c) fee for the awarding of costs (Rule 88(3) EPC)

(d) fee for a technical opinion (Article 25 EPC)

(e) fee for a supplementary international search (Rule 45bis.3(a) PCT)

(f) review fee relating to a supplementary international search (Rule 45bis.6(c) PCT)

(g) supplementary search handling fee (Rule 45bis.2 PCT)

(h) late payment fee relating to a supplementary international search (Rule 45bis.4(c) PCT)

(i) additional search fee in the event of correction of an erroneous filing (Rule 40bis PCT in conjunction with Rule 20.5bis PCT)

(j) further search fee for a European search pursuant to Rule 56a(8) EPC and any further processing fee due in the event of late payment of that fee.

4. Automatic debiting of fees

4.1 As from the date of receipt of the automatic debit order at the EPO, and as the proceedings progress, the EPO debits the account holder's deposit account in respect of all fees for which automatic debiting is allowed as they arise in respect of the proceedings specified in the automatic debit order in question, and treats them as paid in time, provided they fall due on or after the date of receipt of the order and the deposit account contains sufficient funds. The fees to be debited over the next 40 days are shown in the Transactions tab in Central Fee Payment.

4.2 Each debit occurs on the basis of the application documents available when it is effected. The EPO takes into consideration, to the account holder's benefit or detriment, all factors known to it at that time which have a legal bearing on the fees, doing so in such a way as to safeguard all rights arising from the application. In particular, the automatic debiting procedure takes into account any reduction of fees under Rule 7a(1) and/or (3) EPC, provided that all requirements for any reduction of fees are met on the decisive payment date (see point 5 below).4

4.3 The debit is effected in euro in the amount applicable for the fee in question on the date to be considered the date on which payment is made (hereinafter "decisive payment date").

4.4 The EPO processes automatic debit orders at the end of the day marking the decisive payment date within the meaning of point 5. Since all other debit orders are processed immediately upon receipt throughout the day (see point 7.2.1 ADA), deposit account holders should ensure that their account contains sufficient funds on the decisive payment date to cover all automatic debit orders due at the end of the day.

4.5 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

5. Decisive payment date

5.1 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 are considered to have been received:

(a) on the last day of the specific period for paying the fee (except in the cases provided for under (b)-(f) and point 5.2 below);

(b) on the last day of the additional period for paying a fee and any additional fee, surcharge or late payment fee (except in the cases provided for under (f) below, second and third subsections) for6

• fees that may be paid late with an additional fee, surcharge or late payment fee;

(c) on the date of receipt of the relevant (procedural) request for

• fees falling due for an international application on the date of the request for early processing under Article 23(2) or 40(2) PCT, provided that the documents under Article 20 PCT are available to the EPO;7 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.
• the examination fee, where the applicant has waived the right to the invitation under Rule 70(2) EPC or requested accelerated examination under the PACE programme8
• the fee for re-establishment of rights, limitation or revocation, and appeal or petition for review
• the fee for restoration of the right of priority (Rule 26bis.3(d) PCT)
• the fee for preliminary examination (Rule 58 PCT, Rule 158(2) EPC) and the handling fee (Rule 57 PCT)
• the administrative fees under point 3.1(a) above;

(d) on the date of receipt of the translation of the claims9 for

• the fee for grant and publishing10 the European patent specification (Rule 71(3) EPC)
• the claims fees (Rule 71(4) EPC)
• the fee for publishing11 a new European patent specification (Rules 82(2) or 95(3) EPC)

(e) on their due date for12

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

(f) on the date of receipt of the automatic debit order for

• the fee for re-establishment, limitation or revocation, and appeal or petition for review if the order is received after the request for re-establishment, appeal or petition has been filed
• fees due under Rules 14.1(c), 15.3  and 16.1(f) PCT if the order is received after the expiry of the period for paying any such fees but before the invitation under Rule 16bis.1(a) PCT to pay them together with a late payment fee (Rule 16bis.2 PCT) has been sent
• fees due under Rules 57.3 and 58.1(b) PCT if the order is received after the expiry of the period for paying any such fees, but before the invitation under Rule 58bis.1(a) PCT to pay these fees together with a late payment fee (Rule 58bis.2 PCT) has been sent
• the fee for restoration of the right of priority (Rule 26bis.3(d) PCT) if the order is received after the request has been filed.

5.2 For the purposes of Article 7(2) RFees, the fee for further processing is considered to have been received:

(a) on the last day of the period for requesting further processing

• where the omitted act was the non-payment of a fee
• where, by expiry of the relevant period, there was more than one omitted act, at least one of which was the non-payment of a fee and one of which was the non-performance of a procedural act, subject to completion of the latter. The fee the non-payment of which constitutes the omitted act is considered to have been received on the same date as the corresponding fee for further processing;

(b) on the date of completion of the omitted act

• where the omitted act was the non-performance of a procedural act other than payment of a fee;

(c) on the date of receipt of the automatic debit order

• where the automatic debit order is received after the date of completion of the omitted act;

(d) on the date of receipt of the automatic debit order or the translations of the claims, as appropriate

• where the omitted acts are the procedural steps under Rule 71(3) or (4) EPC.

5.3 Fees which must be paid in order to complete the omitted act for a request for re-establishment are not covered by the automatic debiting procedure and must be paid by the applicant, patent proprietor or representative on their own responsibility using another means of payment allowed under the RFees.

6. Insufficient funds (shortfall)

If, on the decisive payment date, the account does not contain sufficient funds to cover all the fees to be debited automatically as specified under point 4.5 (shortfall), no other debit order is booked until the account is duly replenished. The account holder is informed accordingly by email or post.

Point 8 ADA applies mutatis mutandis to fees to be debited automatically if they are still pending two months after their decisive payment date.

7. Replenishing the account after communication of insufficient funds

7.1 If the deposit account is sufficiently replenished to enable each fee to be paid, the EPO debits any pending debit orders in accordance with point 7.4.2 ADA and continues to book each fee automatically in the order specified under point 4.5.

7.2 The outstanding payment is considered to have been made on the date on which the deposit account is duly replenished.

8. Amendment and correction of debit

8.1 If after actually debiting a fee the EPO becomes aware of any change to the legal basis on which it did so, and which was brought to the attention of the EPO or competent national authority (see point 12 ADA) before the decisive payment date, if need be the EPO amends the debit retroactively to the original decisive payment date.

8.2 If the EPO finds that an automatic debit order was wrongly executed, it corrects the debit with effect for the original decisive payment date.

9. Use of other means of payment

If in an individual case a fee is paid separately using another permitted means of payment and before its decisive payment date, the EPO will not carry out the automatic debit order in respect of that fee, provided it receives the payment at least two days before the decisive payment date.

10. Revocation of an automatic debit order

10.1 An automatic debit order must be revoked via Central Fee Payment. It may be revoked only for the proceedings as a whole. Debits may not be revoked in respect of fees whose decisive payment date precedes the date on which the revocation is received.

10.2 Revoking an automatic debit order in any other form is invalid and fees will continue to be debited automatically until the automatic debit order is revoked in Central Fee Payment.

10.3 A party or representative withdrawing from proceedings on a particular application13 must explicitly revoke an automatic debit order as provided for in point 10.1 above. Otherwise the EPO will continue to automatically debit fees from the relevant deposit account.

10.4 If a deposit account is closed in accordance with point 2.2 or 2.3 ADA, the EPO revokes all pending automatic debit orders ex officio. The EPO also reserves the right to revoke any automatic debit order ex officio if the procedure is used improperly and in particular if the conditions for operating the account laid down in point 4.1 ADA are not complied with.

11. Termination of the automatic debiting procedure

11.1 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; the European patent application is finally refused;14

(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.

11.2 In cases other than those specified under point 11.1 above, an automatic debit order ceases to have effect from the moment the PCT proceedings before the EPO are terminated.