I want to “enter early” into the European phase and use automatic debiting to pay any fees falling due. What do I have to bear in mind?
The following examples illustrate the different situations which can arise, depending on when the request for early processing is filed. They supplement the information given in the notice from the EPO dated 27 September 2017 concerning revision of the Arrangements for deposit accounts and their annexes.
A. The documents referred to in Article 20 PCT are available to the EPO
Example 1: The international application is published in Japanese. The international application and the international search report (ISR) are published on 09.11.2017. On 15.11.2017 the applicant files a request for early processing and indicates automatic debiting as method of payment. On the day the request is filed, the deposit account contains sufficient funds to cover the fees falling due under Rule 159(1) EPC.[1] However, the applicant fails to file the translation of the international application under Rule 159(1)(a) EPC. As a result, the request for early processing will only take effect, and the fees be debited, when the EPO as designated or elected Office receives the translation.
Example 2: The applicant in the above example files the translation on 21.12.2017. As from that date the international phase is terminated in respect of the EPO as designated Office, and the Euro-PCT application is processed in the European phase. As a consequence, the examination and designation fees will be debited automatically in accordance with points 5.1 and 6 of the Arrangements for the automatic debiting procedure (AAD) on 09.05.2018, i.e. six months from the publication date of the ISR (Rules 70(1) and 39(1) EPC). Similarly, the third-year renewal fee will be debited on the last day of the month containing the third anniversary of the date of filing (Rule 51(1) EPC).
B. The documents referred to in Article 20 PCT are not yet available to the EPO
Example 3: A request for early processing under Article 23(2) PCT is filed together with a request for automatic debiting on 14.11.2017. The documents referred to in Article 20 PCT are not yet available to the EPO. The EPO issues a communication (EPO Form 1231) informing the applicant that the fees due must be paid by another means of payment; otherwise, the fees due under Rule 159(1) EPC will be automatically debited on the date the documents referred to in Article 20 PCT are received from the IB, and the request for early processing will then take effect on that date. On 22.11.2017 the applicant pays the filing fee, the additional fee and the search fee by bank transfer. On receipt of the documents referred to in Article 20 PCT, the EPO will verify that the additional fee paid was correct. If it was too low, the request for early processing will take effect when the shortfall is made good. If the additional fee (and all other fees due) are correctly paid, the effective date of early entry is the date on which the payment is received on the EPO bank account. Any further fees under Rule 159(1) EPC falling due at a later date will be debited automatically in accordance with points 5.1 and 6 AAD.
Example 4: The applicant of example 3 does not pay separately the fees due. The documents referred to in Article 20 PCT are transmitted from the IB to the EPO under Rule 47.4 PCT on 11.12.2017. The fees due are debited automatically on that date, which is then the effective date of early entry.
Example 5: A request for early processing under Article 23(2) PCT is filed on 14.11.2017, together with a request for automatic debiting. The documents referred to in Article 20 PCT are not yet available to the EPO. Also on 14.11.2017, the applicant submits a valid debit order for the fees due under Rule 159(1) EPC. The deposit account contains sufficient funds, and the fees are debited on 14.11.2017. On receipt of the documents referred to in Article 20 PCT, the EPO will verify that the additional fee paid was correct. If it was too low, the EPO will debit any shortfall from the applicant’s deposit account, applying the principles of decision T 152/82. Provided the deposit account contains sufficient funds, the request for early processing then takes effect on 14.11.2017. Any further fees under Rule 159(1) EPC falling due at a later date will be debited automatically in accordance with points 5.1 and 6 AAD.
For further details, please see the Arrangements for deposit accounts and their annexes.
[1] For the fees payable on filing of the request for early processing, see the notice from the European Patent Office dated 21 February 2013 concerning the request for early processing (OJ EPO 2013, 156, points II.6 and 7).