The EPO announced in January 2018 a number of changes to the rules and fee structure that come into force on 1 April 2018. The key changes are (a) discontinuation of the reduced search fee for most European regional phase applications, (b) expansion of the window in which the third year renewal fee can be paid, and (c) changes to fee structure, including an increased appeal fee for most corporate appellants. These changes are discussed in further detail below.
Discontinuation of the reduced search fee for most European regional phase applications
Prior to 1 April 2018, the supplementary search fee that falls due upon entry into the European regional phase is reduced by EUR 190 if the international search report was drawn up by the US, Japanese, Korean, Chinese, Russian or Australian patent office. For applications that enter the European regional phase from 1 April 2018, the 190 EUR reduction in the supplementary search fee will not be available1.
Accordingly, applicants who selected the US, Japanese, Korean, Chinese, Russian or Australian patent office as international searching authority may wish to consider entering the European regional phase before 1 April 2018, so that the 190 EUR reduction in the search fee is still available.
Expansion of the window in which the third year renewal fee can be paid
Rule 51(1) EPC at present states that renewal fees cannot be paid more than three months before they fall due. Under the amended2 wording of Rule 51(1) EPC, it will be possible to pay the third year renewal fee up to six months before it falls due. The third year renewal fee falls due 24 months after the filing date of the application.
The EPO has made this change to Rule 51(1) EPC in order to make it possible for more applicants to pay the third year renewal fee upon European regional phase entry. Applicants can, of course, continue to pay the third year renewal fee closer to the due date if desired. Rule 51(1) EPC remains unchanged as regards all renewal fees other than the third year fee, which cannot be paid validly more than three months before they fall due.
The amended version of Rule 51(1) EPC comes into force on 1 April 2018, and applies to renewal fees paid on or after that date.
Changes to fee structure, including an increased appeal fee for most corporate appellants
Further amendments3 to the rules relating to fees come into force on 1 April 2018.
The amendments that are perhaps of greatest significance to users of the EPO are those relating to the appeal fee. At present, the appeal fee is fixed at 1,880 EUR for all appellants. From 1 April 2018, there will be two levels of appeal fee. Specifically, the appeal fee will remain at 1,880 EUR for appellants that are either (a) a natural person, or (b) a small- or medium-sized enterprise, a non-profit organisation, a university or a public research organisation (an EPO notice4 provides further details on these categories). For all other entities, the appeal fee will increase to 2,255 EUR.
To benefit from the reduced appeal fee, it will be necessary to file a statement from the appellant declaring that it falls within either category (a) or (b) set out above. It is the appellant's status when filing the appeal that is relevant. Subsequent changes to the status of the appellant do not have retroactive effect on the appeal fee due. The appellant carries the burden of proving that it fell within either category (a) or (b) set out above at the time of filing the appeal, and the EPO can request that supporting evidence be filed if necessary. If the reduced fee is paid and it is later determined that appellant did not at the timing of filing the appeal fall within either category (a) or (b) set out above, then the appeal will be deemed inadmissible and this defect cannot be remedied.
Given that the saving in the appeal fee is relatively modest (approximately 17%), that it will sometimes be non-trivial to determine if the appellant is entitled to pay the reduced appeal fee and that an incorrect payment of a reduced fee cannot later be remedied, it may often in practice be most cost-effective and safest simply to pay the full appeal fee by default.
The other amendments to the rules relates to fees are summarised below. These changes also come into force on 1 April 2018.
- The fee for an international search on an international application has been reduced by 100 EUR, from 1,875 EUR to 1,775 EUR.
- The fee for preliminary examination of an international application has been reduced by 100 EUR, from 1,930 EUR to 1,830 EUR.
- The reduction in the examination fee due on a European regional phase application for which the EPO drew up an international preliminary examination report has been increased from 50% to 75%.
- Reductions in the filing and grant fees for European patent application and the transmittal fee for international patent applications will be available when certain requirements relating to the format of files submitted by online filing are satisfied.
First published 9 February 2018
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