The fees due to be paid to the European Patent Office (EPO) as provided for in the European Patent Convention (EPC) are regulated by the Rules related to Fees (RF) of EPO.
GL A X 1: Various fees have to be paid for a European patent application, renewing a European patent and obtaining legal remedies. Fees may also need to be paid by third parties, as is the case, for example, for the issue of certified copies of documents or the certified extract from the European Patent Register (see OJ EPO 2019, A15). Fees may be validly paid by any person. The amounts of the fees, the ways in which they are to be paid and the date of payment are determined in the Rules relating to Fees (RF).
The EPC and the Implementing Regulations thereto lay down the time limits for paying fees and the legal consequences of non-compliance with the time limits. The methods of payment, the date on which payment is considered to be made, due dates, particulars concerning the purpose of payments and reimbursement of fees are all dealt with.
According to Article 51 EPC Fees (3), where the Implementing Regulations of the EPC provide that a fee shall be paid, they shall also lay down the time limit for paying. The legal consequences of failure to pay such fee in due time as well as the remedies to be performed in order to reinstate the lost right are also provided by the EPC.
The due date is the first day on which fee may be validly paid.
According to Article 51 EPC Fees (4), the RF shall determine in particular the amounts of the fees and the ways in which they are to be paid.
Article 1 RF stipulates General provisions in accordance with the provisions contained in the RF, the following shall be levied: (a) fees due to be paid to the EPO as provided for in the EPC and in the Implementing Regulations and the fees and expenses which the President of the EPO lays down pursuant to Article 3, paragraph 1; and (b) fees and expenses pursuant to the Patent Cooperation Treaty (PCT), the amounts of which may be fixed by the EPO.
Article 4 RF stipulates the due date for fees, as follows:
(1) Fees in respect of which the due date is not specified in the provisions of the EPC or of the PCT or of the Implementing Regulations thereto shall be due on the date of receipt of the request for the service incurring the fee concerned.
(2) The President of the EPO may decide not to make services within the meaning of paragraph 1 dependent upon the advance payment of the corresponding fee.
According to Article 5 RF, the payment of fees are stipulated as follows:
(1) The fees due to the Office shall be paid in euro by payment or transfer to a bank account held by the Office.
(2) The President of the Office may allow other methods of paying fees than those set out in paragraph 1, in the Arrangements for deposit accounts (ADA)
Article 7 RF regulates the date to be considered as the date on which payment is made:
(1) The date on which any payment shall be considered to have been made to the Office shall be the date on which the amount of the payment or of the transfer is actually entered in a bank account held by the Office.
(3) Where, under the provisions of paragraphs 1 and 2, payment of a fee is not considered to have been made until after the expiry of the period in which it should have been made, it shall be considered that this period has been observed if evidence is provided to the Office that the person who made the payment fulfilled one of the following conditions in a Contracting State within the period within which the payment should have been made:
(i) he effected the payment through a banking establishment;
(ii) he duly gave an order to a banking establishment to transfer the amount of the payment.
Article 8 RF regulates the insufficiency of the amount paid:
A time limit for payment shall in principle be deemed to have been observed only if the full amount of the fee has been paid in due time. If the fee is not paid in full, the amount which has been paid shall be refunded after the period for payment has expired. The Office may, however, in so far as this is possible within the time remaining before the end of the period, give the person making the payment the opportunity to pay the amount lacking. It may also, where this is considered justified, overlook any small amounts lacking without prejudice to the rights of the person making the payment.
Article 12 RF regulating the refund of insignificant amounts
Where too large a sum is paid to cover a fee, the excess shall not be refunded if the amount is insignificant and the party concerned has not expressly requested a refund. The President of the Office shall determine what constitutes an insignificant amount.
GL A X 10: Refund of fees
A fee that has been validly paid is not refunded.
According to GL A X 7.1.1, there are two conditions for a fee payment to be valid:
(i) it must relate to pending proceedings; and
(ii) it must be made in due time, i.e. the date of payment (GL A‑X, 4) must be on or after the due date (GL A‑X, 5.1.1). In addition, for a time limit for payment to be deemed to have been observed, the full amount of the fee must have been paid in due time.
By contrast, any fee which has not been validly paid is to be refunded.
RF stipulates the conditions for refunding the fees, among which:
– Refund of search fee in full: if application is withdrawn, deemed withdrawn or refused at a time when the EPO has not yet begun to draw the search report (RF 9(1)).
– Refund of search fee in full or in part: if search based on earlier search by EPO on priority application, divisional application, or a new European patent application filed by the entitled person acc. Art. 61 (RF 9(2)).
– Refund of examination fee in full: if application is withdrawn, deemed withdrawn or refused before substantive examination has begun (RF 11a)
– Refund of examination fee at rate of 50%: if the European patent application is withdrawn after substantive examination has begun and before expiry of the time limit for replying to the first invitation under Art 94(3) EPC or, if no such invitation has been issued by the Examining Division, before the date of the communication on the intention to grant under Rule 71(3) EPC.
Rule 6 of Implementing Regulations to EPC regulates the reduction of fees granted to the natural or legal persons having their residence or principal place of business within a Contracting State having a language other than English, French or German as an official language, and nationals of that State who are resident abroad. Those persons may file documents which have to be filed within a time limit in an official language of that State.
Article 14 RF are regulating the reduction of fees:
(1) For the persons of Rule 6 above, the filing fee or examination fee shall be reduced in accordance with the RF by 30%.
(2) Where the EPO has drawn up an international preliminary examination report, the examination fee shall be reduced by 75%.
Extension of period for payment are also granted by the EPC:
R.134(1) EPC : Extension for non-working days of EPO, so no delivery to EPO.
If a period expires on a day on which one of the filing offices of the EPO is not open for receipt of documents or on which (…) mail is not delivered there, the period shall extend to the first day thereafter on which all the filing offices are open for receipt of documents and on which mail is delivered.
R. 134(2) EPC: Extension for dislocation in (any form of) mail delivery
(2) If a period expires on a day on which there is a general dislocation in the delivery or transmission of mail in a Contracting State, the period shall extend to the first day following the end of the interval of dislocation for parties which are resident in the State concerned or have appointed representatives with a place of business in that State. Where the State concerned is the State in which the European Patent Office is located, this provision shall apply to all parties and their representatives.
Article 86 and Rule 51 EPC regulates the renewal fees for the European patent application
Renewal fees for the European patent application shall be paid to the European Patent Office in accordance with the Implementing Regulations. These fees shall be due in respect of the third year and each subsequent year, calculated from the date of filing of the application. If a renewal fee is not paid in due time, the application shall be deemed to be withdrawn (Art. 86(1) EPC).
The obligation to pay renewal fees shall terminate with the payment of the renewal fee due in respect of the year in which the mention of the grant of the European patent is published in the European Patent Bulletin (Art. 86(2) EPC).
A renewal fee for the European patent application in respect of the coming year shall be due on the last day of the month containing the anniversary of the date of filing of the European patent application. The renewal fee in respect of the third year may not be validly paid more than six months before it falls due. All other renewal fees may not be validly paid more than three months before they fall due (Rule 51(1) EPC)).
If a renewal fee is not paid on the due date under Rule 51(1), the fee may still be paid within six months of the said date, provided that an additional fee is also paid within that period (Rule 51(2) EPC)).
Renewal fees already due in respect of an earlier application at the date on which a divisional application is filed shall also be paid for the divisional application and shall be due on its filing. These fees and any renewal fee due within four months of filing the divisional application may be paid within that period without an additional fee (Rule 51(3) EPC).
After granting of the European patent, the renewal fees must be paid to national authorities of the contracting states (Art. 141(1)).
GL A X 2: Methods of payment
Fees may be paid in the following ways:
(i) by payment or transfer to a bank account held by the European Patent Office (EPO);
(iii) by credit card (see A‑X, 4.4);
(iv) by requesting re-allocation of a refund (see A‑X, 10.4).
Regarding ii): debiting a deposit account opened in the records of the EPO in Munich
GL A X 4.2.1 General remarks on the Arrangements for deposit accounts (ADA)
The Arrangements for deposit accounts (hereinafter abbreviated to “ADA”) and their annexes are updated on a regular basis, either in their entirety or in part, whenever a change or clarification of the scope of practice is required. A consolidated version of the ADA was last published as Supplementary publication 4, OJ EPO 2019. A distinction must be drawn, in connection with deposit accounts, between:
(i) payments to replenish deposit accounts (Point 3 ADA)
(ii) payments of fees in connection with proceedings under the EPC or the PCT (Point 1 ADA)
The President of the EPO issued on 19 July 2022 a Decision concerning the revision of the ADA and their annexes.
Point 3.2 (l) AAD of ADA entered into force on 1 November 2022.
The remaining revised texts entered into force on 10 September 2022.
In the Notice from the EPO dated 19 July 2022, the President of EPO presented the revision of the ADA and their annexes.
Since 2019, when the Arrangements for deposit accounts (ADA) and their annexes were last published in full, several of their provisions have been amended by separate decisions of the
President of the European Patent Office. It is now necessary to make further amendments to reflect the full deployment of Central Fee Payment (CFP) and the decommissioning of
Online Fee Payment (OFP) on 10 September 2022.
The first section of this notice deals with the amendments to the ADA that will enter into force on 10 September 2022, the main changes being new provisions to implement a process of direct clearing of debit orders and introduce a safety net for replenishments of deposit accounts.
The second section focuses on the revision of the provisions governing the automatic debiting procedure. In particular, 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 full deployment of f Central Fee Payment (CFP) and the changes this will entail for managing automatic debit orders.
The third section gives an overview of the main provisions amended by the various decisions of the President since 2019. 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 in full.
1. Direct clearing of debit orders
Until now, debit orders filed throughout a given day were all processed by the EPO at a single point in time during the night, together with any automatic debit orders due for that specific day. Responding to a long-standing wish from users, the EPO has now implemented a direct clearing process for debit orders.
New point 7.2.1 ADA therefore states that, as a rule, the EPO will process debit orders immediately upon their receipt, provided that there are sufficient funds in the deposit account to cover all fees included in them. Automatic debit orders, on the other hand, will continue to be processed in one batch at the end of the day marking the decisive payment date. This ensures that users can continue to submit automatic debit orders which are effective as of the date of their submission and revoke them with effect from the date of the notice of revocation.
2. Clarification of the order of processing debit orders
The implementation of direct clearing of debit orders has been taken as an opportunity to clarify the order of priority in which debit orders are processed (see points 7.3 and 7.4 ADA). However, the existing prioritisation rules have not changed as a result.
Where debit orders are filed for multiple applications and fees (either by including them in the cart in CFP or by uploading a batch file), the payments are processed in ascending order of application number (“PCT” before “EP”). For Euro-PCT applications, the EP number is the relevant number. When booking the individual fees, the appeal fee and the opposition fee are given priority in view of their procedural importance and the lack of any means of legal redress if the time limit for paying them is missed. All other fees are booked in ascending order of their fee codes.
This order of processing is applied for as long as there are sufficient funds in the deposit account. If the account does not contain sufficient funds to cover all the fees indicated for an application (shortfall), no other debit order will be booked. All pending debit orders are accumulated and not cleared until the account has been adequately replenished. In this case, debit orders are first prioritized according to their decisive payment date, their date of receipt or their deferred payment date. Secondly, automatic debit orders are booked before any other debit orders. Subject to this order, the orders are booked in ascending order of application number (“PCT” before “EP”) and with a prioritization of the fees as indicated above. Outstanding payments continue to be considered to have been made on the date on which the deposit account is adequately replenished.
3. New safety-net provision for the replenishment of deposit accounts
A new safety-net provision has been introduced in point 7.5 for cases where arrangements were made to adequately replenish the deposit account before expiry of a time limit for making a payment but the replenishment did not reach the EPO bank account in time.
The new safety-net provision takes into account the developments made in the banking sector for transferring money, in particular the times taken to process credit transfers within the Single European Payment Area (SEPA).
In view of these developments, a new point 7.5.1 has been inserted which stipulates that, if there is a shortfall, a period for paying a fee will still be considered to have been observed if it can be shown that an adequate replenishment of the deposit account was ordered either in the form of a SEPA Credit Transfer one day before expiry of the payment period or in the form of a SEPA Instant Credit Transfer on the last day of the period.
4. Changes resulting from the full deployment of CFP
The notice from the European Patent Office dated 2 March 2022 concerning the extension of the functionalities of Central Fee Payment (OJ EPO 2022, A25)7 informed users about the improvements made for managing deposit accounts in CFP. These included easy access to the form for adding another deposit account, changing the account details or closing a deposit account (points 2.1 and 2.2 ADA), the option to create individual account statements and monitor the account balance (point 6.2 ADA) and access to a history of fee payments rejected by the validation function in CFP (point 9 ADA).
As OFP will be decommissioned with effect from 10 September 2022, all references to it have been deleted from the ADA and, wherever applicable, replaced by CFP.
5. Batch automatic debit orders
Point 7.1.1 ADA has been revised to reflect the new option available in CFP to submit automatic debit orders as a batch file.
ii. Annexes A.1 and A.2 to the ADA concerning the automatic debiting procedure
The option of submitting automatic debit orders for multiple applications has now been reflected in Annex A.1 to the ADA (point 1.1 AAD) and Annex A.2 to the ADA (Re point 2 AAD).
CFP has been added as a means of submitting and revoking automatic debit orders in points 1.2 and 10.1 AAD and point I. of Annex A.2. Meanwhile, all references to OFP, CMS and PCTSAFE have been removed.
A new point (l) has been added under point 3.2 to exclude from the automatic debiting procedure further search fees for a European search pursuant to Rule 56a(8) EPC9 and any further processing fee payable if the such further search fee is paid late.
The improvements made to the CFP functions for managing deposit accounts (see above), including the possibility of viewing active automatic debit orders, are likewise reflected in Annex A.1 (point 4.1 AAD).
Unlike the processing of normal debit orders, the processing of automatic debit orders has in essence remained unchanged. Automatic debit orders will continue to be processed at the end of the day marking the decisive payment date and this has now been specified in a new point 4.4 AAD. At the same time, the existing order of priority for the processing of automatic debit orders in cases where multiple fees for multiple applications are due to be debited automatically has been set out in a new point 4.5 AAD. Shortfalls in funds and their consequences for the order of priority in which automatic debit orders are processed are governed in amended points 6 and 7 AAD.
Romanian patent attorney Cristina Georgescu