28 February 2008
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1. Overview
As previously reported, the EPO Administrative Council approved substantial fee increases to come into effect on 1 April 2008 for payments made on or after that date. Accordingly, where there are possibilities to pay the fees prior to that date, it would be appropriate to consider paying the fees during March 2008. If you are considering bringing forward fee payments, please do contact your usual correspondent at D Young & Co.
The following is a link to the EPO website reporting the Decision of the Administrative Council of 14 December 2007 amending the Rules relating to Fees (CA/D 16/07) to come into effect on 1 April 2008:
http://www.epo.org/patents/law/legal-texts/decisions/archive/14122007.html
The EPO Administrative Council also approved further fee changes to come into effect for European patent applications filed on or after 1 April 2009 as well as for international applications entering the regional phase on or after that date.
The following is a link to the EPO website reporting the Decision of the Administrative Council of 14 December 2007 amending the Rules relating to Fees (CA/D 15/07) to come into effect for European patent applications filed on or after 1 April 2009 and international applications entering the regional phase on or after that date:
http://www.epo.org/patents/law/legal-texts/decisions/archive/14122007a.html
2. Fee Changes for Payments effected on or after 1 April 2008
Whereas the increases are of the order of 5-10% (subject to rounding) for most fees, the increases for claims fees and renewal fees are substantially higher.
2.1 Claims Fees
For claims fees paid up until 31 March 2008, a fee of €45 is payable per claim for each claim in addition to the 10th.
For claims fees paid on or after 1 April 2008, a fee of €200 is payable for each claim in addition to the 15th. In other words, from 1 April 2008, the first 15 claims will be included in the application fee, and €200 will be payable for each claim over and about the first 15 claims. In accordance with normal EPO practice, the claims fees are payable on the total number of claims and are not dependent upon the claim dependencies or the numbers of independent claims.
The increased claims fees will also be payable when responding to a Rule 71(3) EPC2 communication if the total number of claims has increased over the number of claims at filing and if the total number of claims is then greater than 15 claims. In other words, if more than 15 claims are allowed B-A claims fees will be payable (where A is the number of claims at filing and B is the number of claims at the Rule 71(3) EPC2 stage).
The increased claims fees are clearly intended to encourage applicants to reduce the numbers of claims per application.
In view of the large increases, where claims fees are payable and due after 1 April 2008 but payment could be made in March 2008, it would be worth considering bringing forward payment of the claims fees.
For example, whereas one might previously have waited for a Rule 161/162 EPC2 communication to revise claims number on entry to the EP regional phase, it is advisable to consider claim revision and filing any claims fees due during March 2008, even if a Rule 161/162 EPC2 communication has not yet been received, in order to avoid the fees increases.
Also, more generally, it may be worth bringing forward the filing or European regional phase entry of an application to avoid the claims fees increases.
Table 2 at the end of this paper summarises costs for example sets of claims showing not only the increases for claims fees paid after 1 April 2008, but also the further increases that will be due for applications filed or entering the EP regional phase after 1 April 2009.
2.2 Renewal Fees
The EPO renewal fees, with the exception of the third year renewal fee (that is the fee payable by the second anniversary of filing), are also being increased, and some of the increases are substantial as can be seen from Table 1 below.
As it is possible to pay renewal fees up to one year in advance of the due date, and as the increases apply when the renewal fee is paid, it is worth considering whether to pay renewal fees in advance to avoid the increases.
For example, it is possible to pay during March 2008 any renewal fees due up to and including 31 March 2009. In some cases this might provide considerable savings. Applicants are advised to consult with their normal renewals service.
It is to be noted that the fee increases apply to the renewal fees payable on pending European applications only. They do not apply to national renewal fees paid in respect of granted European patents.
TABLE 1 |
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Renewal fee for year |
Payments before |
Payments on/after |
Increase compared to 1 April 2008 |
3rd |
€400 |
€400 |
€0 |
4th |
€425 |
€500 |
€75 |
5th |
€450 |
€700 |
€250 |
6th |
€745 |
€900 |
€155 |
7th |
€770 |
€1000 |
€230 |
8th |
€800 |
€1100 |
€300 |
9th |
€1010 |
€1200 |
€190 |
10th and later years |
€1065 |
€1350 |
€285 |
3. Fee Changes for EP applications filed and regional phase entries on or after 1 April 2009
3.1 Claims Fees
European patent applications filed on or after 1 April 2009 and international applications entering the regional phase on or after that date will be liable to a further increase in claims fees, whereby a fee of €500 for each claim in addition to the 50th will be payable. In other words, for European patent applications filed on or after 1 April 2009 and international applications entering the regional phase on or after that date, the first 15 claims will be included in the application fee, €200 will be payable for each of claims 16 to 50 and €500 will be payable for claim 51 and each claim thereafter.
The increased claims fee will also be payable when responding to a Rule 71(3) communication if the total number of claims has increased over the number of claims at filing and if the total number of claims is then greater than 50 claims. However, this further increase will only be applicable to European patent applications filed on or after 1 April 2009 and international applications entering the regional phase on or after that date. Accordingly, for European applications filed or entering the EP regional phase prior to 1 April 2009, this further increase will not apply.
In accordance with normal EPO practice, the claims fees are payable on the total number of claims and are not dependent upon the claim dependencies or the numbers of independent claims.
If it is intended to file a European patent application or to enter the EP regional phase from an international application with a claim set in excess of 50 claims, consideration should be given to completing this prior to 1 April 2009 to avoid these further fee increases.
Table 2 below illustrates examples of the effect of the fee changes (see below).
TABLE 2 |
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Number of Claims |
Old cost |
New cost on/after |
Difference compared to before |
New cost |
Difference compared |
10 |
€0 |
€0 |
€0 |
€0 |
€0 |
11 |
€45 |
€0 |
-€45 |
€0 |
-€45 |
12 |
€90 |
€0 |
-€90 |
€0 |
-€90 |
13 |
€135 |
€0 |
-€135 |
€0 |
-€135 |
14 |
€180 |
€0 |
-€180 |
€0 |
-€180 |
15 |
€225 |
€0 |
-€225 |
€0 |
-€225 |
16 |
€270 |
€200 |
-€70 |
€200 |
-€70 |
17 |
€315 |
€400 |
€85 |
€400 |
€85 |
18 |
€360 |
€600 |
€240 |
€600 |
€240 |
19 |
€405 |
€800 |
€395 |
€800 |
€395 |
20 |
€450 |
€1,000 |
€550 |
€1,000 |
€550 |
21 |
€495 |
€1,200 |
€705 |
€1,200 |
€705 |
22 |
€540 |
€1,400 |
€860 |
€1,400 |
€860 |
23 |
€585 |
€1,600 |
€1,015 |
€1,600 |
€1,015 |
24 |
€630 |
€1,800 |
€1,170 |
€1,800 |
€1,170 |
25 |
€675 |
€2,000 |
€1,325 |
€2,000 |
€1,325 |
26 |
€720 |
€2,200 |
€1,480 |
€2,200 |
€1,480 |
27 |
€765 |
€2,400 |
€1,635 |
€2,400 |
€1,635 |
28 |
€810 |
€2,600 |
€1,790 |
€2,600 |
€1,790 |
29 |
€855 |
€2,800 |
€1,945 |
€2,800 |
€1,945 |
30 |
€900 |
€3,000 |
€2,100 |
€3,000 |
€2,100 |
35 |
€1,125 |
€4,000 |
€2,875 |
€4,000 |
€2,875 |
40 |
€1,350 |
€5,000 |
€3,650 |
€5,000 |
€3,650 |
45 |
€1,575 |
€6,000 |
€4,425 |
€6,000 |
€4,425 |
50 |
€1,800 |
€7,000 |
€5,200 |
€7,000 |
€5,200 |
55 |
€2,025 |
€8,000 |
€5,975 |
€9500 |
€7475 |
60 |
€2,250 |
€9,000 |
€6,750 |
€12,000 |
€9750 |
65 |
€2,475 |
€10,000 |
€7,525 |
€14,500 |
€1,2025 |
70 |
€2,700 |
€11,000 |
€8,300 |
€17,000 |
€1,4300 |
75 |
€2,925 |
€12,000 |
€9,075 |
€19,500 |
€1,6575 |
80 |
€3,150 |
€13,000 |
€9,850 |
€22,000 |
€1,8850 |
85 |
€3,375 |
€14,000 |
€10,625 |
€24,500 |
€2,1125 |
90 |
€3,600 |
€15,000 |
€11,400 |
€27,000 |
€2,3400 |
95 |
€3,825 |
€16,000 |
€12,175 |
€29,500 |
€2,5675 |
100 |
€4,050 |
€17,000 |
€12,950 |
€32,000 |
€2,7950 |
3.2 Additional Pages Fee
European patent applications filed before 1 April 2009 and international applications entering the regional phase before that date are liable to an additional fee for printing the 36th and each subsequent page in response to the Rule 71(3) EPC2 communication prior to grant. The additional page fee is €11 if paid prior to 1 April 2008 and €12 if paid on or after 1 April 2008.
However, for European patent applications filed on or after 1 April 2009 and international applications entering the regional phase on or after that date, the additional fee for the 36th and each subsequent page will be payable on filing the application or on regional phase entry, rather than at the Rule 71(3) EPC2 stage.
3.3 Designation Fees
For European patent applications filed before 1 April 2009 and international applications entering the regional phase before 1 April 2008, it is possible to pay an individual designation fee for reach state up to a total of seven, at which point designations are deemed to have been paid for all states. The individual designation fee is €80 if paid prior to 1 April 2008 and €85 if paid on or after 1 April 2008.
However, for European patent applications filed on or after 1 April 2009 and international applications entering the regional phase on or after that date, the individual designation fee is being replaced by a “Designation fee for one or more Contracting States designated” of €500.
This will increase the effective cost of designations substantially for applicants that designate less than seven states, as it will no longer be possible to pay selected designations only.
4. Concluding Remarks
The size of the some of the fee increases is such that it may be appropriate in some cases to bring forward fee payments and/or European patent application filing or European regional phase entry for an International application. In such cases, we recommend that you contact your usual correspondent at D Young & Co for further details and advice.
For example, where it is intended to enter the European regional phase prior to the 31 month date for an International application where the 31 month date is after the appropriate deadline, it will be necessary explicitly to request early entry (see for example, http://www.epo.org/patents/law/legal-texts/html/guiapp2/e/ga_e_i_7.htm), otherwise the EPO will deem European regional phase entry to occur 31 months from priority.