part iv iv.7.5. republication of the international iv.8. fees

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extend beyond the originally filed contents of the application in the original language, then the application in its original language can form the basis for such an amendment, which is consequently allowable under Art.123(2) EPC.

This also means that the originally filed text of the application in the non-EPO language can form the basis for any correction to its translation.

Art.70(2) EPC was modified in its new EPC-2000 version such that it no longer refers directly to translations under Art.14(2) EPC and so provides its effect for all translations which might be provided of a Euro-direct application [on filing under the EPC] or of a Euro-PCT application, where the translation is filed either in the PCT or on passage into the European phase.

In any case, it would be inequitable not to apply the principles of Art.70(2) EPC to Euro-PCT applications which are either translated in the PCT (R12.3 PCT or R12.4 PCT), or translated on entry into the European phase (Art.153(4) EPC). Such inequitable treatment would be contrary to the general principles of procedural law set out in Art.125 EPC (see G3/91).

IV.7.5. Republication of the international application in an EPO official language

PCT publication in EPO language

Art.153(3) EPC The international publication of a Euro-PCT application in an official language of the EPO shall take the place of the publication of the EP application and shall be mentioned in the European Patent Bulletin.

Since in these cases the International publication takes the place of the EP publication, these applications are not subject to other publications in the European phase.

Re-publication of translation

Art.153(4) EPC If the Euro-PCT application is published in another language, a translation into one of the official languages shall be filed with the EPO [within 31 months of the filing date, or priority date if claimed – R159(1)(a) EPC].

Art.153(4) EPC The EPO shall publish this translation.

Where the International application was published in a language other than an EPO language, a translation must always be filed by the applicant at the EPO

according to Art.153(4) EPC and R159.1(a) EPC (see § IV.7).

The text of this translation is re-published by EPO after entry in the European phase.

Effects on provisional protection

Art.153(4) EPC Subject to Art.67(3) EPC, the provisional protection under Art.67(1) EPC and Art.67(2) EPC, shall be effective from the date of that publication.

With regard to the effect of the re-publication of the translation on the provisional protection in the EPC, see § II.12.8 (rights conferred by International publication) and § II.12.8.1 (steps necessary at the EPO to achieve provisional protection).

IV.8. Fees payable on entering the European regional phase

IV.8.1. Fees - general remarks

Fees due upon entry in European phase

When the International application enters the regional phase before EPO the following fees become due to the EPO:

- filing fee* - designation fee**/*** - examination fee*** - renewal fees - supplementary search fee (if applicable) - claims fees (where applicable).

Each of the fees listed above will be dealt with in detail in the following sections.

* The filing fee includes an additional fee for applications comprising more than 35 pages.

** A single flat designation fee is due covering the designation of all EPC states.

*** According to R39(1) EPC and R70(1) EPC respectively the designation and examination fees are due within 6 months of publication of the International search report (since this replaces the European search report - Art.153(6) EPC), however, the 31 month period under R159(1) EPC takes precedence if it expires later. If these 6 month time limits expire later than 31 months after the priority (or filing date if no priority is claimed) because the International search report was prepared and published very late, then these take precedence over the 31 month period under R159(1) EPC.

Note that the amount, applicability and even the structure of fees charged by the

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EPO has recently changed a number of times and will probably change again in the near future (see the increased amounts of fees and expenses applicable as from 01.04.2014, fixed by decisions of the Administrative Council – OJ 2014, A5). Readers are thus advised to refer to the latest schedule of fees published by the EPO (e.g. by referring to the internet site) in order to determine which fee is applicable at a certain date.

New fee structure as from 01.04.2009

OJ 2009, 118 On 01.04.2009 a new fee structure entered into force at the EPO.

Essentially, the following changes were introduced:

(1) A two tier system of claims fees: a lower claims fee is due for each claim from the 16th up to the 50th and a higher fee is due for the 51st and each subsequent claim.

(2) An additional fee for applications comprising more than 35 pages, as part of the filing fee.

(3) A flat rate designation fee which covers the designation of all designated states [previously individual designation fees were payable for individual states, but if seven times this fee was paid, then all designations were validated].

(4) A flat rate fee for grant [at the grant stage – this used to include an additional fee per page, but this is now paid at the filing stage]

(5) A reduction of the period for advance payment of the renewal fee from 1 year to 3 months.

Further amendments / renumbering as from 01.04.2010

OJ 2009, 587 The rules relating to fees were amended with effect on 01.04.2010. In particular, the amount and numbering of the fees referred to in Rfees 2 EPC is changed:

For example, old Rfees 2.1 EPC becomes Rfees 2(1).1 EPC and Rfees 2.2 becomes Rfees 2(1).2 EPC.

With this new numbering the following fees are those due for applications for which the old fee structure applied [these are applications which entered the European phase before 01.04.2009].

Rfees 2(2).3 EPC Designation fees for up to 7 states

Rfees 2(2).3a EPC Designation fee for CH/LI

Rfees 2(2).7 EPC Fees for grant*

Rfees 2(2).15 EPC Claims fees

* The grant fee for applications under the old fee structure still includes an extra payment for pages over and above 35, because this is not part of the filing fee for such applications. For applications under the new fee structure this additional fee is part of the filing fee and so is no longer payable on grant.

For Euro-PCT applications the new amounts apply for payments made on or after 01.04.2010.

Who may pay fees to EPO

Euro-PCT Guide 168 Fees may be validly paid to the EPO in the International phase by any person.

A-X, 1 The same applies to fees paid for European applications

This includes Euro-PCT applications in the European phase because these are also European applications according to Art.153(5) EPC.

Consequently payments may be made by persons other than the applicant and his representative. Also, there are no restrictions on residence/nationality/place of business.

A-X, 7.1.2 Where a third party makes the payment, but the purpose of that payment is unclear, the EPO requests the third party to indicate the purpose of that payment according to Rfees 6(2) EPC [within a period specified by the EPO].

A-X, 10.4 Where the third party does not reply in time to this communication under Rfees 6(2) EPC, then the fee is deemed not paid under Rfees 6(2) EPC. The fee is then refunded to that 3rd party who made the payment.

- This is the only case where fees are refunded to a third party who made a payment [with the exception of a fee paid for file inspection].

Methods of payment / Currency

Rfees 5(1) EPC The fees due to the EPO shall be paid in Euro:

- by payment or - by transfer to a bank account held by the Office.

Rfees 7(1) EPC The date on which the payment is considered to have been made is the date on which the amount of the payment or of the transfer is entered in a bank account held by the EPO.

For fail-safe provisions concerning the date on which the payment is considered to

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be made see Rfees 7(3) EPC, Rfees 7(4) EPC.

Rfees 5(2) EPC The EPO President may allow other methods of paying fees than those specified in Rfees 5(1) EPC.

OJ Suppl. 3/2015 Arrangements for Deposit Accounts [ADA]: These deposit accounts are kept at the EPO headquarters in Munich. Essentially, in order to make payments, the account holder has to file a written, signed debit order [see Point 6.2 ADA] or else transmit it by facsimile (no confirmation is required) or on-line.

- The debit order must contain the particulars necessary to identify the purpose of the payment and the amount and must indicate the account number which is to be debited (see Point 6.3 ADA).

- The date of payment is the date on which the debit order is received at the EPO [Point 6.3 ADA].

The account holder keeps the account in credit and asks the EPO to deduct fees from it. Payment is effected by the submission of a written debit order signed by the account holder.

Automatic debiting

OJ Suppl. 3/2015 This reference contains the arrangements for automatic debiting procedure [AAD]. Essentially, the holder of a deposit account at the EPO may file a debit order requesting the automatic debiting procedure. In this case, as the proceedings progress any fee which falls due is automatically debited and treated as paid in time. The responsibility for the payment resides only with the EPO, whereas the holder only has to ensure that the account is sufficiently in credit to pay the fees on time.

- If an automatic debit order is filed in due time [before expiry of the 31 month period], automatic debiting can be used to pay any fee due within the 31 month period of R159(1) EPC.

Point 2.2 AAD However, where an automatic debiting order has been with the EPO for its role in the International (PCT) phase, this does not carry over to the acts required to enter the EP phase. This requires a second, separate automatic debiting order.

OJ Suppl. 3/2015 &

Point 6.2 ADA EPO fees may be paid using:

- Via an automatic debit order filed under the EPO automatic debiting procedure for

a specific Euro-PCT application, authorising the debiting of fees automatically as the proceedings progress.

- EPO Online Filing or CMS, using Form 1200E.

- Paper, fax or WFF, using form 1200.

- Online Fee Payment via Online services [authorisation by smart card takes the place of a signature].

- EPO Online Filing or CMS using EPO Form 1038E [letter accompanying subsequently filed items].

- Paper, fax or WFF using Form 1010.

For more information concerning payments using these other means allowed by the EPO President, and in particular for the date on which the fee which is due is actually charged, reference is made to the aforementioned supplement to the Official Journal.

For an analysis of these payment procedures, see “Procedural law under the EPC-2000” Ed. 3, 2013, from the same authors, § XXIV.21.6 and § XXIV.21.5.

Certain older methods of payment allowed under earlier versions of Rfees 5 EPC are no longer allowed, see:

OJ 2007, 489 closure of EPO Giro accounts OJ 2007, 626 payment by cheque abolished OJ 1999, 81 payment by cash abolished

IV.8.2. The EPO filing fee

Art.22(1) PCT &

Art.39(1)(a) PCT The applicant must pay the national fee (if any) to each designated or elected office

In the case of the EPO, the national fee is the “filing fee”, see below.

Requirement to pay the filing fee to EPO

R159(1)(c) EPC In respect of an international application under Art.153 EPC, the applicant must pay the filing fee provided for in Art.78(2) EPC within 31 months from the filing date or, if priority has been claimed, from the priority date.

Amount / Reduction for electronic filing

Rfees 2(1).1 EPC Amount of the national basic fee (this is equal to the filing fee for a direct European application).

Rfees 2(1).1 EPC When the Form 1200 is filed online, the national basic fee (filing fee) is reduced.

Euro-PCT Guide 421 The official EPO form for entry into the regional phase before the EPO, (Form 1200) may be filed in electronic

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form using the EPO electronic on-line filing software.

Euro-PCT Guide 421 &

OJ 2015, A27 In addition to the EPO electronic online filing software, the EPO has also made available the CMS online filing system [Case Management System].

This system can be used to file EPO Form 1200 [Euro-PCT Guide 421] and other documents for EP entry. However, it cannot be used to file priority documents.

OJ 2014, A98 In addition to the EPO electronic online filing software, the EPO has also made available the WFF online filing system [Web-Form Filing].

This system can be used to file EPO Form 1200 [Euro-PCT Guide 421] and other documents for EP entry. However, it cannot be used to file priority documents.

No language reduction

E-VIII, 2.6 Fee reductions mentioned in A-X, 9.3 also apply to Euro-PCT applications.

The language reduction in the filing fee is dealt with in A-X, 9.2.2. Consequently it appears that the language reduction of the filing fee is not available for Euro-PCT applications. This makes sense, since the application must be translated on EP entry under R159(1)(a) EPC and so there is never an application pending before the EPO in a non-EPO language.

Additional fee: more than 35 pages

R38(2) EPC The EPO filing fee may contain a component which is a set amount per page over and above 35 pages.

Rfees 2(1).1a EPC This additional charge for the 36th and subsequent pages has been implemented in this EPO fee regulation.

- This fee regulation specifies the amount charged for the 36th and each additional page of a European application, or Euro-PCT application entering the European phase.

- This does not count any page part of biological sequence listings, if this is present in the application.

E-VIII, 2.1.3 This additional fee must also be paid within the period specified in R159(1) EPC [31 months of the filing date, or earliest priority, if claimed].

OJ 2009, 118 The additional page fee is calculated on the basis of:

- The International application as published, [but not counting any page part of a biological sequence listing]

- Any amendments under Art.19 PCT

- One page of abstract. Even if more than one page of bibliographic data is present, further pages are not counted. Form 1200 is also not counted.

- Pages of the latest set of any amended documents [e.g. Art.34 PCT amendments or amendments filed upon entry into the regional phase] on which the European procedure is to be based [cf R159(1)(b) EPC] are also taken into account if:

- they are available at EPO on the date of payment, and

- the payment is before expiry of the 31 month period under R159(1) EPC.

If the applicant files amended pages to replace pages of the application or of the latest set of amendments, and intends to have the replaced documents excluded from the calculation,

then, the replacement pages and the pages they are meant to replace must be clearly indicated at the latest at the payment date. This can be done in Form 1200 and may result in a reduction of the number of pages for which a fee is due.

In the absence of any information, the new pages are just counted as additional pages when the page fee is calculated.

Pages of amendments filed after the period for paying the additional fee, and in particular during the R161 EPC period [set in a communication inviting the applicant to file amendments] are not taken into account and do not result in any reduction of the additional fee.

Example of computation of additional fee

PCT application of 100 pages, in English:

- abstract 1 page - description 50 pages - claims 20 pages - drawings 20 pages - claims cf Art.19 PCT 9 pages

On entry in the European phase within the 31 month period of R159(1) EPC for paying additional fees 10 pages of claims are filed to replace the claims on file. This replacement is clearly indicated in EPO Form 1200.

Fee incurring pages: 100 - 20 (replaced original claims) - 9 (replaced Art.19

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claims) + 10 (replacing claims) - 35 (fee exempted pages) = 46 pages.

Filing fee for translated applications

OJ 2009, 338 This reference explains how the filing fee is calculated for Euro-PCT applications which must be translated into an EPO language when entering the European phase - see (a), (b) and (c) below.

(a) No amendments filed on EP entry

OJ 2009, 338 Where no amendments are filed on passage into the European phase*, the filing fee is calculated on the basis of the pages of:

- the application as published** - any Art.19 PCT amendments*** - any Art.34 PCT amendments**** - one page for the abstract

* This means that there were no amendments under R159(1)(b) EPC. There may subsequently be amendments under R161 EPC [since these are filed after entry into the European phase].

** This is the International application as published in the non-EPO language.

*** Art.19 PCT amendments must be in the language of publication [R46.3 PCT] and may or may not be published with the International application [see § II.11.4].

**** Art.34 PCT amendments must be in the language in which preliminary examination was conducted [see § III.6.2 and sub-sections].

(b) Claims amendments filed on EP entry

OJ 2009, 338 Where the claims are amended on entry into the European phase* the applicant must file a full set of amended claims in the EPO language.

The filing fee is then calculated on the basis of the pages of:

- the description as published in the PCT** - the replacement pages of the claims***

* These are amendments under R159(1)(b) EPC, but not under R161 EPC [R161 EPC amendments are filed after entry into the European phase].

** This is the International application as published in the non-EPO language.

*** This is the full set of claims in the EPO language filed by the applicant on entry into the regional phase.

Presumably, the additional page for the abstract is also included. It appears in this case, that any amendments of claims of the

International application under Art.34 PCT and Art.19 PCT are not included in the calculation.

OJ 2009, 338 However, if:

- there are several versions of the claims filed in the PCT* and

- the applicant wishes the latest of these to be taken into account at the EPO,

then the applicant must expressly indicate that he wishes this amendment to be considered as an amendment filed on entry into the European phase.

* The original claims and at least one chosen from Art.19 PCT amendments and Art.34 PCT amendments (to the claims).

If the applicant does this he will only be charged for the pages of the set of claims he indicates. If he does not, he will be charged for all sets of claims [original and at least one of Art.19 PCT and Art.34 PCT].

This reference does not say what happens if the applicant wishes to abandon a later set of claims filed in the PCT and revert to an earlier one.

(c) Description/drawings amendments filed on EP entry

OJ 2009, 338 The applicant can file amended pages of the description or a complete amended description, or amended drawings on entry into the European phase. All must be filed in an EPO language.

The filing fee is then calculated on the basis of the pages of the translations of the description or drawings as amended.

If amendments to the description or drawings were made under Art.34 PCT and the applicant wishes these to be taken into account by the EPO, the applicant must either:

- do both of the following:

- file a translation of these amendments, and - indicate which pages are to be replaced in

the translation of the application as published, or

- file a complete new version of the description

If the above requirements are met, the filing fee is calculated based only on the translation of the description as amended. If not, the applicant must pay based on the total number of pages filed.

Note that even where the applicant provides a completely amended and

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translated description [i.e. a completely revised translated description is filed rather than replacement pages], the applicant is still required to file a translation of the description claims and drawings of the application as originally filed [Euro-PCT Guide 517 - see § IV.7.2.1]. This is so that the EPO can check that any amendments are based on the International application as originally filed [Art.123(2) EPC].

Time limit

R159(1)(c) EPC The EPO filing fee must be paid to the EPO within 31 months of the priority date of the International application (or filing date, where no priority is claimed).

E-VIII, 2.1.3 The additional page fee is also due within the same 31 month period.

Sanction for failure

R160(1) EPC If the filing fee is not paid in due time, the EP application is deemed to be withdrawn.

OJ 2009, 118 The same applies where the additional fee is not paid in due time.

R160(2) EPC If the EPO notes that the application is deemed to be withdrawn under R160(1) EPC, it shall communicate this to the applicant. R112(2) EPC applies mutatis mutandis.


The reference to R112(2) EPC means that the applicant may ask the EPO to review the facts and issue an appealable decision on this finding.

Remedy in case of loss of rights

Art.121 EPC, R135(1) EPC &

Euro-PCT Guide 546 If the applicant failed to pay the filing fee in time, the loss of rights which ensues under R160(1) EPC is deemed not to have occurred if, within 2 months of notification of the loss of rights the applicant pays both the filing fee and the further processing fee.


Rfees 2(1).12 EPC The amount of the further processing fee is 50% of the filing fee.

A-III, 13.2 Where the applicant has paid the basic filing fee on time, but not paid the additional page fees, the calculation of further processing fee does not take the basic filing fee into account [i.e. the further processing fee is 50% of the unpaid additional page fees, not 50% of the basic filing fee plus additional phase fee].

R49.6 PCT &

Euro-PCT Guide 548 The loss of rights ensuing under R160(1) EPC for failure to pay the filing fee may also be overcome by requesting reinstatement under R49.6 PCT.

- However, this is more onerous to achieve and the fee is higher.

- Consequently, this remedy is only advantageous if the period for further processing has already expired.

Rfees 2(1).13 EPC Fee for re-establishment under R49.6 PCT.

R49.6 PCT explicitly mentions reinstatement as remedy for loss of rights ensuing from failure to perform acts listed in Art.22 PCT (here paying the filing fee).

OJ 2009, 118, which explains the introduction of the page component of the filing fee, does not indicate whether reinstatement cf R49.6 PCT applies also to the failure to pay the additional fee. Since the additional fee is considered part of the filing fee, this would appear possible.

Note that re-establishment under R49.6 PCT is not re-establishment under Art.122 EPC [although analogous conditions apply - same time limits, all due care etc]. This is because Art.122 EPC is not directly applicable to the loss of rights under R160(1) EPC, due to R136(3) EPC [because further processing applies, re-establishment is excluded]. For more details on the procedure according to R49.6 PCT, see § IV.16.1.

However, re-establishment under Art.122 EPC is applicable to the period for requesting further processing. This means that, if the applicant fails to request further processing in time after a loss of rights ensued under R160(1) EPC, he may request re-establishment for failure to request further processing (E-VII, 2.2.1).

Filing fee & effects under Art.54(3) EPC

Art.153(5) EPC The Euro-PCT application is treated as an EP application and is considered as comprised in the state of the art under Art.54(3) EPC, if:

- the conditions laid down in Art.153(3) EPC or Art.153(4) EPC are fulfilled [i.e. that the International application is published, and that if it is not published in an EPO language a translation into one of such languages is filed, which the EPO publishes] and

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- the conditions laid down in the Implementing Regulations are fulfilled [i.e. R165 EPC].

R165 EPC A Euro-PCT application is considered comprised in the state of the art under Art.54(3) EPC, if in addition to the conditions laid down in Art.153(3) EPC or Art.153(4) EPC, the filing fee under R159.1(c) EPC has been paid.

Since the additional page fee is part of the filing fee [R38(2) EPC], it would appear that the status of the application as prior art under Art.54(3) EPC also depends on payment of this additional fee.

Early entry into EP phase

OJ 2013, 156 The filing fee must be paid in order to achieve early entry into the EP phase under Art.23(2) PCT or Art.40(2) PCT.

- This includes the payment of any additional page fee.

For more details on early entry into the EP phase, see § IV.1.2.2.

IV.8.3. European designation fee

Automatic designation under the PCT

R4.9(a)(i) PCT The filing of the PCT request form constitutes the designation of all PCT states.

R4.9(a)(iii) PCT This includes regional designations of PCT states where such a possibility exists.

For more details on designations under the PCT see § I.4.

PCT applications and EP designations

Euro-PCT Guide 116 When a PCT application is filed, by filing the request all PCT contracting states are automatically designated for both national and any applicable regional designation. The automatic designation “EP” covers all states for which the PCT and the EPC are in force at the filing date.


J30/90 Where a [PCT] state accedes to the EPC after the International filing date, but before the application enters the European regional phase, it is not possible to designate this state under the EPC when entering the European phase.

European designations withdrawn for certain states

R90bis.2(b) PCT The designation of a PCT state, via a regional designation [e.g. the EPC] can be specifically withdrawn in the International phase.

R90bis.2(a) PCT The notice of withdrawal must be filed at the IB, RO or IPEA within 30 months of the filing date, or priority date, if claimed.

For more details on withdrawal of designations see § I.4.6.

Euro-PCT Guide 551 Confirms that it is possible in the International phase to withdraw the EP designation for an EPC state.

This means that it would be possible, in the International phase, to withdraw a designation (e.g. Sweden), from the regional designation of the EPO. This would then have the effect that Sweden could no longer be designated under the EPC on entry into the European phase [confirmed in Euro-PCT Guide 551].

R90.4(d) PCT Where a document relates to a withdrawal under R90.4(e) PCT [including withdrawal of designations], the power of attorney waiver does not apply.

This means that where the designation is withdrawn at an office (e.g. the RO) which applies the power of attorney waiver, the representative filing such a withdrawal will have to provide a power of attorney. For more details see § V.2.4.3.

Obligation to pay designation fee to EPO

R159(1)(d) EPC In respect of an international application under Art.153 EPC, the applicant must pay the designation fee within 31 months from the date of filing or, if priority has been claimed, from the priority date if the period under R39 EPC has expired earlier.

By designating one or more member states of the EPC, the applicant establishes the states where he intends to obtain patent protection. Since when the International application is filed all member states of the PCT and of the EPC are validly designated [see above], any of these states may be validly designated upon entry in the regional phase before the EPO. The only exception being where the designation of an EPC state under the regional EPC designation was actively withdrawn during the international phase.

The legal act validating the designation of an EPC contracting state is the payment of the corresponding designation fee.

One single designation fee

Rfees 2(1).3 EPC There is a single flat designation fee covering the designation of all EPC states.

This single fee covers the designation of all EPC contracting states, unless some states acceded to the EPC after the application was filed [Euro-

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PCT Guide 117] or unless designations of certain EPC states under the regional EP designation were withdrawn in the International phase (see above).

If not paid on time, the application is deemed withdrawn under R160(1) EPC.

Time limit to pay the designation fee

R159(1)(d) EPC The designation fee for Euro-PCT applications entering the European phase must be paid to the EPO by the later of:

- 31 months of the priority date of the International application, or filing date if no priority is claimed [time limit under R159(1) EPC] and,

- 6 months from publication of the International Search Report* [regardless of whether a supplementary search report is prepared by the EPO - this is the time limit under R39(1) EPC].

* For international applications the international search report replaces the European search report under Art.153(6) EPC. This second 6 month time limit becomes applicable only in the cases where the international search report is published very late (more than 25 months after the priority).


R160(1) EPC If the designation fee is not paid on time then the application is deemed withdrawn.

R160(2) EPC The applicant is informed of any loss of rights [deemed withdrawal of the application]. R112(2) EPC applies mutatis mutandis.

Since only one designation fee is now due for all EPC states, it is no longer possible for an individual designation to lapse for failure to pay the designation fee for that state. Either all designations are validated, by payment of the flat designation fee, or none at all by failure to pay this flat designation fee.

The reference to R112(2) EPC means that the applicant may ask the EPO to review the facts, and issue an appealable decision on this finding.

Remedy in case of loss of rights

Art.121 EPC, R135(1) EPC &

Euro-PCT Guide 554 If the applicant failed to pay the designation fee in time, the loss of rights under R160(1) EPC is deemed not to have occurred if, within 2 months of notification of the loss of rights [under R112(1) EPC/R160(2) EPC] the applicant

pays both the designation fee and the further processing fee.

Rfees 2(1).12 EPC* The amount of the further processing fee is 50% of the unpaid fee [in the case, the designation fee].

Reinstatement not applicable

Euro-PCT Guide 555 The loss of rights ensuing from failure to pay designation fees may not be overcome by requesting reinstatement under R49.6 PCT, because the designation fees are not part of the national fee and therefore R49.6 PCT is not applicable.

Furthermore according to R136(3) EPC, re-establishment under Art.122 EPC may not be applied to periods for which further processing is available.

However, under the EPC, re-establishment is applicable to the period for requesting further processing. This means that, if the applicant fails to request further processing in time after a loss of rights ensuing under R160(1) EPC, he may request re-establishment for failure to request further processing (E-VII, 2.2.1).


OJ 2013, 156 Payment of the designation fee may be required, in order to achieve early entry into the EP phase under Art.23(2) PCT or Art.40(2) PCT.

For more details on early entry into the EP phase and when payment of the designation fee is required to achieve this, see § IV.1.2.3.

IV.8.4. Fees for extension and validation states

IV.8.4.1. Fees for extension states

The EPO has concluded “extension agreements” with a number of non-EPC contracting States. At the applicant's request, EP applications and patents can be extended to these "Extension States", and have the same effects as national applications and patents in their territory. However, since these States are not party to the EPC, the EPC is not directly applicable, and only the provisions of the extension agreements and the national law apply. Each extension is subject to the payment of an extension fee, to be paid within the same time limit as the designation fee.

Terms of the extension agreements

The extension agreement between the EPO and Slovenia (which later acceded to

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the EPC), was the first such agreement (see OJ 1994, 75). All of the later agreements where essentially based on that first agreement so that the same procedure at the EPO applies to all extensions. However, the national requirements before the extension states may differ.

How to extend EP application via PCT

In the case of an International application, a request for extension to the states indicated below is automatic when both the EPO and the following states are designated in the same International application. This applies even if the national procedure has been started in the state in question [this is indicated in the extension agreements given for each extension state in the OJ references below].

Which extension states

A-III, 12.1,


EPO Form 1200 The European patent application and the corresponding granted patent can be extended to those states which:

(i) are not EPC contracting states, but

(ii) are PCT contracting states,

(iii) are designated in the PCT application [for a national patent]* and,

(iv) which had an extension agreement with the EPO in force at the time of filing the International application.

* Since all PCT states are designated automatically on filing the request [R4.9(a) PCT], this is automatic unless the designation of that state is withdrawn in the International phase [R90bis.2 PCT].

Currently two extension agreements are in force:

Bosnia Herzegovina OJ 2004, 619 Montenegro OJ 2010, 10

An updated list of the EPC contracting states and the states having an extension agreement with the EPO can be found on the EPO web-site. For more details on extension of European patent applications and its relevance in the International phase, see also § I.4.4.1.

The request for extension

Euro-PCT Guide 558 If the above conditions are met, a request for extension is deemed filed when the Euro-PCT application enters the regional phase.

Clearly if the designation of the extension state is withdrawn in the international phase [R90bis.2 PCT – see § I.4.6], then extension will not be possible in the European phase.

Extensions fees: when to pay

A-III, 12.2 &

Euro-PCT Guide 559 For the extension to take effect, the extension fee must be paid within the same period as for the designation fees*.

* R159(1)(d) EPC This period is the later of:

- 31 months of the filing/priority date of the International application [R159(1) EPC period] and,

- 6 months from publication of the International Search Report [regardless of whether a supplementary search report is prepared by the EPO – R39(1) EPC period].

How many fees

Euro-PCT Guide 560 One extension fee is due for each extension state. There is no single flat extension fee.

Indication of states paid for

Euro-PCT Guide 562 When paying extension fees, the applicant must indicate which extension states he is paying for.

Euro-PCT Guide 562 If the states he finally pays for do not correspond to those which were indicated in Form 1200, then the applicant will have to provide the correct indication.

- This part of the Guide also appears to imply that even where indications are provided on Form 1200, the applicant will still have to indicate which states he is paying for when making payment.

However, since most applicants requesting extension, do so in respect of all extension states and pay the extension fees due, then it is no longer necessary to indicate which extension states have been paid for.

Loss of rights and further processing

Euro-PCT Guide 558

A-III, 12.2 If the extension fee for a state is not paid in time, the request for extension to that state is deemed to be withdrawn.

A-III, 12.2 No separate communication is sent to notify a loss of rights resulting from the failure to pay extension fees on time [i.e. the applicant is not sent a R112(1) EPC communication indicating the deemed withdrawal of the extension].

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Consequently, the applicant cannot normally request further processing for failure to pay the extension fee on time. This is subject to the exception below.

A-III, 12.2 If the applicant failed to pay both of the following on time:

- the designation fee and - at least one extension fee

then he is sent a communication under R112(1) EPC informing him of both the deemed withdrawal of the application [R160(1) EPC] and the loss of the extension [A-III, 12.2].

It is only in this situation, that the applicant may request further processing for failure to pay the extension fee (and also failure to pay the designation fee on time as well).

In all other cases the deemed withdrawal of the request for extension due to the failure to pay an extension fee cannot be remedied by further processing.

A-III, 12.2 The extension can then be reanimated by paying a 50% surcharge [further processing fee] on the extension fee.

J14/00 &

A-III, 12.2 No re-establishment of rights under Art.122 EPC and R136 EPC is possible in respect of failure to pay the extension fees.

These provisions are quite harsh for the applicant, because if he has failed to pay the extension fees in time, but he has in the meantime duly paid the designation fees, the request for extension is deemed withdrawn, and the legal remedy of further processing is not available.

Grace period

OJ 2009, 603 If the applicant fails to pay the extension fee within the basic period, he can pay the fee within two months of expiry of the basic period [grace period].

This grace period used to apply to late payment of designation and extension fees under EPC_1973 (no longer necessary for designation fees since these fees are now subject to further processing). The re-introduction of the grace period for extension fees means that the explanation of aggregate time limits in L5/93 (abandoned) once again applies to late payment of extension fees in the grace period.

This procedure for payment within a grace period exists in addition to the possibility for payment by means of further processing where the designation fee is

also not paid on time [A-III, 12.2 - see above].

OJ 2009, 603 Payment within the grace period is subject to the payment of a 50% surcharge on the late paid extension fee.

Decision under R112(2) EPC and appeal

J4/05 The applicant cannot request the EPO for a decision under R69(1) EPC_1973, [now R112(2) EPC] with regard to the payment of extension fees.

J14/00, J19/00, J9/04, J2/05 &

J4/05 The applicant cannot appeal a finding of the EPO that the fee was not paid in time. Such an appeal is inadmissible. The provisions of the EPC only apply to extensions in so far as these are mentioned in the Extension Ordinance (EO).

Since the EOs do not mention the possibility of a decision under R112(2) EPC, or appeal according to Art.106 EPC then neither of these procedures apply to the failure to pay the extension fee.

Withdrawal or lapse of extension

A-III, 12.3 The extension can be withdrawn at any time.

- It will be deemed withdrawn if the Euro-PCT application is:

- finally refused - withdrawn or - deemed withdrawn.

- A separate communication [indicating lapse of the extension] is not issued to the applicant.

- Validly paid extension fees are not refunded.

IV.8.4.2. Fees for validation states

The EPO has concluded validation agreements with two states so far, Morocco (MA) and Moldova (MD). These are not referred to as extension agreements, but the system appears to be very similar, if not identical to the extension agreements explained in § IV.8.4.1, at least as far as procedures to be followed are concerned.

Terms of the validation agreements

The terms of the validation agreement between the EPO and Morocco are given in OJ 2015, A18, OJ 2015, A19 and OJ 2015, A20 as reported below.

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The terms for the validation agreement with Moldova are given in OJ 2015, A84 and OJ 2015, A84.

How to validate EP application via PCT

OJ 2015, A20 For PCT applications, a request for validation in Morocco is automatic when filing the application via the PCT.

A-III, 12.1 The EPO and the validation state must both be designated in the PCT application.

This is in any case automatic because filing the request constitutes the designation of all PCT states and regional offices [R4.9(a) PCT]. For more details, see § I.4.4.2, sub-section “Designation of EPO/Morocco”.

Furthermore, since the Euro-PCT Guide 558 states that a specific request for extension is also not required when entering the EP phase, this should also apply to the validation.

Validation fee: amount, when to pay

OJ 2015, A18 The amount of the validation fee for Morocco is set in this reference.

OJ 2015, A84 The amount of the validation fee for Moldova is set in this reference.

OJ 2015, A19 The validation fee must be paid within the later to expire of:

- 6 months of the publication of the PCT search report, and

- 31 months of the earliest priority [or where no priority is claimed, the filing date – Art.2(xi)(c) PCT].

OJ 2015, A85 The above also applies to the fee for validation in Moldova.

This is the same period as that for paying the EP designation fee under R159(1)(d) EPC [for more details on payment of the designation fee see § IV.8.3].

Loss of rights and further processing

OJ 2015, A19 If the validation fee is not paid in time, the request for validation is deemed to be withdrawn.

Note OJ 2015, A19 applies to validation fees in general, and so to the validation fees for all validation states. This is confirmed by the later validation agreement with Moldova [see OJ 2015, A85, which confirms that OJ 2015, A19 also applies to payment of validation fees for this state].

OJ 2015, A19 No separate communication is sent to notify a loss of rights resulting from the

failure to pay the validation fee on time [i.e. the applicant is not sent a R112(1) EPC communication indicating the deemed withdrawal of the validation].

Consequently, the applicant cannot normally request further processing for failure to pay the validation fee on time [confirmed in A-III, 12.1]. This is subject to the exception below.

OJ 2015, A19 If the applicant failed to pay both of the following on time:

- the designation fee and - the validation fee

then he is sent a communication under R112(1) EPC informing him of both the deemed withdrawal of the application [R160(1) EPC] and the loss of the validation.

It is only in this situation, that the applicant may request further processing for failure to pay the validation fee (and also failure to pay the designation fee on time as well).

In all other cases the deemed withdrawal of the request for validation due to the failure to pay a validation fee cannot be remedied by further processing.

OJ 2015, A19 The validation can then be reanimated by paying a 50% surcharge [further processing fee] on the validation fee.

OJ 2015, A19 No re-establishment of rights under Art.122 EPC and R136 EPC is possible in respect of failure to pay the validation fee.

These provisions are quite harsh for the applicant, because if he has failed to pay the validation fee in time, but he has in the meantime duly paid the designation fees, the request for validation is deemed withdrawn, and the legal remedy of further processing is not available.

Grace period

Again, the procedures below apply in general to fees for all validation states [currently Morocco and Moldova].

OJ 2015, A19 If the applicant fails to pay the validation fee within the basic period, he can pay the fee within two months of expiry of the basic period [grace period].

This grace period used to apply to late payment of designation and extension fees under EPC_1973 (no longer necessary for designation fees since these fees are now subject to further processing). The re-introduction of the grace period for validation fees means that the explanation of aggregate time limits in L5/93

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(abandoned) once again applies to late payment of validation fees in the grace period.

This procedure for payment within a grace period exists in addition to the possibility for payment by means of further processing where the designation fee is also not paid on time [OJ 2015, A19 - see above].

OJ 2015, A19 Payment within the grace period is subject to the payment of a 50% surcharge on the late paid validation fee.

OJ 2015, A85 The above also applies to the fee for validation in Moldova.

Decision under R112(2) EPC and appeal

A-III, 12.1 The applicant cannot request the EPO for a decision under R112(2) EPC with regard to the payment of validation fees.

A-III, 12.1 The applicant cannot appeal a finding of the EPO that a validation fee was not paid in time.

Withdrawal or lapse of validation

A-III, 12.3 The validation can be withdrawn at any time.

- It will be deemed withdrawn if the Euro-PCT application is:

- finally refused - withdrawn or - deemed withdrawn.

- A separate communication [indicating lapse of the validation] is not issued to the applicant.

- Validly paid validation fees are not refunded.

IV.8.5. The claims fee

Claims fee due for more than 15 claims

R162(1) EPC If the application documents on which the EP grant procedure is to be based comprise more than 15 claims, claims fees shall be paid for the 16th and each subsequent claim as laid down in the rules relating to fees within the period under R159(1) EPC.

Two tier system

A lower claims fee is due for each claim from the 16th up to the 50th claim and a higher claims fee is due for the 51st and subsequent claims.

Rfees 2(1).15 EPC The prescribed amount for each claims fee, is:

- a fixed amount for the 16th and each subsequent claim up to a limit of 50

- a higher fixed amount for the 51st and following claims.

Applicants are referred to the latest updated version of the EPO fee regulations for changes in the amounts of these fees.

Time limit

R162(1) EPC The fee must be paid within the time limit according to R159(1) EPC which is:

- 31 months from the priority date of the application [or from the filing date, if no priority is claimed].

Late payment on invitation

R162(2) EPC If the claims fees are not paid in due time, they may still be paid within six months from a communication concerning the failure to observe the time limit.

- If within this period amended claims are filed, the claims fees due are computed on the basis of such amended claims.

Euro-PCT Guide 505 This period is not extendable.

E-VIII, 2.1.3 The invitation to pay claims fees under R162(2) EPC is sent together with the communication under R161 EPC informing the applicant of his right to amend the application [see also sub-section below: amount payable if the claims are amended].

No surcharge is due in case of late payment.

R162(3) EPC Any claims fees paid within the period under R162(1) EPC and in excess of those due under R162(2) EPC, second sentence, is refunded.

If within the additional R162(2) EPC period to pay claims fees the applicant files a new set of claims which results in the amount of claims fees already paid being in excess, the excess is refunded. See below under “Amount payable if claims are amended”.


R162(4) EPC Where a claims fee is not paid in due time, the claim concerned is deemed to be abandoned.

Euro-PCT Guide 508 The applicant is notified if a claim is deemed abandoned.

J15/88, E-VIII, 2.1.3 &

Euro-PCT Guide 508 Where subject matter which is present in a claim deemed abandoned according to R162(4) EPC does not appear in the description or drawings*, it cannot be re-introduced into the application.

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Euro-PCT Guide 508 does not mention the drawings, but E-VIII, 2.1.3 and J15/88 do.

J9/84 Abandoning a fee exempt claim [e.g. claim 2] does not transfer the fee exemption to another claim.

B-III, 3.4 Where a claim is deemed abandoned for non-payment of a claims fee, [and a supplementary search is performed by the EPO], that claim is not searched.

- The supplementary search report identifies any claims not searched for this reason.

B-XI, 6 This is also mentioned in the ESOP.

Legal remedies

Art.121(1) EPC Further processing applies to any time limit not respected by the applicant [subject to certain exceptions, which do not include the payment of claims fees].

Further processing is applicable, since it is not excluded by Art.121(4) EPC or by R135(2) EPC.

Rfees 2(1).12 EPC The further processing fee for non payment of the claims fees is 50% of the amount of the claims fees not paid on time.

R136(3) EPC Re-establishment under Art.122 is ruled out for any period for which further processing is available [i.e. in this case].

E-VII, 2.2.1 However, if the applicant fails to request further processing in due time, he may request re-establishment in respect of the time limit for requesting further processing.

Procedure in case of insufficient payment

A-III, 9 If the amount paid [under R45 EPC*] is insufficient to cover all claims from 16 onward, and the applicant has not indicated which claims he wants to keep, he is asked which ones he wants to keep.

* R45 EPC refers to claims fees paid in respect of direct European applications; the principles should, however, be equally applicable to claims fees due for international applications entering the European phase.

Accordingly, the applicant would be well advised to clearly indicate which claims he is paying for and do so within the time limit for late payment according to R162(2) EPC (six months from the notice of failure to pay). If he fails to indicate this, the EPO may apply Rfees 6(2) EPC and find that the claims fees are deemed not paid, because the purpose of the payment is not indicated.

Amount payable if claims are amended

R161 EPC After entry into the European phase, the applicant is invited to amend the application within a non-extendable period of six months from the invitation.

E-VIII, 2.1.3 The communication inviting late payment of the claims fees [R162(2) EPC] and the filing of amendments to the application [R161 EPC] is one in the same.

Consequently these two invitations both have the same time limit - six months and non-extendable in both cases [Euro-PCT Guide 505] and both six month periods start and expire on the same day.

Euro-PCT Guide 504 Subject to the exception mentioned below*, the claims fees to be paid within the above six month period are calculated based on the number of claims of the application documents indicated for further prosecution of the application in Form 1200.

* R162(2) EPC [As an exception to the above], if the applicant amends the claims in the above six month period [which starts and expires after filing Form 1200], the amount of the claims fees is calculated on the basis of the amended set of claims on file at the end of this period.

Euro-PCT Guide 506 Where the applicant amends the claims within this period, this new set of claims is then used to calculate the claims fees.

If the applicant files amended claims in this period, the claims fees to be paid within this same period are then those due for the amended claims which he files, minus any claims fees which he has already paid. For example:

- International application enters European phase all acts completed, except payment of claims fees.

- Application has 20 claims on entry into the European phase [5 claims fees due - R162(1) EPC].

25.05.2009 31 month period expires [R159(1) EPC]

No claims fees paid yet

25.06.2009 EPO sends invitation to the applicant to pay claims fees late [R162(2) EPC] and, if applicant so wishes, to amend the application (R161 EPC).

22.12.2009 Applicant files a new set of 19 claims and pays 4 claims fees. This is within the six month time limit which, taking into account the 10 days for notification [R126(2) EPC] would expire on 05.01.2010.

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It may also happen that the applicant pays all claims fees due in the 31 month period and then files amended claims, with more claims that the original set, for example:

- International application enters European phase all acts completed, except payment of claims fees.

- Application has 17 claims on entry into the European phase [2 claims fees due under R162(1) EPC]

19.05.2009 Applicant pays 2 claims fees

25.05.2009 31 month period expires (R159(1) EPC)

25.06.2009 EPO sends invitation to the applicant to amend the application (R161 EPC).

22.12.2009 Applicant files a new set of 20 claims. In such case he must also pay 3 additional claims fees within the six month time limit (since 5 claims fees are due, but he only paid 2 on entry into the European phase).

One R162(2) EPC communication only

Euro-PCT Guide 604 If additional claims fees become due as a result of amendments filed in response to the R161 EPC / R162(2) EPC communication, no further communication under R162(2) EPC is sent.

Thus, in these cases the applicant must pay any due claims fee within the time set in the R161 EPC / R162(2) EPC communication.

For example:

Application has 20 claims on entry into the European phase. No claims fees are paid within the 31 month period to enter the European phase.

25.06.2009 R161(2) EPC / R162 EPC communication sent inviting late payment of claims fees (based on the current set of claims, 5 such fees are due) and inviting the applicant to file amendments.

22.12.2009 Applicant files a new set of 25 claims (i.e. 10 claims fees become due in total - 5 more than previously due). He must pay 10 claims fees before the end of the six month time limit set in the above communication. He does not get another communication under R162(2) EPC to pay the extra 5 claims which have become due as a result of his amendment.

Mandatory reply to R161 EPC communication

For applications where all of the following conditions apply:

- the EPO prepared the WO-ISA or IPER - the EPO was the ISA

- the EPO-WO-ISA or -IPER was negative

then the EPO will require the applicant to reply to the WO-ISA, or, if prepared by the EPO, the IPER. For more details see § IV.6.1 and sub-sections.

For applications where the EPO was the SISA, then R161(1) EPC requires the applicant to reply to the comments accompanying the SIS-search report under R45bis.7(e) PCT [where negative] and to do so within the time limit under R161(1) EPC.

Refund of excess claims fees

R162(3) EPC Any claims fees paid within the period under R162(1) EPC and in excess of those due under R162(2) EPC, second sentence, are refunded.

Euro-PCT Guide 507 Where the applicant amends the claims after entry into the European phase according to R161 EPC [during the R162(2) EPC grace period] and this new set of claims contains fewer claims than the original set, then any excess already paid is refunded.

Example:

- the applicant entered the European phase with 20 claims from the International phase and paid 5 claims fees within 31 months of the priority,

- EPO sent R161 EPC communication inviting him to file amendments,

- the applicant filed within six months of this invitation, an amended set of 17 claims.

In this case, the EPO will refund 3 claims fees.

Multiple sets of claims

A-III, 9 With multiple sets of claims, claims fees are due in respect of the set with the most claims [if this has 16 or more claims].

According to R138 EPC, under certain limited circumstances it is possible to have different sets of claims for different EPC contracting states. This is where, for example, prior rights exist in respect of a part of the claimed subject matter for certain EPC states and not for others [for more information on this topic see the book “Procedural law under the EPC-2000” Ed. 3, 2013, from the same authors, § XI.2.5.4 and sub-sections].

It is also possible that multiple sets of claims exist, where the applicant files auxiliary requests on EP entry [R159(1)(b) EPC] or after EP entry [R161 EPC]. However, such auxiliary

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requests are not accepted by the EPO as IPEA in the international phase [Euro-PCT Guide 356].

Enumerated embodiments

J5/87 Enumerated embodiments annexed to the description and acting as a possible subject of examination, and appearing as claims according to Art.84 EPC and R29 EPC_1973 [now R43 EPC], are to be charged as claims.

However, the following decisions followed a different approach:

J15/88 & J16/88, J29/88, J25/89, J26/89, J27/89,

J28/89, J34/89 &

T490/90 Enumerated embodiments, where these are not referred to as claims, and where claims are already present in the application which are referred to as such, are not subject to the payment of a claims fee.

Enumerated embodiments have often been used in the past as a ruse to avoid the payment of claims fees. To combat this problem the EPO has often applied R86(4) EPC_1973 [now R137(5) EPC]. This rule makes it difficult for the applicant to introduce the subject matter from these embodiments, originally part of the description, into new or amended claims filed during the examination procedure.

Waiving R162(2) EPC communication

OJ 2015, A94 The applicant can waive the communication under R161 EPC/R162(2) EPC.

- This is only possible if the applicant does the following on [or before] entry into the EP phase:

- pays any claims fees due, and - replies to the WO-ISA/IPER (if required)*

* If the EPO was not the ISA or the SISA, the communication is according to R161(2) EPC and a reply is not required (E-VIII, 3.1, see also § IV.6.2).

* If the EPO was the ISA or SISA, then the communication is according to R161(1) EPC and a reply is usually required [see § IV.6.1]. However, a reply is not required where:

- The WO-ISA/IPER was positive [E-VIII, 3.3.2] or

- The applicant already replied to the WO-ISA/IPER on or before entering the EP phase* [E-VIII, 3.3.1].

* This can be done by filing amendments and/or arguments. However, the applicant

must mention this on Form 1200 in order for a reply not to be required [E-VIII, 3.3.5].

Point 6.1(d) AAD When automatic debiting is requested, the claims fees are paid on the last day of the time limit under R161 EPC/R162 EPC [these two communications are sent together – E-VIII, 2.1.3].

This means that, where automatic debiting is used and claims fees are due [because the applications contains more than 15 claims - R162(1) EPC], the communication under R161 EPC cannot be waived. Consequently, in order for the waiver to be possible, the applicant will have to pay any claims fees due on or before EP entry [as required by OJ 2015, A94] and will have to do so by means other than automatic debiting.


OJ 2013, 156 Claims fees do not need to be paid in order to achieve early entry into the EP phase under Art.23(2) PCT or Art.40(2) PCT [since they can be paid after EP entry according to R162(2) EPC].

For more details, see § IV.1.2.4.

IV.8.6. Fee for the supplementary European search

For the details on this, see § IV.9.2.

IV.8.7. The examination fee

For the details on this, see § IV.10.1 and relevant sub-sections.

IV.8.8. The renewal fee

Renewal fees are charged by EPO for the third and subsequent years calculated from the date of filing of the European patent application. This also applies to Euro-PCT applications. The procedure for payment is laid down here below.

Which due date is applicable

R159(1)(g) EPC When an International application enters the regional phase before the EPO, the renewal fee under Art.86(1) EPC for the third year must be paid by the later of the following dates:

- the "due date" under R51(1) EPC

- 31 months from the priority date, or filing date if no priority is claimed, under R159(1)(g) EPC.

The first or the second due date become applicable depending on whether a

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priority has been claimed, and to what extent the priority year has been used. In most cases, since a priority is claimed using the entire priority year, the first time limit applies (see the following sections).

Amount of third year renewal fee

Rfees 2(1).4 EPC This rule sets the amount of EPO renewal fees.

IV.8.8.1. Due date under R51(1) EPC

Due date and time limit for payment when R51(1) EPC applies

Art.86(1) EPC Renewal fees are due to the EPO in respect of the third year and each subsequent year calculated from the date of filing of the application. They must be paid to the EPO according to the rules [i.e. R51 EPC].

R51(1) EPC The renewal fee in respect of the coming year shall be due on the last day of the month having the anniversary of the filing date.

Accordingly, where R51(1) EPC applies, the renewal fee for the third year is due on the last day of the month holding the second anniversary of the filing date (and must be paid by this date). For an application filed on 25.03.2000, the first renewal fee is due 31.03.2002. See also A-X, 5.1.1 & A-X, 5.2.4.

Example where R51(1) EPC applies

06.03.2007 (Tu) Priority date

06.03.2008 (Th) International filing date

06.10.2009 (Tu) End of 31 month period from priority under R159(1) EPC

31.03.2010 (We) Last day of the month holding the second anniversary of the filing date: this is the R51(1) EPC due date, and is the last date for normal payment.

Since here the R159(1)(g) EPC period expires before the due date under R51 EPC, the due date under R51 EPC is then the applicable date for normal payment without surcharge.

If any of the EPO filing offices were to be closed on this day, the fee could be paid on the first following day when all filing offices are open [J4/91].

According to R51(1) EPC this fee may further not be paid more than three months before 31.03.2010.

EPO closed on due date

J4/91 Here the filing date applies, not the priority date. If the due date according to R37 EPC_1973 [now R51 EPC] falls on a

day when one or more of the EPO filing offices is closed, payment may be made without surcharge on the next working day where all filing offices are open.

Pre-payment period

R51(1) EPC Renewal fees may not be paid more than three months before they fall due.

OJ 2009, 118 As of 01.04.2009 the period for advance payment of renewal fees is reduced from one year to 3 months before the due date.

OJ 2009, 118 The new, shorter period for advance payment applies to all applications, irrespective of the date of filing date of direct European patent applications or the date of entry into the European regional phase of Euro-PCT applications.

A-X, 5.2.4 Renewal fees received shortly before the start of the advanced payment period are retained by the Office, but the payment will not take effect until the first day of the pre-payment period.

OJ 2009, 118 This reference indicates that “shortly before” means up to one month before the start of the 3 month pre-payment period.

A-X, 5.2.4 However, where the EPO keeps the payment, payment will only be deemed to have occurred on the first date of the pre-payment period.

This means that if the amount of the renewal fee increases between the date of actual payment [up to one month before the three month pre-payment period] and the date when the payment is considered to have been made [three months before the due date – the date when the payment is legally made], there will be a shortfall, because the amount which must be paid is that due when the payment is legally made [A-X, 5.1.2].

Example of pre-payment

A-X, 5.2.4 This Guideline gives the following examples of how to calculate the earliest pre-payment date for the renewal fee when R51(1) applies.

- The events marked “*” in the examples below are not in this Guideline, but are consistent with the teaching of these examples and help to clarify them:

Example #1

14.11.2007* Earliest priority date

14.11.2008 PCT-filing date

14.06.2010* Expiry of 31 month period [R159(1) EPC]

31.08.2010 Earliest possible date for pre-payment of renewal fee.

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30.11.2010 Due date for third year renewal fee [R51(1) EPC]

Example #2

14.05.2008* Earliest priority date

14.05.2009 PCT-filing date

14.12.2010* Expiry of 31 month period [R159(1) EPC]

28.02.2011 Earliest possible date for pre-payment of renewal fee.

31.05.2011 Due date for third year renewal fee [R51(1) EPC]

This Guideline clarifies, by the above examples, that where R51(1) EPC applies, in order to work out if the renewal fee can be validly pre-paid the following calculation must be done. This is the last day of the third month prior to the due date.

However, this Guideline does not clarify what happens if the earliest pre-payment date is earlier than the expiry of the period under R159(1) EPC. Except in the case of early processing, there is no European application before expiry of this period. This is demonstrated by the fact that no divisional can be filed before this point in time [J18/09 and E-VIII, 2.4.1]. Consequently, in this case it would appear that the earliest pre-payment date would be the date of expiry of the period under R159(1) EPC.

IV.8.8.2. Thirty-one month period under R159(1) EPC

R159(1)(g) EPC The Renewal fees can be paid up to 31 months from the filing date [or from the priority date if priority is claimed] where this is later than the due date under R51(1) EPC.

In practice, the time limit under R159(1) EPC becomes applicable only if no priority is claimed, or where it is claimed but using only part of the priority year.

Pre-payment period

Under R51(1) EPC and OJ 2009, 118, the renewal fee can be paid up to three months before it falls due. However, except in cases where early processing is requested, before expiry of the period under R159(1) EPC there is as yet no European application. This is demonstrated by the fact that no divisional can be filed before this point in time [J18/09 and E-VIII, 2.4.1]. Consequently, it does not appear possible for the applicant to use the three-month pre-payment period under

R51(1) EPC, where the due date is delayed to fall on expiry of the R159(1) EPC.

Example where R159(1) EPC applies:

02-03-07 (Fr) Priority date (relevant event triggering the thirty-one month period)

03-08-07 (Fr) Filing date

31-08-09 (Mo) Due date under R51(1) EPC

02-10-09 (Fr) End of 31 month period under R159(1) EPC, which in this case is the last date for normal payment, since it is expires later than the R51 EPC due date.

L5/93 (abandoned) Here the "last day of the month" rule of R51(1) EPC does not apply. The due date falls on the date that the 31 month period under R159(1) EPC expires.

Extension of period under R134(1) EPC

L5/93 (abandoned) When the expiry of the 31 month time falls on a holiday, extension of the time limit to the next working day under R134(1) EPC is applicable if the 31 month date according to R159(1) EPC becomes the relevant due date under R159(1)(g) EPC.

Abandoned legal advice L5/93 refers to R104b(1) EPC_1973 and also to R104b(1)(e) EPC_1973, which are the old versions of R159 EPC and to R85(1) EPC_1973, now R134(1) EPC.

Example:

06.02.07 (Tu) Priority date [triggers 31 mon period] 03.08.07 (Fr) International filing date 31.08.09 (Mo) Due date under R51(1) EPC 06.09.09 (Su) EPO filing offices closed 07.09.09 (Mo) End 31 month period under R159(1) EPC*

* This period is extended under R134(1) EPC. Its expiry constitutes the last date for payment without surcharge.

Early processing

OJ 2013, 156 Where the due date for the renewal fee according to R51(1) EPC falls before the date the applicant requests early processing, payment of the renewal fee is required to achieve early processing.

For more details see § IV.1.2.3.

IV.8.8.3. Late payment plus surcharge

R51(2) EPC Where the applicant fails to pay the renewal fee by the due date, he can pay it within six months of this date plus a surcharge.

Rfees 2(1).5 EPC The surcharge is 50% of the late paid renewal fee.

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The six month time limit for late payment plus surcharge is calculated differently, depending on whether the due date under R51(1) EPC applies or the time limit under R159(1) EPC. See below:

Period for payment with surcharge when due date under R51(1) EPC applies

J4/91 The six month period for late payment of the renewal fee [now under R51(2) EPC] expires on the last day of the sixth month after the due date.

Here the last day for payment is always the last day of the month, irrespective of whether this month has more or less days than the one which held the second anniversary of the filing date.

EPO closed on R51(1) EPC due date

J4/91 If the due date according to R37 EPC_1973 [now R51 EPC] falls on a day when one or more of the EPO filing offices is closed, payment may be made without surcharge on the next working day where all filing offices are open.

However, the due date does not move to a later date, it remains calculated as above and the six month period of grace is still calculated from the R51 EPC due date, even though it fell on a holiday.

Example 1

05.02.2007 (Mo) Priority date

05.02.2008 (Tu) International filing date

07.09.2009 (Mo) End of 31 month period from priority according to R159(1) EPC, extended from 05.09.2009 (Sa & Su EPO closed)

28.02.2010 (Su) Last day of the month holding the second anniversary of the filing date (R51(1) EPC due date). This is the due date, even though the EPO is closed (Su).

01.03.2010 (Mo) Last day for payment without surcharge according to R51(1) EPC; payment date is extended under R134 EPC from 28.02.2010 [however, the due date remains 28.02.2010 - J4/91].

31.08.2010 (Tu) End of the 6 month period for late payment plus surcharge* calculated according to J4/91 [last day of the sixth month calculated from the due date - 28.02.2010].

* If this six month period had been calculated as a normal 6 month period according to R131(4) EPC it would have expired on 30.08.2003 (Mo), (extended from 28.08.2010 (Sa).

Example 2

The example below shows that J4/91 also applies where the sixth month after the due date has fewer days than the month which held the second anniversary of the filing date. The last day of the month is the relevant day also in this case.

06.03.2007 (Tu) Priority date.

06.03.2008 (Th) International filing date.

06.10.2009 (Tu) End of 31 month period from priority according to R159(1) EPC.

31.03.2010 (We) Last day of the month holding the second anniversary of the filing date [R51(1) EPC due date]. Last day for payment without surcharge, applicable here since it expires later than the 31 month time limit.

30.09.2010 (Th) End of the 6 month period for late payment plus surcharge*.

* The 6 month period for late payment is not carried over into the seventh month, but remains the last day of the sixth month after the due date.

Time limit for payment with surcharge when R159(1) EPC applies

A-X, 5.2.4 &

OJ 1993, 229 If the 31 month time limit of R159(1)(g) EPC expires later than the one under R51(1) EPC then the 6 month time limit for late payment plus surcharge:

- starts from expiry of this 31 month time limit [possibly extended under R134 EPC] and

- ends on the corresponding day of the month 6 months later [also possibly being extended under R134 EPC].

This means that here the "last day of the month" rule of J4/91 is not applicable and that extensions under R134 EPC are applicable to calculate both the end of the 31 month time limit and the start of the 6 month additional period.

In this case the second time limit is computed starting the day after the expiry of the first one (possibly extended under R134 EPC). This is an example of what is commonly referred to as an "aggregate time limit" [see OJ 1993, 229, which is still referred to in OJ 2009, 129].

Example

05.02.2007 (Mo) Priority date (relevant event for the start of the thirty-one month period)

06.08.2007 (Mo) International filing date

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31.08.2009 (Mo) Last day of the month holding the second anniversary of the filing date [R51(1) EPC due date].

07.09.2009 (Mo) End of 31 month period from priority according to R159(1) EPC, extended from 05.09.2009 (Sa), under R134(1) EPC.

Time limit for payment without surcharge, is the 31 month period under R159(1) EPC since it expires later than the due date under R37(1) EPC.

08.03.2010 (Mo) End of the 6 month period for late payment plus surcharge under R51(2) EPC, calculated according to A-X, 5.2.4; extended from 07.03.2010 (Sunday, EPO closed).

Suspension of PACE

OJ 2015, A93 If the applicant has requested accelerated processing of the application [PACE], but the applicant does not pay the renewal fee by the due date under R51(1) EPC, PACE is suspended/

The fact that PACE is suspended means that the accelerated prosecution is put on hold until the applicant pays the renewal fee and surcharge in question, when acceleration recommences or until the application is deemed withdrawn on expiry of this six month period without payment [under Art.86(1) EPC and J4/92] and PACE terminates according to OJ 2015, A93 [for more details see § IV.1.3.5].

OJ 2015, A93 explicitly states that PACE is suspended where the R51(1) EPC date applies and the fee is not paid by this date, but does not explicitly state that PACE is suspended where the R159(1)(g) EPC date applies and the renewal fee is not paid by this date.

However, it would make sense to suspend PACE also in the case where the R159(1) EPC date applies, since in both cases, failure to pay the renewal fee by the due date [R51(1) EPC or R159(1)(g) EPC] does not result directly in deemed withdrawal [see § IV.8.8.4], but does mean that this may potentially occur on expiry of the 6m period for late payment with surcharge under R51(2) EPC.

IV.8.8.4. Failure to pay a renewal fee - loss and re-establishment of rights

Art.86(1) EPC If a renewal fee is not paid in due time the European application is deemed withdrawn.

Date on which loss of rights occurs

J4/92 If the application is deemed withdrawn under Art.86(3) EPC_1973 [now Art.86(1) EPC], then the loss of rights takes effect after expiry of the 6 month period under R51(2) EPC.

If on the last day of the 6 month period the EPO is closed, the renewal fee can still be paid with surcharge on the first day on which the Office is open again under R134(1) EPC. On this day the application is still pending. Consequently, it appears that the deemed withdrawal takes effect the day after, regardless of whether the EPO is open on this date.

Further processing is not applicable

R135(2) EPC Further processing is not applicable for failure to meet the time limit for paying the renewal fees.

Re-establishment is applicable

Art.122(4) EPC &

R136(3) EPC &

Euro-PCT Guide 599 Re-establishment for non payment of renewal fees is not excluded by Art.122 EPC.

This means that the applicant may request re-establishment for failure to pay the renewal fees in time. Under EPC-2000, re-establishment can be requested within the normal time limits of R136(1) EPC, i.e. the earlier of:

- 2 months from removal of the cause of non-compliance, and

- 1 year from expiry of the unobserved time limit calculated as an aggregate time limit starting from the day after the unobserved end of the 6 month R51(2) EPC period for payment with surcharge [possibly extended under R134(1) EPC, if on the last day the EPO is closed].

Rfees 2(1).13 EPC Fee for re-establishment of rights.

Changes under the EPC-2000

Under the previous version of the EPC [Art.122(2) EPC_1973 in force until 13.12.2007] the six month period for late payment of renewal fees was deducted from the maximum one year period for requesting re-establishment of rights [then called “restitutio in integrum”]. This meant that the maximum one year period only ran for one year from the due date and not from the loss of rights which occurred at the end of the six month period for late payment with surcharge.

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This no longer applies, this provision was deleted from Art.122 EPC and now the maximum period of one year starts with the loss of rights at the end of the six month period for late payment with surcharge under R51(2) EPC.

All due care for payment of renewal fee

J12/84 Re-establishment under Art.122 EPC for non payment of renewal fees cannot be based on the omission of a notification from the EPO that the fee was not paid within the due date [the omission of this notification is not evidence that the applicant exercised all due care in the sense of Art.122 EPC].

J31/89 The applicant cannot base a request for re-establishment on an incorrect interpretation of the EPC for the calculation of the time limit for late payment of renewal fee plus surcharge which led to the Art.86(2) EPC_1973 [now R51(2) EPC] time limit being missed.

If the applicant has interpreted the EPC incorrectly, this is evidence that he did not apply all due care.

Incorrect information from the EPO

J1/89 However, if the applicant is misled by an EPO communication into paying the renewal fees late, they are treated as if paid in time.

J14/94 If the applicant fails to pay a renewal fee and the EPO leads the public to believe that no loss of rights has taken place, plus the EPO accepts later renewal fees, and continues the examination procedure for several years without informing the applicant of any loss of rights, the fee is deemed paid in time.

Re-establishment as auxiliary request

J23/96 The applicant in this case was found by the EPO not to have paid the renewal fee within the six month period under Art.86(2) EPC_1973 [now R51(2) EPC]. He was sent a communication under R69(1) EPC_1973 [now R112(1) EPC] indicating that the application was deemed to be withdrawn under Art.86(3) EPC_1973 [now Art.86(1) EPC].

The applicant then made a main (MR) and auxiliary request (AR):

MR The applicant disputed the finding that he had not paid in time and asked for a decision that the payment was in time under R69(2) EPC_1973 [now R112(2) EPC]

AR In the event of denial of the main request, the applicant requested re-establishment under Art.122 EPC for the failure to pay the renewal fee on time.

Before issuing an adverse decision, the EPO should have considered both requests, not just the first one. Failure to consider the auxiliary request constituted a substantial procedural violation.

Art.122 EPC & renewal fee agencies

J27/90 The applicant in this case contracted out the payment of renewal fees to a renewal fee agency, which failed to pay the fee on time.

However, the responsibility for non payment of the renewal fee was still that of the representative. The removal of the cause of non-compliance with the six month period for late payment*, was the date that the representative was notified of the loss of rights, not the agency.

* This triggers the start of the two month period for requesting re-establishment [then Art.122(2) EPC_1973 now R136(1) EPC].

More information concerning the procedure for requesting re-establishment can be found in § IV.17.2.

IV.9. The supplementary search

All PCT applications are subject to an international search which is carried out by an International Searching Authority (ISA). In the case of Euro-PCT applications, the International search report prepared by the ISA takes the place of the EP search report [Art.153(6) EPC].

In addition, and subject to some exceptions, [i.e. where the International search was performed by the EPO as ISA or where the EPO performs a SIS-search], all Euro-PCT applications entering the regional phase before the EPO are subject to a “supplementary search report” [Art.153(7) EPC]. This is drawn up by a search division of the EPO, which also prepares a “European search opinion” [ESOP] on whether the application appears to meet the requirements of the EPC [R62 EPC]. The search report, together with the ESOP make up the so called “extended European search report” [EESR].

A search fee is due for all Euro-PCT applications subject to a supplementary search [R159(1)(e) EPC].

part iv iv.7.5. republication of the international iv.8. fees

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