Upcoming EPO fee increases - 1st April 2008 Deadline

(CPA Deadline of 29 February for renewal fee instructions)

The European Patent Office has announced fee increases to be implemented in two stages, from 1^st April, 2008 and from 1^stApril, 2009.

 

Key points to note

As of 1^st April, 2008, most renewal fees will be substantially increased and the surcharge for late payment increases to 50% of the missed renewal fee.

Accordingly, our general recommendations are:

1. If a renewal fee is overdue now, pay it with the surcharge before 1^st April, 2008.

2. If the filing date (PCT or EP) was before 1^st April, 2005, pay the next renewal fee before 1^st April, 2008. The older the application, the greater the saving.

3. If you want to file a divisional application, do so and pay the fees before 1^stApril, 2008, because accumulated renewal fees are payable on filing the divisional application. Again, the older the parent application, the greater the saving.

In addition, excess claims fees for each of the 16^thand subsequent claim will increase to 200 Euros (500 Euros for the 51^stand subsequent claim on 1^st April, 2009).

Accordingly, our general recommendation is:

4. If you intend to file an EP application or enter the EP regional phase from a PCT, and you wish to maintain more than 15 claims, do so and pay the fees before 1^stApril, 2008.

For further details, please see the EPO website www.epo.org. Our revised fee schedule is being circulated to clients by mail.

 

Summary of changes

For 2008, the greatest increases apply to renewal fees and excess claims fees.

Renewal fee increases vary, depending on the year, from around 20-60%, except for the renewal fee for the third year, which stays the same. Also, the surcharge for late payment of a renewal fee, in the six month grace period, increases from 10% of the renewal fee to 50%.

For claims, an excess claims fee of 200 Euros will be payable for each claim from the 16^th claim upwards; currently an excess claims fee of 45 Euros is payable for each claim from the 11^thclaim upwards.

In addition, an increase of around 5% is applied to most other fees.

For 2009, the most significant changes lie in the designation fee, the excess claims fees, and a fee based on the number of pages of an application.

In place of a designation fee (currently 80 Euros) for each contracting state designated, a single designation fee of 500 Euros is to be paid, irrespective of the number of designations (not including extension states).

For claims, an excess claims fee of 200 Euros will be payable for each claim from the 16^th claim to the 50^th claim, and an excess claims fee of 500 Euros will be payable for each claim from the 51^st claim upwards.

A fee for the 36^th page and each subsequent page of 12 Euros will be payable on applications. A similar fee currently payable at grant will be abolished, so this change effectively moves the payment of the fee from the grant stage to the application stage.

 

Comment

The changes in the excess claims fees and the fee based on the number of pages are clearly intended to encourage applicants to limit the size of applications. The changes in the designation fee in 2009 follows on from previous changes in practice regarding designations and also amendments in EPC 2000, including those increasing flexibility for the EPO regarding payment of designation fees. More specifically, since 1997, the pre-crossed box in the Request for Grant form became an express designation of all contracting states, and subsequently the 1999 fee reform mean that a maximum of 7 designation fees were payable. As a result, according to the EPO, “most” applicants effectively designate all contracting states. Also,according to EPC 2000, prior applications are now citable for novelty purposes under Article 54(3) for all contracting states, not just common designations, which aligns with the concept of a single designation of all contracting states.

 

General Advice

It may be advisable to pay renewal fees due after 1^stApril, 2008 beforehand. Renewal fees can be paid up to one year in advance. Please note renewal agencies may require instructions well in advance and may make additional charges for special handling.[1] Payment of renewal fees in the grace period should be avoided if possible. Divisional applications require payment of accumulated renewal fees on filing, so if divisional applications are contemplated, consider filing these now (before 1^st April, 2008) rather than close to the deadline for filing (date of grant).

For applications with large numbers of claims, consider filing before 1^st April, 2008, or revising the specification before filing to reduce the number of claims. For example, claims can be transferred to the description in the form of paragraphs providing basis to be reintroduced later as claims if appropriate. Multiple claim dependencies are acceptable before the EPO and can be used to reduce the total number of claims.

If 5 or fewer contracting states are of interest, it will be cheaper to file before 1^st April, 2009.

For long specifications, adjust the page layout (line spacings, etc) to reduce the number of pages.

 

Detailed Advice

The above constitutes a general overview. For detailed advice on particular cases,please contact us at info@jenkins.eu.

[1] Computer Patent Annuities are asking for instructions by 29 February 2008.