Author: Nigel Tucker
1 February, 2009
Amendments have been made to the Implementing Regulations of the European Patent Convention, along with the accompanying Rules relating to Fees, which will become effective for applications filed or entering the European regional phase on or after 1 April 2009. As a result, careful consideration should be given to filing early to avoid the potential fee increases, particularly for applications that are lengthy and/or contain many claims.
When the changes apply
The changes apply to any European patent application filed with the EPO on or after 1 April 2009, and any International application entering the regional phase on or after that date. For international applications entering the regional phase early, immediate processing of the application must also be requested. The changes also apply to divisional applications, so it is advisable to consider filing any divisional applications early to beat the 1 April 2009 fee increases.
From 1 April 2009, a second tier of claims fees is introduced for claims over 50. The lower fee remains as €200 per claim and still applies from claim 16 onwards. However, this fee extends only as far as claim 50, and claims 51 and beyond are subject to a higher fee of €500 per claim. Hence, we recommend looking to reduce claim numbers in applications containing substantially more than 15 claims.
Where applicants have a strong desire to file applications with more than 50 claims, we recommend filing before 1 April 2009 to beat the extravagant fee increase. For applications with 50 or fewer claims, or where amendment will bring the total to 50 or fewer, there is no need to file ahead of 1 April 2009.
Claim amendments of non-PCT applications should be made upon filing. For ex-PCT applications, the application must be filed prior to 1 April 2009 for the old fee regime to apply (with a request for early processing, where required), but amendment of the claims may be deferred until the EPO issues an invitation to amend the application and pay claims fees under Rules 161 and 162 EPC (typically a month or so after processing in the regional phase commences).
Different strategies are available for how best to amend an application to reduce the number of claims. Specific advice may be obtained from your usual adviser at Boult Wade Tennant.
Additional fee (for “excess” pages)
As of 1 April 2009, the EPO will charge an “additional fee” for any page in excess of 35 (that is, for the 36th and subsequent pages) of any application upon filing. The additional page fee is modest at €12 per page.
For ex-PCT applications, the fee is payable upon regional phase entry. Any amendments later filed in response to the Rule 161/162 invitation are disregarded. Hence, if an applicant chooses to rely upon Rules 161 and 162 EPC to reduce claim numbers after regional phase entry, this will result in a proportionately lower claims fee, but does not affect any excess pages fee.
While it may be tempting to amend an application to reduce its length to 35 pages or less, the attorney time in considering and making the amendment will usually be more than the potential saving of €12 per page. However, if an ex-PCT application is over 35 pages long and where a review of the claims is intended to minimise or avoid additional claims fees, it may be advisable to amend the claims at the time of Regional Phase entry to secure the slight further fee reduction for additional pages.
Amendment may also be advisable for sequence listings. Sequence listings are not counted in the page total, provided that the listing complies with the appropriate WIPO standard and is presented as a separate part of the description. Sequences presented in “raw” form are not exempted, so amendment of lengthy listings to meet the WIPO standard can result in a significant saving.
At present, the applicant can pay a designation fee (€85) for each required contracting state up to a maximum of seven. On paying seven designation fees, all available contracting states are then included automatically.
As of 1 April 2009, a single, flat designation fee will apply in all cases. As a result, there will be no economic reason to designate fewer than seven contracting states. The new fixed total designation fee will be €500: this compares to a capped total at present of €595 (7x €85). As a result, applicants intending to designate five or fewer countries may wish to file ahead of 1 April 2009.
With the introduction of the additional pages fee on filing, the additional pages printing fee ceases to be payable at the grant stage. This applies to applications filed on or after 1 April 2009.
Rule 51(1) EPC has, up to now, allowed renewal fees to be paid validly up to one year before their due date. As of 1 April 2009, this period is being reduced to three months before the due date. This change applies to all applications irrespective of the date of filing or entry into the regional phase.