Fee Changes at the EPO

Significant changes to the fee structure for European patent applications are being introduced by the European Patent Office (EPO) which will apply to:

European patent applications filed on or after 1 April 2009; and
International (PCT) applications which enter the European regional phase on or after 1 April 2009.

Applications filed at the EPO prior to 1 April 2009 will remain subject to the current fee structure.

Designation Fees
The most significant change to the fee structure is the introduction of a single, flat designation fee.

Since the implementation of “EPC 2000” in December 2007 all contracting states are automatically deemed to be designated at the time of filing a European patent application. For European applications filed and international (PCT) applications entering the European regional phase on or after 1 April 2009 the designation system will be further simplified by a single, flat designation fee of 500 Euros covering all available states. It will be possible to expressly withdraw individual designations, but this will not affect the amount of the designation fee.

European applications filed and international (PCT) applications entering the European regional phase prior to 1 April 2009 will continue to be subject to the payment of individual designation fees of 85 Euros each, with payment of seven fees being sufficient to cover all available states.

Claims Fees
The additional claims fee was significantly increased to 200 Euros per claim in April 2008. At that time the threshold at which the fee becomes payable was increased to 16 claims (the fee being payable on claims in excess of the first 15). From 1 April 2009, a two-tier system of additional claims fees will be introduced, with the fee being increased further to 500 Euros for each claim in excess of the first 50.

The two-tier system will only apply to European patent applications filed and international (PCT) applications entering the European regional phase on or after 1 April 2009. Thus, for such applications, claims fees will be incurred as follows:

For each claim from the 16^th to the 50^th: 200 Euros; and
For the 51^st and each subsequent claim: 500 Euros

For international (PCT) applications it will continue to be possible to file a reduced set of claims either on entry to the European regional phase or shortly afterwards in response to the communication under Rule 162 EPC. If a reduced set of claims is filed at one of these stages (only), the amount of the claims fees will be appropriately adjusted.

Fee for Applications with Specifications in Excess of 35 Pages
Currently a fee is payable at the grant stage of applications for which the specification exceeds 35 pages in length.

For European applications filed and international (PCT) applications entering the European regional phase on or after 1 April 2009, instead of being payable at the grant stage this fee will be payable as part of the filing fee. The amount of the fee will remain unchanged at 12 Euros per page.

For new European applications which are filed directly (not “ex-PCT”), the pages to be counted are the description, claims, drawings and one page for the abstract, in the language of filing. Pages forming part of a sequence listing which complies with WIPO Standard ST.25 do not count, but will be counted if this Standard is not met.

For international (PCT) applications entering the European regional phase, the pages are to be counted on the basis of the International application as published, any amendments under Article 19 PCT, and one page for the abstract.

Amended pages may be filed to reduce the amount of the fee, but these amendments must be made available to the EPO by the date of payment of the additional fee and within 31 months of the earliest priority date.

A summary of the changes can be found on the website of the EPO, see here.

Practical Advice for Applicants
The fees for applications containing more than 35 pages or more than 50 claims will increase under the new fee structure. Applicants may therefore wish to consider the following options:

Filing certain applications prior to 1 April 2009; or
Amending applications prior to filing to reduce the number of claims and/or pages of the specification. However, care should be taken not to delete description which is necessary to enable the skilled person to carry out the invention.

Applicants may also wish to consider filing applications prior to 1 April 2009 where only a limited number of contracting states need to be designated.

Filing Dates
New European patent applications which are filed directly (not “ex-PCT”) may be filed before or after the date on which the fee changes take effect. In this way, applicants may select whether to have the fees calculated using the current (old) fee structure or the new fee structure. However, we would only recommend delaying the filing of a new application if a valid claim to priority can be made for the whole subject-matter of the application.

For international (PCT) applications the position is more complicated. International applications for which the 31 month time limit for entering the European regional phase expires before 1 April 2009 will, and can only, be subject to the current (old) fee structure. However, applications for which the 31 month time limit expires on or after 1 April 2009 may be subject to either fee structure depending on when the European regional phase is formally entered. For most such cases an explicit request for early processing will need to be filed in order to qualify for the current (old) fee structure.

Amendment of International (PCT) Applications
International (PCT) applications entering the European regional phase may be amended to reduce the number of claims and/or the number of pages of the specification. In general, these amendments will need to be available in good time before the 31 month deadline for entering the regional phase if they are to form the basis for fee calculations.

An amended set of claims may also be filed shortly after entry to the regional phase in response to the communication under Rule 162 EPC. Although the claims fees will then be calculated on the basis of these claims, any adjustment will usually take the form of a refund of already-paid fees.

Any questions regarding the new fee structure should be addressed to your usual Elkington and Fife contact.

James Anderson
Elkington and Fife LLP
February 2009
james.anderson@elkfife.com