For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Thursday, 20 December 2007

EPO: advance warnings of more expensive things to come

Just before Christmas, when many people are winding down, the EPO has decided to come out with some significant changes to be made to the way European patents are dealt with. Two Administrative Council decisions have recently appeared on the EPO website, both of which will, in different ways, affect how much European applications will cost in future.

Decision CA/D 16/07, which will come into force on 1 April 2008, increases fees for applications across the board. Most increases are fairly small single digit percentage rises, but renewal fees in particular will rise substantially, becoming even more weighted towards the latter end of the life of a patent application pending at the EPO. [The IPKat wonders whether this gives the EPO more of an incentive to be even slower than they are at present, since the longer they hang on to applications the more money they get.]

The second decision, CA/D 15/07, does not come into force until 1 April 2009, but makes some pretty scary changes to the fees, particularly for those who like filing large patent applications with lots of claims, as well as applicants who might want coverage in only a few countries through the European system.


These changes include:


  • Additional fees on filing for applications having more than 35 pages, with each extra page being charged at 12 euros;

  • A single designation fee of 500 euros, to cover all member states (removing the option at present of having fewer than 7 states designated on filing);

  • A dramatic increase in excess claims fees (from 1 April 2008) for more than 15 claims, with 200 euros being charged for each claim, and (from 1 April 2009) 500 euros for the 51st and subsequent claims.

  • The message from this is fairly clear: the EPO wants applicants to be a lot more careful about what they file, and there will be heavy penalties for not playing the game. For example, an application with 50 claims will, after 1 April 2008, cost an extra 7000 euros, and 60 claims (after 1 April 2009) will cost an extra 12,000 euros, compared with only 2250 euros now. Combined with the new strict requirement to sort out unity of invention at the international phase (under rule 164), there will be a big incentive to keep applications slimmed down as much as possible.

    Although these changes do not come into force for a while, they should be affecting decisions being made right now, given the long lead time between filing an application and entering the European phase up to 31 months later. Some applicants may be in for a nasty, and very expensive, surprise later on.

    8 comments:

    Anonymous said...

    The 200 euro claims fee comes in in 2008 with CA/D16/07. This is still a painful 400% increase over the current claims fee.

    No doubt lots of claims with alternatives will be drafted to avoid the increased fees.

    David said...

    Thanks for pointing that out. I missed that one in amongst all the fee changes.

    David said...

    By the way, I wonder what happens for claims 11 to 15, given the existing form of rule 45(1) specifying excess fees for the eleventh claim onwards? Will this have to change, or will it just be that there will be no excess claims fees due for these?

    Anonymous said...

    No claims fees for 1 to 15 as the new rule replaces the existing rule.

    David said...

    But the decision leaves rule 45 unchanged. So what are the claims fees referred to in rule 45 for claims 11 to 15?

    Anonymous said...

    A change in drafting practise will be required - include only the independent claims in the application as originally filed and place the dependent "claims" or specific aspects of the invention in the description.

    Chris Hemingway said...

    Yikes. Have just noticed that the penalty fee for late renewals has jumped from 10% to 50%!

    Anonymous said...

    In order to clear up the confusion relating to excess claims fees after 1 April 2008, the official line from the EPO is as follows:

    "If the European patent application comprises more than 15 claims, claims fees in respect of the 16th and each subsequent claim (Rule 45, paragraph 1, Rule 71, paragraph 6, and Rule 162, paragraph 1) should be paid. Thus, a fee for the 11th to the 15th claim is not foreseen after the 1 April 2008.

    Rules 45(1), 71(6) and 162(1) EPC will be amended accordingly and information hereto will be published in due course on the website of the EPO www.epo.org ."

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