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Wednesday, 12 November 2008

Pending Patent Page Penalties

The Administrative Council of the European Patent Organisation has just announced a decision that entered into force on 21 October 2008, but was apparently only made public yesterday.  Fortunately, the actual effect of this will not be felt until 1 April 2009 when various other changes to the EPC are due to come into force.  


The decision makes a number of, mostly very minor, changes to the Implementing Regulations of the European Patent Convention.  These include some tidying-up of Rules resulting from the previous decision (see IPKat commentary here and here) to turn the current system of designation fees for each state (up to a maximum of 7) to one where a single designation fee will be payable as from 1 April 2009.  [As an aside, the IPKat wonders what the point of the single designation fee will be.  What is it designed to actually pay for, if there is no choice? Why not just abolish it and raise the fee for examination?]

The change that most patent attorneys and applicants will be most interested to know, however, is that there will be a new page charge for applications as from next April, which the amended Rule 38 will allow for:

"(1) The filing fee and search fee shall be paid within one month of filing the European patent application.

(2) The Rules relating to Fees may provide for an additional fee as part of the filing fee if the application comprises more than 35 pages.

(3) The additional fee referred to in paragraph 2 shall be paid within one month of filing the European patent application or one month of filing the first set of claims or one month of filing the certified copy referred to in Rule 40, paragraph 3, whichever period expires last."

Although there is already a page charge for having applications granted (under Rule 71(3) and A2 of the Rules relating to fees), this new fee will be payable for applications on filing. The actual fee has already been set by a previous decision at 12 Euros, although no prizes are offered for predicting that this will rise between now and next April (thanks to the commenter below for the reminder). The IPKat very much hopes that the EPO have learned some lessons in basic economics from the results of their decision to dramatically raise claims fees (by 400%) earlier this year, which appears to have backfired somewhat. Even the IPKat knows that if you raise taxes too much the likely effect will be to cause revenues to go down, as people make more efforts to avoid paying them.  Would any readers care to take a guess at to what the page charges are actually going to be (or even what they should be)? Will they be the same, more or less than the 12 Euros already set? 

For those wanting to see the changes in context, IPKat team member David has amended his copy of the EPC to include them (prospectively, at least).  The document (EPC2000 1 April 2008.pdf) is available on the IPKat's Google Groups website. 

5 comments:

Anonymous said...

So, the EPO are thinking about introducing an additional fee if the application is longer than 35 pages. Is it too difficult to work out how applicants will avoid this fee? How about using a smaller font? OK, this will lead to a formalities objection but that is after the filing of the application, so no fee payable.

Anonymous said...

The AC decision CA/D 15/07 has already set the fee at 12 Euros.

David said...

Well spotted. However, no prizes for predicting that this will increase between now and next April.

Anonymous said...

I could hazard a guess as to why they will not just increase the examination fee: you can get a refund of it if they do not examine your application - there is no refund if you withdraw your designations!

Anonymous said...

They can't abolish the designation fee and raise the examination fee because Art 79(2)EPC says that there is a designation fee.

Of course they could change that, but given that it took 7 years to ratify the last changes to the convention I wouldn't hold your breath. One could argue they should have changed Art 79(2) back in 2000, but perhaps they hadn't foreseen the need. They could however set the designation fee to zero and raise the examination fee. In the UK prior to the recent changes to the PA77 there was technically a filing fee (possibly called something else) that had been set at zero. Looks a bit messy to do that though.

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