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Friday, 13 February 2009

April fees foolery from the EPO


The IPKat has just been reminded by patent attorney Donald McNab about a previous post from November 2008, which some readers may have forgotten about. Back then, the IPKat pointed out a decision by the Administrative Council (CA/D 4/08), which introduced a few esoteric changes to the EPC Rules, including a change to the way the EPO takes its fees for applications in the way of page charges. The EPO have recently issued a slightly more helpful notice outlining what the changes, due to come into force on 1 April 2009, actually mean in practice.


(right: the IPKat's French cousin gets confused about 1 April)

As from 1 April, all applications filed at the EPO (including requests for PCT applications to enter the European regional phase) will be subject to further massively increased claims fees and to page charges that were previously payable only on approving the text of an application for grant.  Fortunately the page charge of 12 Euros per page over 35 has not been increased (as the IPKat incorrectly predicted), though this probably has more to do with the general freeze on fee increases at the EPO due to the current economic climate than with any lack of desire to go for a hike.  Also, the massive claims fees of 500 Euros per claim only apply for the 51st and subsequent claims, so are unlikely to affect too many applicants.  For those applications where it does matter, there are some obvious and fairly easy tricks to avoid payment, which all patent attorneys should by now be aware of.

As the notice makes clear, if the new excess claims fees and page charges are to be avoided, all the legal requirements to make a valid European application have to be completed before 1 April, including paying all fees due and, where necessary, making an explicit request for a PCT application to enter the European phase early.  Just to make it a bit more interesting, the current system of paying up to seven designation fees is being scrapped as from 1 April, in favour of a single designation fee of 500 Euros for all applications.  Fortunately, the new single fee is less than seven times the old fee.  The IPKat suspects that the EPO will be having to make quite a few refunds over the next few months as a result.

This all appears to the IPKat like the EPO is playing the game so that very few patent attorneys will be wanting to try to get applications in under the wire to save on a few fees for their client, as the added hassle is probably not going to be worth it.  Perhaps some lessons have been learned from the claims fee fiasco last year. Who knows, the EPO may actually get some more money as a result this time.

3 comments:

Anonymous said...

The page-count fee has been moved from grant to EP phase entry for European Regional Phase applications.

As an academic, but probably in practice not worthwhile, point could you trim an application down to 35 on entry, then magically re-introduce the trimmed pages at R.161 stage based on the application as filed for basis?

David said...

I suspect that the EPO would treat that sort of practice as abandonment of the excised subject matter for that application, and would only allow it to be introduced by way of filing a divisional application. I would like to see someone try it though.

Anonymous said...

Although this Blog is somewhat old, I hope this comment may help me to formulate arguements with the EPO.

Having entered the regional phase in 2008 for an application where the 30 month date fell after April 2009, we have received a demand for payment of the newly introduced page fee. In may opinion, since the regional phase was entered in 2008, there is no legal basis for the demands sent out by the receiving section. Does anybody have any experience of successfully arguing that the EPO demands are essentially a form of extortion and not valid?

Thanks

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