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Tuesday, 18 February 2014

Accounting meanness from the EPO - no safety net for deposit accounts

This Kat's flea-themed post last week concerning several developments at the European Patent Office elicited several useful comments about other developments at the EPO.  In addition to the news about the change in arrangements for language related fee reductions (see bear-themed item just posted here),  George Brock-Nannestad pointed out that the EPO is changing the arrangements for deposit accounts, but reporting that "I have tried in vain to obtain background information on this measure from Treasury and Accounting, but I was merely referred to a forthcoming publication of the rules at the end of February."

Well, Katfriend Peter Arrowsmith (Cleveland) has alerted to the IPKat to the publication of an announcement about this.  This will apparently be formally "published together with an EPO notice in a supplementary publication to the EPO's March 2014 Official Journal".  In the meantime, the relevant change seems to be:

Abolition of administrative fee for insufficient deposit account funds 
The administrative fee will be abolished. Accordingly, points 6.5, 6.6 and 6.7 of the ADA themselves, points 8.1, 8.2, 8.3 and 9 of their Annex A.1 and point 3.7 of their Annex B.1 have been deleted or amended.  
Please note that, under point 5.2 ADA, deposit account holders must ensure that their accounts always contain sufficient funds for timely processing of their debit orders. 
As in the past, if your account lacks sufficient funds your debit order will be processed only once the account has been suitably replenished. The date of payment will be that of the replenishment (i.e. it will no longer be possible to backdate it by paying the administrative fee). If the date of payment is after the time limit for paying the fee, the general provisions of the European Patent Convention (e.g. Rule 51(2) and Article 121(1) EPC) apply. 
Users of the automatic debiting procedure in particular should always ensure that their accounts contain sufficient funds, because under this procedure the fees are generally debited on the last day of the period for payment. 
The IPKat never runs out of money
This comes into effect very soon on 1 April 2014.

Peter writes:

It seems that the EPO is going to discontinue its administrative fee for insufficient deposit account funds.  As you know, the current practice of the EPO effectively permits a deposit account to go “overdrawn”.  Under this system you can spend more than your account’s balance provided you pay an administrative fee within a deadline that they set.  This system is helpful to applicants because it allows a fee to be paid validly even if the account is accidentally depleted.  From 1 April the administrative fee will be abolished.  After this date a fee will only be considered to have been paid once the deposit account is replenished. 
Incidentally, the new EPO approach is similar to the current approach of the UK-IPO. 
This Kat thinks that it is rather odd to treat as the "abolition of a fee" what is in effect the withdrawal of a service - the ability to excuse the lack of sufficient funds in a deposit account.  Users are going to have to take great care, especially if they use the automatic debiting procedure.  In fact, this Kat endorses the comments of George Brock-Nannestad, who wrote of the system that is being withdrawn from April:

Provided you keep your account in funds, any applications you enter will automatically have all its fees paid on the last day in the payment window. The safety net is that if there is a shortfall on that day, you get a Notification and a one-month deadline to replenish and pay a supplementary ‘admininstrative’ fee. If the replenishment is sufficient to cover both the missing amount and the fee, the payment is backdated to the intended payment date. 
This is a safety net that has enabled one to avoid the expensive 50% surcharge if an unexpected shortfall has occurred. It is probably of the greatest advantage to small EPAs, because it avoids locking excess funds in the account to cover any contingency. Possibly it has been abused by big firms, but instead of raising the cap of the administrative fee, this safety net is being abolished entirely. It is touted as a removal of a fee, but that is an effect, not the cause.
This Kat suspects that users will lament the passing of this system.  Do his dear readers agree?

37 comments:

Anonymous said...

The ADA are currently controversial in this regard anyway - the arrangements arguably applying only to "applications" and not to "patents" as is being considered in the pending appeal of an opposition division decision in 95119547.8. Unlike previous versions of the ADA, Patents per se are not mentioned throughout the present ADA, which begs the question: is the ability to replenish with surcharge strictly allowable for post-grant proceedings (opposition/appeal) anyway?

SG said...

This is a shame. Some periods for payment are actually quite short (for example, paying extra search fees for a PCT where the EPO is the ISA - payment of several thousand due within one month), and instructions from the client can, and frequently do, come in at the 11th hour. The "safety net" was a useful service to ensure that the application could continue as long as instructions were received in time, and finances could be settled subsequently. With EPO fees being as high as they are, can EPAs reasonably be expected to keep tens of thousands of Euros in a deposit account, just to ensure continuation of applications under their watch?

Anonymous said...

That is a big shame - a key benefit of using an EPO deposit account was this safety net.

Kuifje said...

Risking to be called a whiner again, i will nevertheless post the following.

The basic principle is obviously that you pay on time what is due to EPO.

The fact that this is inconvenient to EPAs because they may only receive instructions late is of no concern to EPO, and should not be.

ADAs are a service, not a right. The scope of the service is now reduced, making it a less attractive service, but a service nonetheless.

Use it if you still value it, otherwise just pay as you submit, which is a fair enough principle to start from.

It's up to the EPA to ensure timely instructions from the client;

Lament? Yes, but realistic enough to compare this to a spoiled child lamenting a reduction of time allowance for computer games

Anonymous said...

Terrible idea. The choices are now perform (international) bank transfers for each fee payment as it is instructed, or lend the EPO via the deposit account a large sum of money for contingencies.

An argument that the former administrative fee arrangement resulted in the EPO lending the applicant money does not hold water, since the "lent" money was in truth merely the temporary deferral of a fee charged by the EPO, rather than representing an actual cost to the EPO, for performing an act that would in any case not be performed until the fee was settled.

Anonymous said...

Perhaps the EPO will be kind as to enable payment via credit Card. You never know, they could even accept bitcoins.

SG said...

"The fact that this is inconvenient to EPAs because they may only receive instructions late is of no concern to EPO, and should not be."

I'm sure the EPO agrees with this assessment. However, I don't think it would hurt the EPO to occassionally consider how their policies affect the people using their system.

Anonymous said...

I love this comment from Kuifje:

"It's up to the EPA to ensure timely instructions from the client"

or at least I would have loved it if I hadn't fallen off my chair and hurt myself.

Anonymous said...

I would have more sympathy with the EPO's decision to remove the safety net if the EPO provided accurate online information on deposit account balances, which they don't. The decision to remove this safety net smacks of the EPO wanting deposit account holders to deposit far more money than might otherwise be necessary to accommodate occasional unexpected urgent payments. For firms which have a number of EPAs instructing payments from a single deposit account, the only party with reliable up-to-date information on all of the payments going out of the deposit account is likely to be the EPO. However, the EPO has acknowledged that their online deposit account information is unreliable; the only way to get accurate information on the balance of a deposit account is to telephone the EPO (during working hours). So if last minute out-of-hours urgent instructions are received for new divisional applications involving a large number of renewal fees, the EPO offers no way for an EPA to check the balance of their deposit account to ascertain whether they can rely on their deposit account or arrange for an International money transfer. Since removal of the safety net will force IP firms to increase the amount they hold on account, the EPO should start paying interest on those deposit account balances.

Roufousse T. Fairfly said...

So if last minute out-of-hours urgent instructions are received for new divisional applications involving a large number of renewal fees,

But you still have one month to pay the appropriate fees for divisional filings (cf. GL A-iii(13.1); Rule 36(3)).

A better example would be the filing of an appeal or opposition, where the decision to go ahead typically arrives at 23:59:44.2 CET on the last possible day. ;-)

But the banking sector did improve a wee little bit since 1978.

The EU now imposes essentially overnight wire (online) transfers (at least within the EuroZone minus GR), whereas the older applicable German law (IIRC it was in the BGB) allowed the [multiple expletives deleted] banks to sit three full working days on the money - which they gladly did - before crediting the amount to the EPO's account at Dresdner's. I did learn this the hard way -- but the applicable bits of the EPC are now indelible.

Some good things DO come out of the EU!

Anonymous said...

When I buy my milk from the corner shop I always ensure I have sufficient funds in my pocket. That way, I have the safety net preventing me from being arrested for theft upon leaving the store.

My local BP garage, on the other hand always allows me to pay late as I frequently drive off without paying for fuel.

Anonymous said...

Thank you, Darren! And to Kuifje for upholding moral standards in a World where it is so easy to feel unjustly treated. Pfuifje.

As a late-comer to the discussion I would like to state that some metaphors are better than others, and here I would like to use the slate in the pub, rather than a carton of milk, which may be paid for by credit card, allowing an overdraft. But anonymous at 23:07 perhaps has only a debit card.

My quest for information was for the reasoning behind the new rules, not their wording, which was quite clear on my account statement.

An alternative is to enter into agreement with a local colleague who may pay into the EPO account in person as required on a day-to-day basis. It would be a gentleman's agreement relying on reciprocity. Such informal cross-border networks are already in operation in some social circles and quite widespread (and actually below the radar of the authorities).

In my letter to the appropriate department of the EPO I thanked them for the service they have provided. It was a very flexible system; it was not for free, but it provided some latitude and potentially saved 50% of quite large amounts.

I have not seen anything discussed in EPI about this.

Kind regards,


George Brock-Nannestad

Anonymous said...

George - you are suggesting, I think, EPO-hawala...

Anonymous said...

Lots of good comments here. Ultimately it is reasonable to expect people to pay the right fees at the right time, but it is a pity that the deposit account system is being made less flexible (and in a way that will hurt some users more than others).

Also very interesting to learn that the only reliable way to ascertain the correct account balance is by phone call.

I wonder how the EPO would respond to twice-daily phone calls from the account manager responsible for each and every deposit account (once at open and once at close of business).

I bet they'd want their administrative fees back then. Just a thought ;-)

Peter Arrowsmith said...

I find it difficult to understand what the EPO are trying to achieve here. If they think that the administrative fee is being abused then they could resolve this by simply increasing it...

Peter Arrowsmith said...

Incidentally, I discussed this matter with the UK-IPO some time ago to ask why they could not adopt the administrative fee system that was very helpful at the EPO. They responded as follows:

"The IPO is bound by current UK legislation which requires the payment of the relevant fee and sets the timescales. We therefore have no legislative basis which allows us to retain the original filing date in the circumstances where there are insufficient funds available in a customer’s deposit account.

The IPO has no legal basis on which to make loans or conduct a banking operation and therefore we do not consider that a change to our current policy on deposit accounts would be appropriate."

I guess the EPO must have been conducting a "banking operation" for years then?

Anonymous said...

From the EPO perspective, I would guess that this is driven by a desire for improved efficiency and automation - enforce online fee payment, automate its processing, minimise manual intervention, and ultimately deploy staff to do other jobs. Perhaps even hire a few more examiners when support staff retire.

However, it places a big burden on account holders i.e. professional representatives, and creates enormous risk.

I can just sense the flood of restitutio applications when official fees on last-day divs and appeals are deemed not paid.

I would suggest that the EPO enhance online filing so that filing receipts confirmed whether fee payment was successful - that would at least give representatives a chance to fix problems. However, I suspect that might be asking a bit too much of the EPO.

Whoever answers the phone in the EPO finance department will have to get used to a lot of daily balance enquiries...

Kuifje said...

Glad to see that at least some posters partly agree with me.

I think/hope the motives of EPO are to streamline their business (reduce options for retaring the procedure) and improve 3rd party certainty.

A European patent attorney having a pseudo-monopoly and consequently being able to invoice 150-300 EUR per hr can surely afford to keep a few thousand EUR in a deposit account at EPO.

At today's interest rate, having a constant buffer of 5K EUR costs the equivalent of less than 1 hrs' worth of work each year in lost interest.

Big deal.

SG said...

How will this improve 3rd party certainty? Further processing will still be available for missed deadlines, just with a 50% hike in the fee.

Anonymous said...

Kuifje - I'm not sure exactly what you mean by "pseudo" in your allegation of a "pseudo-monopoly" amongst EPAs, but if you count up the number of competing firms of patent attorneys across Europe you should get to a number rather a lot more than the "monos" required for a monopoly. EPAs have to pass examinations, but so do bus drivers. If you believe this allows bus drivers to demand inflated salaries, I'm sure some of their union reps would love to speak with you.

Anonymous said...

Imagine the following scenario:
unknown to you, a colleague received last minute instructions to file a divisional application off a still pending application filed fifteen years ago. He filed the new application and paid all fees by means of a facsimile filing. As a result of the fees being due, your account balance dropped below €1000 (but due to delays at the EPO, the fees for the divisional are not debited immediately). One day later, you receive instructions to file an appeal (two months and ten days after the decision). You check the account balance and there appears to be enough funds to pay the fee and so file the appeal with a form 1010.
Subsequently, the EPO debits the divisional fees and declares the appeal inadmissible for failure to pay the appeal fee. Tough luck?

Kuifje said...

To answer the last 3 posters

@SG: by reducing the number and complexity of remedies, it will be clear more quickly whether a patent application is actually dead or not.

Indirectly it will result in earlier instructions received by EPO, so faster processing.

Also indirectly: staff will be liberated, also (if used wisely) speeding up processing in general

@Anon 10.42: Lawyers can also do it, so it is not a full monopoly. So as a group we have pseudo-monopoly for the provision of EPO representation. It is not an allegation, merely a fact. Of course there is still internal competition.
And I am not suggesting the hourly rate are inflated, unfair, unjustified, none of the sort. Usually they are in line with the value of the services provided.

Anon 10.55: Inconvenient, yes.

I would assess the cause of the inadmissability to be
1: Lack of proper coordination with the colleague (eg separate accounts, daily assessment of likely sufficiency of the amount in deposit)
2: Sailing too close to the wind wrt the amount in deposit at EPO, considering the number of cases at hand and the number of people allowed to use the account.

In short: you took too many risks, and sometimes a risk will become an event.

You don't accept it if a surgeon runs out of clean scalpels, it's up to him to ensure a suffucient supply, isn't it?

If your business model allows very late instructions of clients to be processed anyway, you should ensure sufficient buffering capacity.

Anonymous said...

@Anon 2014-02-19 17:30:00 Excellent idea re. online filing reporting on whether fee was successful. Surely if I can login with my smartcard and see balance the system can use that info as basis for accepting attempts at fee payment. However, I suppose the fact that the reported online balance isn't the true balance makes this unworkable. At the very least, it would create a legitimate expectation on the part of the account holder that the EPO was getting this information right. It seems like the EPO wants to avoid the burden of this responsibility.

@Kuifje We are more likely talking about a few tens of thousands, even for small firms.

@SG Further Processing will not always be available. For example you can't use Further Processing to remedy your failed Further Processing payment.

@Anon 2014-02-20 10:55:00 This is an excellent example of the potential problem. It seems that the answer is indeed "tough luck".

Perhaps, as Peter Arrowsmith highlights, the EPO has simply cottoned-on to the fact that it has been acting as an unlicensed lender all these years. As with the UKIPO, the powers that be might have taken the view that this role is beyond the EPO's remit.

Peter Arrowsmith said...

@Anon 2014-02-20 10:55:00 has highlighted the problem precisely.

But what if another two colleagues file late divisional applications, and what if all of this happens after hours so that it is not possible to co-ordinate efforts? How much money does a firm need to keep in a deposit account to demonstrate that they are taking all due care?

I think that this change is very likely to cause the loss of some applications due to depleted deposit accounts. Tough luck indeed.

SG said...

"by reducing the number and complexity of remedies, it will be clear more quickly whether a patent application is actually dead or not."

It won't though? Yes, a remedy has been removed. However, Further Processing remains. This means a third party seeing a payment missed will still not be able to say with certainty whether or not the application is dead until two months after the missed deadline. The application can still continue, just at greater expense to the applicant. Where is the increased certainty?

@anon 12:09

"@SG Further Processing will not always be available. For example you can't use Further Processing to remedy your failed Further Processing payment."

I'm aware Further Processing is not always available, but I believe you've named one of the two times it isn't (the other being the priority year deadline). The point is that, as long as Further Processing remains an option, it isn't possible for a third party to tell any sooner if an application is truly dead.

Anonymous said...

@Kuifje "as a group we have pseudo-monopoly for the provision of EPO representation. It is not an allegation, merely a fact"

What it is is a misunderstanding the word "monopoly". A monopoly applies at the level of an individual person or company, not across an entire trade or profession.

Anonymous said...

The problem here is that any buffer needs to be sufficient for a worst-case scenario, and with a single divisional potentially costing over 20K, a PCT or Euro-PCT over 3K, and a 10th-year renewal fee 1.5K, for example, you don't need a lot of fees to be paid at once for the total money that could come out in one go to be several tens of thousands of pounds.

And it's all very well to say that "colleagues should communicate", but a professional firm needs to plan for when things go wrong, even if they usually go right.

Here's a thought - I'm sure there are loads of reasons why it can't work:

Every European Patent Attorney pays 100 Euros to epi, which puts it in a central deposit account for use when the attorney's own deposit account runs out of funds. There's about 10000 EPAs I believe, so that's a million Euro buffer. Use by attorneys ought to be rare - you could make repeated use of the fund a disciplinary matter to discourage it, I suppose. More importantly, the number of attorneys involved is such that use should average out, so the fund should never go overdrawn.

Anonymous said...

@SG You are right of course. I just couldn't pass up the chance to use the "can't Further Process Further Processing" sentence construction.

Taking a step back, it is the removal of this provision which is disappointing. If it had never existed, the arguments for introducing it would be rather weak and could be viewed as account holders wanting to have their cake and eat it too. The quite reasonable position of the UKIPO is, I think, informative in this regard.

In many ways, this whole situation is an akin to the patent system itself: whether to introduce the system at all is debatable, but once it is in place it seems objectionable to remove it.

Or maybe not.

SG said...

"@SG You are right of course. I just couldn't pass up the chance to use the "can't Further Process Further Processing" sentence construction."

Fair enough :) I'm sure the opportunity doens't present itself too often!

"Taking a step back, it is the removal of this provision which is disappointing. If it had never existed, the arguments for introducing it would be rather weak and could be viewed as account holders wanting to have their cake and eat it too. The quite reasonable position of the UKIPO is, I think, informative in this regard."

I think you've hit the nail on the head here. I agree with this entirely.

Anonymous said...

To Anonymous at 14:14.

I call out your BS.

"In many ways, this whole situation is an akin to the patent system itself: whether to introduce the system at all is debatable, but once it is in place it seems objectionable to remove it.

Or maybe not.
"

Show me one modern advanced society that ever went backwards and removed their patent system.

Roufousse T. Fairfly said...

I call out your BS.

Why has the tone of this blog lately become rather cantankerous?

Show me one modern advanced society that ever went backwards and removed their patent system.

Just about every term in this challenge is open to qualification - including "modern", "advanced", "backwards".

Take the Netherlands, between 1869 and 1912...

Or take socialist countries (SU, DD, PL, etc.), who replaced most exclusive rights by inventor's certificates, which were essentially a reward scheme. These could also be obtained for suggestions, or even discoveries.

The systems did technically provide for exclusive rights. For instance, the GDR had in addition to "Wirtschaftspatente" (inventor's certificates) "Ausschließungspatente" (roughly equivalent to western patents). In practice only foreign companies would use the latter type, for negotiating licenses and know-how transfers.

Anonymous said...

@Anon 2014-02-20 21:09:00 Hello, nice to meet you on the internet, this is Anon 2014-02-20 14:14:00 (and earlier). Without wishing to antagonise you, I think, perhaps, you have misunderstood my point. I am not advocating the abolition of the patent system (that would be a pretty poor career move).

My position is that, starting from nothing, a patent system of the type we have now is not essential. Our esteemed colleague Mr. Fairfly gives some interesting examples of alternatives (thanks for the back up there BTW).

However, once you do introduce a patent system of the type we have now, then any attempt to remove it will be vehemently opposed (and not just by us Patent Attorneys. OK, maybe mostly by Patent Attorneys).

If I were to provide you with an example of a society that had removed its patent system then that would rather undermine my own argument, don't you think? Examples may well exist (see Roufousse's comment), but the lack of widespread dismantling of patent systems across history does suggest that they are a sort of one-way phenomenon.

Or maybe not. I really have no idea; I only come here for the kitten pictures anyway.

Anonymous said...

"Examples may well exist"

That's rather the point - no examples do exist. Any and all such attempts were dismal failures highlighting the fact that you cannot have the 'blue-sky' policy of the basis of communism work in the real world.

The cantankerous tone comes from the onslaught of repetitious swill that symbolizes the adage of "say it often enough and it becomes the 'truth'"

There is a persistent (and misguided) ideology of anti-patent, anti-property that simply refuses to acknowledge plain history and the 'suggestion" (as you weakly put it) of the phenomenon plainly evident.

Anonymous said...

@Anon 2014-02-21 13:23:00

I think we're a lot closer in our views that you think. I am certainly not anti-patent nor am I anti-property. Please recall that I said the point was debatable and that removing the system seems objectionable.

Patent systems have not always existed. Someone thought them up and implemented them. Presumably there was some sort of debate at the time on whether it was a good idea to do so.

So the facts are: 1) patent systems exist; and 2) attempts to go without them or remove them have failed (that one's yours, by the way). In what way is that incompatible with my original statement?

Before you answer: Kittens.

With best wishes for a pleasant weekend,

Anon 2014-02-20 14:14:00 etc.

Anonymous said...

LOL - thanks for the kittens.

If you read my posts, you will see that I retain the cantankerousness not to one such as you, but to those that refuse to acknowledge what history plainly holds.

But to your point of someone starting a patent system at some point in time, I just don't see the relevance in the modern era.

Lot's of things started at some point in time (for example, the notion of physical property, a la real estate; or even government itself). We are well beyond such considerations unless you are contemplating anarchy of some such other nonsense.

Anonymous said...

---- all I asked for was an explanation, and what do I get: a load of (b...), sorry, anonymii who entertain lofty views! "I am certainly not anti-patent" is not a proper response.

My question was for a rationale for removing a practical provision. I can do my own speculating, but I do not want to conclude that it is because the EPO is a monopoly and the simply can if they want.

Remember that I asked the relevant department first, before trying to fish some wisdom out of the web.

Ah, well, I shall not spend my weekend fretting, but I shall probably still be curious on Monday.

Best wishes,


George Brock-Nannestad

Anonymous said...

"The administrative fee for insufficient funds in deposit accounts is being abolished. It was originally introduced to
provide an additional incentive to use deposit accounts by offering their holders a lower penalty in case of late payment.

The main reason for abolition is that the administrative fee overlaps with the additional fees and fees for further processing
payable under Rule 51(2) and Article 121(1) EPC. Deposit account holders will in future have the same means of redress as any other users."

http://www.epo.org/law-practice/legal-texts/official-journal/2014/etc/se4/2014-se4.pdf

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