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.