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II.B.7. Claims fees
Until 31 March 2008, under R. 31(1) EPC 1973 and then the new R. 45 EPC, any European patent application comprising more than ten claims incurred payment of a claims fee in respect of each claim over and above that number. With effect from 1 April 2008 the number of fee-exempt claims was increased to fifteen.
The Legal Board of Appeal ruled in case J 9/84 (OJ 1985, 233) that R. 31(1) EPC 1973 was to be interpreted as meaning that claims numbered 1 to 10 upon filing of the European patent application - or transmittal to the EPO of the international application under the PCT - were exempt from fees, and that claims numbered 11 onwards were not. Accordingly, abandoning a fee-exempt claim after filing - or transmittal - did not have the effect that its fee exemption was transferred to another claim.
The question has arisen on a number of occasions as to whether part of, or an annex to, the description of a European patent application comprising a series of numbered paragraphs drawn up in the form of claims should be regarded as claims for the purposes of R. 31(1) EPC 1973.
In J 5/87 (OJ 1987, 295) the application contained, under the heading "Claims", ten claims; however it contained 33 further claims which were annexed to the description as preferred, numbered embodiments presented in the form of claims. The addendum appeared in form as well as in substance only to consist of claims within the meaning of Art. 84 and R. 29 EPC 1973. Furthermore, the appellant had admitted that the addendum had been included in the application in order to maintain the possibility of making its content a basis for substantive examination. As a result, the applicant was required to pay the claims fee - applicants were not at liberty to ignore the provisions on the form and content of the description and claims contained in R. 27 and R. 29 EPC 1973.
In decision J 15/88 (OJ 1990, 445), the board decided in a similar case that although the 117 disputed "clauses" in question were numbered and arranged as claims and seemed to define matter in terms of technical features, they were not to be regarded as such since the fact remained that they were never referred to as claims and there were claims elsewhere which were referred to as such.
Decisions J 16/88, J 29/88, J 25/89, J 26/89, J 27/89, J 28/89, J 34/89 and T 490/90 all confirmed this opinion, pointing out that the case dealt with in J 5/87 differed from the others since the applicant had indicated an intention to regard the annexes as claims. The intention of the appellant not to have this part considered as claims is more important than the form of the text.