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Guidelines for Examination

 
 

9.2.1 Conditions

European applications can be filed in any language. If filed in a language other than an official language of the EPO, a translation must be furnished. Consequently, the languages which can be used for filing European applications fall into three categories:

(i)
official languages of the EPO 
(ii)
official languages of Contracting States which are not official languages of the EPO, such as Dutch, Italian or Spanish (hereinafter "admissible non-EPO languages"), and 
(iii)
all other languages, such as Chinese, Japanese or Russian. 

Furthermore, documents which have to be filed within a time limit may also be filed in an "admissible non-EPO language" if the applicant has his residence or principal place of business within the territory of a Contracting State having this as an official language or if the applicant is a national of such a Contracting State. See A‑VII, 1.1 and 1.2.

In the case of European patent applications filed on or after 1 April 2014, and of international applications entering the European phase on or after that date, a 30% reduction of the filing- and/or examination fee for certain categories of applicants is provided for (see the Notice from the EPO dated 10 January 2014, OJ EPO 2014, A23). In this regard, it is necessary to file the documents making up the application “as filed” and the request for examination in an admissible non-EPO language and to file the translation not earlier than simultaneously (see G 6/91).Subject to certain conditions, where an admissible non-EPO language is used, a reduction in fees (20%) is allowed. It serves to compensate the parties for the disadvantages that result from the fact that not all official languages of the Contracting States are official languages of the EPO. The conditions to be fulfilled for the grant of a reduction in fees vary for each procedural step for which a reduction is claimed (see G 6/91).

The categories of applicants eligible for the fee reductions are:

small and medium-sized enterprises (SMEs),
natural persons,
non-profit organisations, universities and public research organisations,

whose residence or principal place of business is in an EPC contracting state with an official language other than English, French or German, and nationals of such states who are resident abroad.

The definition of SMEs is that contained in European Commission Recommendation 2003/361/EC of 6 May 2003 as published in the Official Journal of the European Union. Under the recommendation, an enterprise is considered to be any entity engaged in an economic activity, irrespective of its legal form. The category of micro, small and medium-sized enterprises is made up of enterprises which employ fewer than 250 persons, which have an annual turnover not exceeding EUR 50 million and/or an annual balance sheet total not exceeding EUR 43 million and for which no more than 25% of the capital is held directly or indirectly by another company that is not an SME.

The eligibility of the further entities listed in Rule 6(4) is subject to the following definitions:

(i)
"Non-profit organisations" are organisations not allowed by their legal form or statutes, under the relevant law, to be a source of income, profit or other financial gain to their owners, or – if allowed to make a profit – there is a legal or statutory obligation to reinvest the profits made in the interest of the organisation.
(ii)
"Universities" are to be understood as “classical” universities, meaning institutions of higher education and research, under the relevant law. However, comparable entities, such as secondary or higher education establishments, will be considered to be universities.
(iii)
"Public research organisations" are entities such as universities or research institutes that are organised under public law and, irrespective of how they are financed, have the primary goal of conducting fundamental research, industrial research or experimental development and of disseminating the results by way of teaching, publication or technology transfer. All profits must be reinvested in carrying out these activities, in disseminating the results or in teaching.

If there are multiple applicants, each one must be an entity or a natural person within the meaning of Rule 6(4) for the fee reduction to apply.

Applicants wishing to benefit from the reduction in the filing or examination fee under Art. 14(1) RFees must expressly declare that they are an entity or natural person covered by Rule 6(4) EPC.

Changes in the status of an entity under Rule 6(4) which occur after filing the declaration will not have a retroactive effect on fee reductions that were justified when granted.

The Office will conduct random checks to ensure compliance with the eligibility criteria laid down in Rule 6(3) to (7). If those checks give rise to reasonable doubt during the course of the grant proceedings as to the veracity of the declaration given by the applicant, the EPO may request appropriate evidence.

Should it become apparent that an incorrect declaration has been filed, the fee would not be validly paid since it was reduced unjustifiably and the application will be deemed withdrawn under Art. 78(2) and 94(2). The same applies if no declaration has been filed. The loss of rights arising from an incorrect or missing declaration may be remedied by filing a request for further processing under Art. 121 and Rule 135 – subject to making good the underpayment and paying the fee for further processing – or by requesting a decision under Rule 112(2).

In respect of European patent applications, oppositions, appeals, petitions for review or requests for limitation or revocation filed before 1 April 2014, and international applications having entered the European phase before that date, the fee reduction in force until then will apply.

The reduction is only allowed if the translation into an EPO official language is filed at the earliest at the same time as when the European patent application or the document subject to a time limit is filed in the admissible non-EPO language (see G 6/91).