Official Journal March 2014

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Citation: OJ EPO 2014, A31
Online publication date: 31.3.2014

Notice from the European Patent Office dated 10 February 2014 concerning search and examination fees

On 1 April 2014 an Administrative Council decision enters into force:

  • CA/D 14/13 of 13 December 2013 (OJ EPO 2014, A5), introducing the fee adjustment, hereinafter referred to as "RFees 2014", and adjusting the amount of the reduction in the fee for the supplementary European search where the international search report (ISR) or supplementary international search report (SISR) was drawn up by one of the European international searching authorities.

The present notice updates the amounts of search and examination fees to reflect RFees 2014. It replaces the corresponding notice of 6 February 2012 (OJ EPO 2012, 212).

The new amounts of the search and examination fees will be binding on payments made on or after 1 April 2014.

Transitional arrangement: If within six months of 1 April 2014 a fee is paid in due time but only in the amount due before 1 April 2014, it will be deemed to have been validly paid if the deficit is made good within two months of an invitation to that effect from the European Patent Office.

The diagrams annexed to this notice give an overview of standard cases.

1. Extended European search report for applications filed on or after 1 July 2005

In accordance with Article 3(2) of the Administrative Council's decision of 9 December 2004 (OJ EPO 2005, 5), Rule 62 EPC applies to European patent applications and international applications entering the European phase that are filed on or after 1 July 2005.

For such applications, the European or supplementary European search report is accompanied by an opinion on whether the application and the invention to which it relates seem to meet the requirements of the EPC. [ 1 ]

The procedure established by Rule 62 EPC specifically applies to:

  • European patent applications filed on or after 1 July 2005, including
  • divisional applications under Article 76 EPC filed on or after 1 July 2005 (even if the earlier application has a filing date prior to 1 July 2005), and
  • international applications filed on or after 1 July 2005 and subsequently entering the European phase.

Such applications are subject to the following fees: [ 2 ]

  • The search fee for the European or supplementary European search under RFees 2014 is EUR 1 285 (but pursuant to Council decisions taken under Article 153(7) EPC the fee for the supplementary European search is in certain cases not payable or is reduced, see point 3 below).
  • The examination fee under RFees 2014 is EUR 1 620, or EUR 1 805 in the cases referred to in point 3(a) below.

2. Applications filed before 1 July 2005

Extended European search reports are not drawn up for European patent applications filed before 1 July 2005. The same applies to international applications filed before 1 July 2005, even if they enter the European phase on or after 1 July 2005.

The search fee for the supplementary European search[ 3 ] under RFees 2014 is EUR 875 (but pursuant to Council decisions taken under Article 153(7) EPC the fee for the supplementary European search is in certain cases not payable or is reduced, see point 3 below).

The examination fee under RFees 2014 is EUR 1 805.

3. Supplementary European search report dispensed with or fee reduced

Under Article 153(7) EPC, a supplementary European search report is drawn up in respect of international applications entering the European phase, and the search fee must be paid in respect of that report at the time of European phase entry. However, the Council may decide that the supplementary European search report is to be dispensed with or that the fee is to be reduced. The situation under the Council decisions now in force pursuant to Article 153(7) EPC is as follows:

(a) No supplementary European search report is drawn up in respect of an international application for which the EPO was the international searching authority or a supplementary international searching authority. [ 4 ]

The examination fee under RFees 2014 is EUR 1 805. [ 5 ]

(b) No supplementary European search report is drawn up in respect of an international application

  • which was filed before 1 July 2005
  • and for which

the Austrian Patent Office,

the Spanish Patent and Trademark Office or

the Swedish Patent and Registration Office

was the international searching authority.

Hence no search fee pursuant to Article 153(7) EPC is payable.

The examination fee under RFees 2014 is EUR 1 805[ 6 ].

(c) A supplementary European search report including an opinion[ 7 ] pursuant to Rule 62 EPC is drawn up in respect of an international application

  • which is filed from 1 July 2005 up to and including 30 June 2016
  • and for which

the Austrian Patent Office,

the National Board of Patents and Registration of Finland,

the Spanish Patent and Trademark Office,

the Swedish Patent and Registration Office or

the Nordic Patent Institute

was the international searching authority or a supplementary international searching authority

The fee for the supplementary search is reduced by EUR 1 100[ 8 ] and thus amounts to EUR 185.

The examination fee under RFees 2014 is EUR 1 620.

(d) The fee for the supplementary European search is reduced if the United States Patent and Trademark Office (USPTO), the Japan Patent Office, the Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation), the Australian Patent Office, the State Intellectual Property Office of the People's Republic of China (SIPO) or the Korean Intellectual Property Office was the international searching authority.

  • If the international application was filed before 1 July 2005, the fee for the supplementary European search is reduced by 20%[ 9 ] and thus amounts to 80% of EUR 875, i.e. EUR 700.

The examination fee is EUR 1 805.

  • If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is reduced by EUR 190[ 10 ] and thus amounts to EUR 1 285 minus EUR 190, i.e. EUR 1 095.

The examination fee under RFees 2014 is EUR 1 620.

(e) At present there is no Council decision reducing the fee for the supplementary European search if the Brazilian National Institute of Industrial Property, the Canadian Intellectual Property Office, the Egyptian Patent Office, the Israel Patent Office, the Indian Patent Office was the International Searching Authority.

  • If the international application was filed before 1 July 2005, the fee for the supplementary European search under RFees 2014 is EUR 875.

The examination fee is EUR 1 805.

  • If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is EUR 1 285.

The examination fee is EUR 1 620.

4. Reduction of the examination fee under Article 14(2) RFees

Under Article 14(2) RFees the examination fee is reduced by 50% if the EPO has drawn up an international preliminary examination report (IPER) pursuant to Rule 70 PCT. If the IPER was established on certain parts of the international application in accordance with Article 34(3)(c) PCT, the reduction will be allowed only if the examination is to be performed on the subject-matter covered by the IPER.

The examination fee payable under Article 14(2) RFees is as follows:

  • for international applications filed before 1 July 2005, 50% of EUR 1 805, i.e. EUR 902.50.
  • for international applications filed on or after 1 July 2005, 50% of EUR 1 620, i.e. EUR 810 (see point 3(c) above), or 50% of EUR 1 805, i.e. EUR 902.50 (see point 3(a) above).

5. Lack of unity

In cases of lack of unity (Rule 64(1) EPC), the amount of the search fee for each further invention is

  • EUR 875 if the application was filed before 1 July 2005
  • EUR 1 285 if the application was filed on or after 1 July 2005.

Annex to the notice from the European Patent Office dated 10 February 2014 concerning search and examination fees

The diagrams on the following pages provide an overview of standard cases for the payment of search and examination fees. They are for use in conjunction with the detailed explanations given in the notice, to which reference is made in the footnotes to the diagrams (see below).

 

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Abbreviations

AT

Austrian Patent Office

AU

Australian Patent Office

BR

Brazilian National Institute of Industrial Property

CA

Canadian Intellectual Property Office

CN

State Intellectual Property Office of the People's Republic of China (SIPO)

EPA/EPO/OEB

European Patent Office

ES

Spanish Patent and Trademark Office

FI

National Board of Patents and Registration of Finland

IPER

International Preliminary Examination Report

ISA

International searching authority

JP

Japan Patent Office

KR

Korean Intellectual Property Office

RU

Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation)

SE

Swedish Patent and Registration Office

SISA

Supplementary international searching authority

US

United States Patent and Trademark Office

XN

Nordic Patent Institute

 

 

[ 1 ] Please note that an applicant who pays the examination fee before receiving the European search report and waives the communication under Rule 70(2) EPC is sent a communication under Rule 71(1) EPC or Rule 71(3) EPC rather than an opinion under Rule 62 EPC, since a valid request for examination has already been made and the examining division becomes responsible under Rule 10(4) EPC; the explanations relating to the EPC 1973 in section II of the notice from the EPO dated 1 July 2005 (OJ EPO 2005, 435, 437) still apply mutatis mutandis.

[ 2 ] In the special cases mentioned in footnote 1, under RFees 2014 the search fee amounts to EUR 1 285 and the examination fee to EUR 1 620.

[ 3 ] In the case of European applications filed before 1 July 2005 the time limit for the payment of the fee for the European search (Article 78(2) EPC) has already expired.

[ 4 ] Decision CA/D 11/09 of the Administrative Council of 28 October 2009 dispensing with the supplementary European search where the international search report or a supplementary international search report was drawn up by the European Patent Office (OJ EPO 2009, 594).

[ 5 ] For international applications filed before 1 July 2005, point 2 above applies. For international applications filed on or after 1 July 2005 in respect of which the EPO acted as ISA, the higher examination fee is payable because no supplementary European search report is drawn up.

[ 6 ] Point 2 above applies.

[ 7 ] See footnote 1 and Article 2 of the decision of the Administrative Council CA/D 14/12 of 25 October 2012 (OJ EPO 2012, 584) applicable from 1.7.2013 to 30.6.2016.

[ 8 ] Decision of the Administrative Council of 13 December 2013, Article 2 (CA/D 14/13, OJ EPO 2014, A5).

[ 9 ] Decisions of the Administrative Council of 14 September 1979 (OJ EPO 1979, 368), 11 December 1980 (OJ EPO 1981, 5), 9 December 1993 (OJ EPO 1994, 6) and 8 June 2000 (OJ EPO 2000, 321).

[ 10 ] Decision of the Administrative Council of 27 October 2005 (OJ EPO 2005, 548).

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