Arrangements for deposit accounts (ADA) and their annexes (valid as from 1 April 2014)

Annex A.2 to the ADA

Information from the EPO concerning the automatic debiting procedure

The Arrangements for the automatic debiting procedure (AAD) [ 1 ] offer holders of deposit accounts with the EPO an additional payment option.

The automatic debiting procedure is explained below.

I. General remarks

Some 90% of all fee payments are now made by debiting deposit accounts held with the EPO, which has thus proved to be the simplest and cheapest method of payment for both the Office and regular fee-payers.

Account holders may use the conventional debiting procedure, as governed by the Arrangements for deposit accounts (ADA) [ 2 ] for fees and other payments by means of individual debit orders which must give the necessary information about the purpose of the payment and reach the EPO before the relevant period for payment expires. In these cases, responsibility for ensuring that payment is made correctly, in full and on time lies with the payer.

The automatic debiting procedure provides an additional means of payment for the benefit of applicants, patent proprietors and their representatives. Under this procedure, as laid down in the Arrangements for the automatic debiting procedure (AAD), an account holder only has to give the EPO a single debit order – the automatic debit order for a specific application.

From the date of its receipt the EPO debits by computer, on the basis of its electronically stored procedural data for the application in question, the appropriate amounts of all fees for the application which are covered by the automatic debiting procedure, and treats the payment as received in due time. For those types of proceedings for which automatic debiting is allowed, the procedure covers all fees whose payment is in the interest of the applicant or patent proprietor, except those expressly excluded under point 4 AAD. Responsibility for ensuring that payment is made correctly, in full and on time thus passes to the EPO.

This procedure also means certain adjustments for users. Once they have issued the automatic debit order, in most cases they need take no further action to make payments. However, whereas with another means of payment, including the conventional debiting procedure, applicants can achieve certain legal consequences simply by not paying a particular fee, under the automatic procedure users must actively inform the EPO that no payment (or only one particular one) is to be made; otherwise payments are debited automatically in full. Applicants' attention is drawn to such situations in the relevant EPO forms (for instance, in the communication under Rule 64(1) EPC, inviting payment of further search fees, EPO Form series 1507). For automatic debiting to function smoothly, it is also essential that users make sure that their deposit accounts always contain sufficient fund, to avoid inconvenience and unnecessary work.

The Arrangements for the automatic debiting procedure (AAD) form part of the Arrangements for deposit accounts (ADA), which thus also apply to the procedure as appropriate. Attention is drawn in particular to point 2 ADA (opening the account), point 3 (accounts kept in euro only), point 4 (payments), point 5 (conditions of operation), point 6.2 (ways of filing a debit order), point 6.5 (10-day safeguard), point 6.6 to 6.8 (filing with competent national authorities) and point 10 (closing the account).

II. Notes on individual provisions of the Arrangements for the automatic debiting procedure (AAD)

Re point 1 AAD: Automatic debiting procedure

Pursuant to point 6.3 ADA, the automatic debit order must give not only the particulars of the application for which it is issued but also the number of the account to be debited. See also notes to point 5 AAD below.

The automatic debiting procedure is open only to the applicant or patent proprietor or his representative, not for example to opponents (whether in first-instance proceedings or as a party to subsequent appeal or review proceedings), third parties or persons other than the applicant or patent proprietor who inspect the file.

When the procedure is brought to a close (e.g. by withdrawal of the application or when the decision granting or refusing a patent becomes final), the automatic debit order ceases to be valid (see point 13 AAD). For revocation of the order, see point 12 AAD.

A new automatic debit order is required for limitation or revocation proceedings (see EPO Form 2380).

Re point 2 AAD: Types of proceedings covered

The automatic debiting procedure covers not only appeal proceedings but also review proceedings under Article 112a EPC to which the applicant or patent proprietor is a party.

The automatic debiting procedure is currently not available to make fee payments for international applications in proceedings before the EPO as receiving Office, International Searching Authority, or International Preliminary Examining Authority.

Re point 3 AAD: Fee types covered

The EPO takes into consideration, to the account holder's benefit or detriment, all relevant factors known to it when the automatic debit is effected, doing so in such a way as to safeguard all rights arising from the application (see point 5 AAD).

Notes on individual fees:

Point 3(a) AAD: Filing fee (including any additional fees)

For European patent applications filed and international applications entering the European phase on or after 1 April 2009, the Rules relating to Fees provide for an additional fee as part of the filing fee if the European patent application comprises more than 35 pages (Article 2, item 1a, RFees[ 3 ]).

The Rules relating to Fees prescribe an additional fee for divisional applications filed on or after 1 April 2014 in respect of any earlier application which is itself a divisional application (Rule 38(4) EPC, Article 2, item 1b, RFees) [ 4 ].

For European patent applications the basic filing fee is debited automatically on the last day of the one-month period for filing the application. The additional fee is debited automatically on the last day of the one-month period for filing the European patent application, or of the one-month period for filing the first set of claims or of the one-month period for filing the certified copy referred to in Rule 40(3) EPC, whichever is applicable (Rule 38(2) EPC[ 5 ]).

Where the requirements of Article 14(2) and Rule 6 EPC for the reduction of fees (language rebate) are met, only 80% of the filing fee, including any additional fee, is debited under the automatic procedure (Article 14(1) RFees).

For divisional applications, the basic filing fee is debited automatically on the last day of the one-month period for filing the application. The additional fee is debited automatically on the last day of the one-month period for filing the divisional application.

For international applications entering the European phase, the filing fee, including any additional fee, is debited automatically on the last day of the period under Rule 159(1) EPC.

Point 3(b) AAD: Search fee for a European or supplementary European search

If, for a European patent application, the search division makes a finding of non-unity, it informs the applicant under Rule 64(1) EPC, when it transmits the partial European search report, that a further search fee is payable for each additional invention involved. The search fee for each further invention is debited automatically on the last day of the period for payment set by the search division. Therefore, if the applicant does not want one or more of the further inventions to be searched, he must notify the EPO to this effect before the period for payment expires, in order to prevent the automatic debit of the further search fee(s) being carried out. The applicant is informed of this situation in the communication under Rule 64(1) EPC (EPO Form series 1507).

For the supplementary European search fee, the procedure takes account of circumstances in which the fee is reduced or not payable, debiting accordingly only the reduced amount or no fee at all.

Point 3(c) AAD: Designation fee(s)

1. European patent applications filed and international applications entering European phase on or after 1 April 2009

For European patent applications filed, including European divisional applications, and international applications entering the European phase on or after 1 April 2009 only, payment of the flat designation fee covers all the contracting states (Article 2, item 3, RFees[ 6 ]), except for any which have been expressly withdrawn. Therefore, in the case of a European divisional application, the fee does not cover any contracting states no longer validly designated in the earlier application at the time of filing of the divisional application (Article 76(2) EPC).

2. European patent applications filed and international applications entering European phase before 1 April 2009

For European patent applications filed and international applications entering the European phase before 1 April 2009 only, payment of seven times the designation fee is deemed to cover all the contracting states. Where no specific contracting states were indicated in the relevant section of the request for grant (EPO Form 1001 or 1001E) or of the form for entry into the European phase (EPO Form 1200 or 1200E) an amount equal to seven times the designation fee is debited under the automatic debiting procedure, unless the EPO is instructed to do otherwise before expiry of the relevant period for paying these fees (Rules 39(1), 159(1)(d) EPC).

Likewise, if fewer than seven contracting states were expressly indicated in the individual boxes in the relevant section of EPO Form 1001 (1001E) or of EPO Form 1200 (1200E), designation fees are then debited under the automatic debiting procedure for those states only. However, if the applicant wishes to make use of the possibility of paying designation fees for states additional to or different from those which he indicated in the above-mentioned section of EPO Form 1001 (1001E) or EPO Form 1200 (1200E), and informs the EPO accordingly within the period for paying them, then these designation fees are debited automatically, with effect from the date of expiry of that period.

Furthermore, provided that the applicant did not waive his right to receive a loss of rights communication under Rule 112 EPC (see waiver box in designations section of EPO Form 1001 (1001E) or 1200 (1200E), versions from 12.07 to 01.09), he may still inform the EPO before expiry of the period for requesting further processing (Article 121, Rule 135(1) EPC) that he wishes to designate states additional to those already paid for, together with an indication of the states concerned. In this case the relevant designation fees, plus the corresponding fees for further processing, are debited with effect from the date of expiry of the period for requesting further processing.

3. For all applications

If an applicant wishes to pay the designation fee(s) before expiry of the period for doing so, payment must be made separately by another means of payment allowed under the RFees (see point 11 AAD). This applies, for example, at the end of the European grant procedure if, exceptionally, the fee(s) become(s) due only after the communication under Rule 71(3) EPC (Rule 71(8) EPC). The fee(s) should be paid early by another means to prevent delay in the publication of the mention of grant. The applicant is informed of this situation in the communication under Rule 71(3) EPC (EPO Form 2004).

For the automatic debiting of the designation fee(s) where the automatic debit order is not filed until after expiry of the period for payment, see point 10.3 AAD.

For automatic debiting of the extension fee(s), see note to point 3(r) AAD below.

For automatic debiting of the validation fee(s), see note to point 3(s) AAD below.

Point 3(d) AAD: Claims fees (Rules 45 EPC, Rules 162 and 71(6) EPC)

For European patent applications filed and international applications entering the European phase on or after 1 April 2009, a two-tier system of claims fees has been introduced[ 7 ]: for the sixteenth and each subsequent claim up to the fiftieth the lower amount applies, and for the fifty-first and each subsequent claim the higher amount applies (Article 2, item 15, RFees).

For European patent applications filed and international applications entering the European phase before 1 April 2009, claims fees are due for the sixteenth and each subsequent claim[ 8 ].

Claims fees under Rule 45 EPC:

The EPO takes as the basis for the automatic debiting procedure the claims incurring fees under Rule 45 EPC contained in the first set of claims filed. Where there is more than one set of claims, it takes the set containing the greatest number (see Legal Advice No. 3, November 1985 revised version, OJ EPO 1985, 347). If the applicant does not want to pay for any or all of these claims incurring fees, he must inform the EPO accordingly before the period under Rule 45(2), first sentence, EPC expires.

Regarding the decisive payment date for claims fees under Rule 45 EPC where the automatic debit order is not received until after filing of the claims but before expiry of the period under Rule 45(2), second sentence, EPC, see point 10.2 AAD.

Claims fees under Rule 162 EPC:

In the case of international applications, any claims fees payable on entry into the European phase are computed and, where appropriate, debited under the automatic debiting procedure on the basis of the documents on which the European grant procedure is to be based (Rule 162 EPC). If these documents comprise more than fifteen claims, a claims fee is payable for the sixteenth and each subsequent claim under Rule 162(1) EPC (see also introductory remarks above on point 3(d) AAD). Without prejudice to Rule 137(2) to (4) EPC, the application may be amended once, within six months[ 9 ] of notification of a communication informing the applicant accordingly (combined communication under Rules 161 and 162 EPC). If within this period amended claims are filed, the claims fees due are computed on the basis of such amended claims (Rule 162(2) EPC).

Under the automatic debiting procedure, claims fees payable under Rule 162(1) or (2) EPC are considered to have been received on the last day of the six-month period under Rule 162(2) EPC, unless the EPO is instructed otherwise before expiry of the period for payment (see point 6.1(d) of Annex A.1 to the ADA). Furthermore, account holders participating in the automatic debiting procedure and waiving their right to the communication under Rules 161(1) or (2) and 162 EPC should therefore pay any claims fees due on entry into the European phase by another permitted means of payment (see point 11 of Annex A.1 and Annex A.2 to ADA[ 10 ].

Account holders wishing to make an earlier payment of claims fees which have already become due, for example before a fee increase takes effect, must do so by another permitted means of payment (see point 11 of Annex A.1 to ADA).

See also note to point 10 AAD for cases in which the automatic debit order is filed subsequently during the period for requesting further processing following the non-payment of claims fees under Rule 45 or 162 EPC.

Claims fees under Rule 71(6) EPC:

If the European patent application in the text intended for grant comprises more than fifteen claims, the examining division invites the applicant to pay claims fees in respect of each additional claim as specified under Article 2, item 15, RFees[ 11 ] within the period under Rule 71(3) EPC, unless the said fees have already been paid in accordance with Rule 45 or 162 EPC (Rule 71(6) EPC). The relevant number of claims fees is debited automatically on the date of filing of the translation of the relevant claims, or on the last day of the period set. The applicant is informed of this beforehand in the communication under Rule 71(3) EPC (EPO Form 2004). If the application in the text intended for grant comprises, after amendments requested within the period under Rule 71(3) EPC, further additional claims, the applicable number of claims fees for these is debited automatically on the last day of the period set. The applicant is informed accordingly in EPO Form 2098A.

Point 3(e) AAD: "European" renewal fees

In the automatic debiting procedure, apart from the particular cases listed under point 6.1(f) AAD, renewal fees are debited on the date on which they become due under Rule 51(1) EPC or Rule 159(1)(g) EPC.

However, if an applicant wishes to pay a "European" renewal fee before the due date, which is possible up to three months in advance of that date (Rule 51(1) EPC) [ 12 ], it must be paid separately by another means of payment allowed under the RFees (see point 11 AAD). This applies, for example, if in the final phase of the European grant procedure a renewal fee becomes due after the communication under Rule 71(3) EPC (Rule 71(9) EPC). The fee should be paid early by another permitted means to prevent delay in the publication of the mention of grant. The applicant is informed of this situation in the communication under Rule 71(3) EPC (EPO Form 2004).

For the decisive payment date of a renewal fee in cases in which the fee becomes due following a decision to grant re-establishment or a decision of the Enlarged Board of Appeal to re-open proceedings before the Board of Appeal under Article 112a EPC, see point 6.1(f) AAD.

Point 3(f) AAD: Examination fee

The examination fee is automatically debited on the last day of the period specified in Rule 70(1) EPC, making due allowance for any reduction under Article 14(4) and Rule 6(3) EPC in conjunction with Article 14(1) RFees (language rebate) and/or because an international preliminary examination report has previously been drawn up by the EPO (Article 14(2) RFees). The applicant is informed in the communication under Rule 69 EPC (EPO Form 1081) that the automatic debit is about to be made.

Since examination was already requested in the request for grant (EPO Form 1001 or 1001E), the applicant can prevent a debit of this fee only by revoking the automatic debit order or withdrawing the application in time. The possibility of paying the examination fee after expiry of the period under Rule 70(1) EPC by way of a request for further processing under Article 121 and Rule 135 EPC is not affected, provided the application has not been withdrawn or finally settled.

For cases in which the examination fee is automatically debited before expiry of the period for payment, see point 6.1(b) AAD.

If a request for accelerated examination under the "PACE" programme is made when the European patent application is filed, the examination fee will not be debited automatically on the date of receipt of the request unless the applicant has at the same time unconditionally waived the invitation under Rule 70(2) EPC (see notice from the EPO dated 4 May 2010, OJ EPO 2010, 352). The same applies where a request for accelerated examination is submitted at the time the steps for entry into the European phase are taken for an international application for which a supplementary European search is required. It should also be noted that if a request for accelerated examination accompanies a request for early entry into the European phase, the fees due, including the examination fee, are not debited automatically at this stage and must, therefore, be paid using another permitted means of payment (see also point 11 AAD and corresponding notes in this Annex).

Point 3(g) AAD: Fee for grant

1. Fee for grant, including fee for publication of the European patent specification

This flat fee for grant, including the fee for publication the European patent specification, applies to European patent applications filed on or after 1 April 2009 and to international applications entering the European phase on or after that date[ 13 ].

This fee is debited automatically on the date on which the applicant files the translation of the claims, or on the last day of the period set. The applicant is informed accordingly in the communication under Rule 71(3) EPC (EPO Form 2004).

2. Fees for grant and printing the European patent specification

The fees for grant and printing the European patent specification apply to European patent applications filed and to international applications entering the European phase before 1 April 2009.

These fees are debited automatically on the date on which the applicant files the translation of the claims, or on the last day of the period set. The applicant is informed accordingly in the communication under Rule 71(3) EPC (EPO Form 2004).

The automatic debiting procedure also covers any additional fees for printing application documents comprising more than 35 pages.

3. For all applications

Note should also be taken of the relevant information on claims fees due under Rule 71(6) EPC (see note to point 3(d) AAD above), and on the designation fee(s) (see note to point 3(c) AAD above) and "European" renewal fees (see note to point 3(e) AAD above), when these become due in the final phase of the grant procedure.

Point 3(h) AAD: Limitation or revocation fee

Where the requirements for the language rebate are met (Article 14(4), Rule 6(3) EPC), only 80% of the revocation or limitation fee is debited. The date for automatic debiting purposes is that of receipt of the request for limitation or revocation.

Point 3(j) AAD: Fee for further processing

Here, the decisive payment date is defined according to the nature of the omitted act or acts. In the case of non-performance of a procedural act other than the payment of a fee, the EPO takes as the decisive payment date the date of completion of the omitted act (filing of document) (see also points 6.1(g) and 11.3 AAD). For cases in which the omitted act was the non-payment of a procedural fee, see also point 10.3 AAD.

Point 3(k) AAD: Fee for re-establishment

References in the Arrangements for the automatic debiting procedure (Annex A.1) and in the notes of the present information to "re-establishment" are to be understood as applying not just to re-establishment of rights under Article 122 EPC, but also, as appropriate, to reinstatement of rights under Rule 49.6(d)(i) PCT and restoration of the priority right under Rule 49ter.2(d) PCT.

For these, the EPO takes the date of receipt of the application for re-establishment (see point 6.1(h) AAD). It must be noted that in this case automatic debiting only covers the fee for re-establishment itself - not other fees (e.g. renewal fee and additional fee) the non-payment of which constituted the omitted act. Such fees must therefore be paid separately by another permitted means of payment. In addition, automatic debiting of this fee is only possible in cases where a legally binding disposal of the application or patent has not already entered into force.

Regarding automatic debit orders filed subsequently, see point 10.4 and 10.5 AAD.

Point 3(l) AAD: Fee for appeal

The automatic debiting procedure only covers this fee if the appeal is filed by the applicant or patent proprietor. Where the requirements for the language rebate are met (Article 14(4), Rule 6(3) EPC), only 80% of the appeal fee is debited. The date for automatic debiting purposes is that of receipt of the appeal (see point 6.1(h) AAD).

Point 3(m) AAD: Fee for petition for review

Again, the automatic debiting procedure only covers this fee if the petition for review is filed by the applicant or patent proprietor. Where the requirements for the language rebate are met (Article 14(4), Rule 6(3) EPC), only 80% of the fee is debited. The date for automatic debiting purposes is that of receipt of the petition for review (see point 6.1(h) AAD).

Point 3(n) AAD: Late furnishing fee

The fee for the late furnishing of a sequence listing is debited automatically on the last day of the period under Rule 30(3) EPC, provided that the sequence listing is filed within the same period.

Points 3(o) and (p) AAD: Additional fee and surcharges

The automatic debiting procedure ensures that fees are paid on time, provided the deposit account contains sufficient funds. The additional fee under point 3(o) and the surcharges under point 3(p) AAD are therefore exceptions, i.e. where the automatic debit order is filed only after the due date for a renewal fee or after expiry of the relevant period for payment (see point 10 AAD)

Point 3(r) and (s) AAD: Extension and validation fee(s)

Under the automatic debiting procedure, these fee(s) are debited for the states which the applicant has specifically indicated in the relevant section of the request for grant (EPO Form 1001 or 1001E) or of the form for entry into the European phase (EPO Form 1200 or 1200E), unless the applicant instructs the EPO otherwise within the period for paying these fees – which is the same as for paying the designation fee(s) (Rules 39(1) and 159(1)(d) EPC) [ 14 ]. However, the following essential feature should be noted. The designation fee is debited automatically for all the contracting states except for any which have been expressly withdrawn[ 15 ]. Extension and validation fees, on the other hand, are debited automatically only for those states specifically indicated on EPO Form 1001 (1001E) or 1200 (1200E) or subsequently within the relevant period for payment. Where an extension or validation state is not thus indicated and the request for extension or validation in respect of it is deemed to be withdrawn as a result, this can still be remedied only if a communication is issued under Rule 112(1) EPC informing the applicant of the deemed withdrawal of the application (Rule 39(2) EPC[ 16 ]) due to non-payment of the designation fee.

Such communication will mention any extension or validation state for which the relevant fee was not paid in due time. Attention is also drawn to the note to point 3(c) AAD concerning the designation fee(s).

If the fee for an extension or validation state has not been paid within the basic period, the applicant can still validly pay it, together with a 50% surcharge[ 17 ],

(a) within two months of expiry of the basic period ("re-introduced grace period")[ 18 ] or

(b) within two months of notification of a communication of loss of rights with regard to non-payment of the fee (procedure applicable as of 13 December 2007; see Guidelines for Examination, A-III, 12.2).

Re point 4 AAD: Fee types not covered

Notes on individual fees:

Point 4(a) AAD: Opposition and other fees

Opponents cannot use the automatic debiting procedure in either opposition or subsequent appeal or review proceedings.

Point 4(f) AAD: Fees, expenses and prices laid down by the EPO President under Article 3 RFees

These include the administrative fees for registration of transfers (Rule 22 EPC), licences and other rights (Rule 23 EPC).

Re point 5 AAD: Automatic debit order and automatic debiting

The automatic debit order should be issued at the same time as the European patent application is filed, or the procedural steps are taken for entry into the European phase (EPO as designated or elected Office). To facilitate this, the request for grant (EPO Form 1001 and 1001E) and the form for entry into the European phase (EPO Form 1200 and 1200E) include a separate section which can be completed in order to select this means of payment.

An automatic debit order filed with a European patent application using EPO Form 1001 or 1001E or with a Euro-PCT application using EPO Form 1200 or 1200E may be issued only for the application in question, giving only one deposit account to be debited.

An automatic debit order may be submitted together with a European patent application filed with the competent national authority of a contracting state under Article 75(1)(b) EPC (point 6.6 ADA). In contrast, the form for taking the procedural steps for entry into the European phase (EPO Form 1200 or 1200E) must be filed direct with the EPO.

In the case of European patent applications initially retained by the central industrial property office of a contracting state under Rule 37(1)(b) EPC, the EPO ensures in co-operation with that office that any automatic debit order is nonetheless carried out. Where applicable, fees are refunded under Rule 37(2) EPC.

Divisional applications are not covered by an automatic debit order issued for the parent application; for them, separate automatic debit orders must be issued.

A new automatic debit order is required for limitation or revocation proceedings (see EPO Form 2380).

An automatic debit order filed by means of Online Filing or by fax together with a European patent application requires no confirmation copy.

Regarding automatic debit orders filed subsequently, see point 10 AAD and the relevant notes.

Re point 6 AAD: Decisive payment date

Extensions of time limits under Rule 134(1) EPC are taken into account when calculating the due date or date of payment.

Regarding the automatic debiting of fees for further processing and re-establishment, see notes to points 3(j) and (k), 10 and 13 AAD.

Regarding the special provisions for the decisive payment date where the automatic debit order is not filed together with the application, see point 10 AAD.

For further comments on individual fee types, see also under "Re point 3 AAD" above.

Re point 8 AAD: Replenishing the account in case of insufficient funds

Account holders must replenish their deposit accounts on their own initiative in accordance with point 4.2 ADA.

Re point 9 AAD: Amendment and correction of debit

See also point 14 AAD for cases where the account holder notes errors.

Re point 10 AAD: Subsequent filing of the automatic debit order

Point 10 AAD allows automatic debit orders to be issued for proceedings that are already pending, and thus supplements point 6 AAD as regards the decisive payment date.

No special form is needed; the order should be addressed to the EPO's Treasury and Accounting Directorate in Munich, indicating the number and holder of the deposit account, and the number of the application in question. If automatic debit orders are filed subsequently for more than one application, the EPO also accepts lists containing the necessary information (see also following paragraph). If confirmation of receipt is required, EPO Form 1037 or 1038 should be used. Automatic debit orders can also be filed subsequently online by means of Online Fee Payment via Online services or using EPO Form 1038E (one form for each application concerned). Automatic debit orders can also be filed subsequently by fax. These should be sent to the EPO's central fax number in Munich (+49 89 2399 4465). No confirmation copy is necessary.

With subsequent filing, special attention must be paid to the fee situation at that time (particularly during the phase just after filing the European patent application), in order to avoid incorrect or double debits or having to pay further processing fees (see notes to point 3(j) AAD) or surcharges or additional fees (see notes to point 3(o) and (p) AAD). If automatic debit orders are filed for more than one application at the same time, the procedural status of each application should be carefully checked, so as to ensure that each subsequently filed order does actually cover the fees which are intended. Surcharges or additional fees can only arise in exceptional cases, namely where the automatic debit order is not received until after expiry of a period for payment within which the fee was not paid (point 10 AAD).

If the automatic debit order is not filed until after expiry of the period under Rule 45 or 162 EPC but before expiry of the period for requesting further processing in respect of claims deemed withdrawn as a result of non-payment of the claims fees, and the applicant now wishes to pay for fewer claims than those for which fees have become due, he should indicate these before expiry of the period for requesting further processing. Otherwise all claims fees which have become due and the corresponding further processing fees are debited automatically on the last day of this period.

Regarding the automatic debiting of fees for further processing and re-establishment, see notes to points 3(j) and (k), 6 and 13 AAD.

Re point 11 AAD: Use of other means of payment

This provision enables account holders wishing to make faster payments in individual cases to pay fees at the time they want using another means of payment allowed under the RFees.

Regarding situations necessitating earlier payment of the designation fee(s) and renewal fees by another means, see the respective notes to points 3(c) and (e) AAD above.

For early entry into the European phase (Articles 23(2), 40(2) PCT), the relevant fees must be paid by another permitted means of payment.

Where, in the event of a fee increase, the decisive payment date of a fee under the automatic debiting procedure falls on or after the date on which the fee increase takes effect, then, provided that the fee may be paid before that date (e.g. a renewal fee[ 19 ]), it may be so paid in the old amount using another means of payment. The same applies to fees subject to an automatic debit order which is included with a European patent application filed under Article 75(1)(b) EPC with a competent national authority.

Fees paid early are no longer covered by the automatic debiting procedure and so are not debited automatically.

If a payment made early by another means is insufficient to cover the fee concerned, this deficiency is not rectified under the automatic debiting procedure. Instead, the EPO reacts as appropriate to the given situation.

Re point 12 AAD: Revocation of an automatic debit order

It is particularly important to note that in the automatic debiting procedure the party to the proceedings/account holder must take action if he wishes to prevent a fee being paid.

Notice of revocation of an automatic debit order, if filed on paper or by fax (see point 7 ADA), should be addressed to the EPO's Treasury and Accounting Directorate in Munich, indicating the number and holder of the deposit account, and the number of the application in question. Notice of revocation may also be filed by means of Online Fee Payment via Online services (see also point 3.8 of Annex B to the ADA).

The account holder must pay special attention to the timing of the revocation of an automatic debit order, so as to ensure that the relevant fees are included in or excluded from the automatic debiting procedure, as with the subsequent filing of an automatic debit order (see note re point 10 AAD).

Once such a revocation notice is received, no more fees whose decisive payment date would be on or after the date of receipt of the notice are debited automatically, and the EPO corrects any such debits already made.

The EPO issues account holders with confirmation of the date of receipt of the revocation notice.

An automatic debit order cannot be revoked in part for individual fees or types of fees. It is however possible while a payment period is running to prevent the automatic debiting of certain fees by notifying the EPO accordingly (see General remarks, penultimate paragraph, and notes to points 3(b), (c), (d), (f) and (r) AAD). See also point 11 AAD.

As explained in the notes to point 1 AAD above, an automatic debit order lapses once the proceedings are concluded. It may however be in an applicant's interests to revoke the order before then, for example to prevent payment of a forthcoming renewal fee when he no longer wants to pursue the application.

Re point 13 AAD: Termination of the automatic debiting procedure

An automatic debit order ceases to be effective when the proceedings in question are closed (see point 13(a) and (b) AAD). This means that subsequent applications for re-establishment are no longer covered by the order, and all the fees arising have to be paid by the applicant himself by another means of payment. See also the notes to points 3(k) and 10 AAD.

There are various different sets of circumstances in which an applicant, patent proprietor or representative can withdraw from the proceedings. It is therefore necessary to be clear about whether or not he wishes to continue with the automatic debiting procedure. Hence the requirement under point 13(c) and (d) AAD that he himself also revokes the automatic debit order. If he does not, the automatic debiting procedure continues with the party or representative as hitherto.

Changes of name of the applicant, patent proprietor or representative (or their respective firms) not involving a transfer within the meaning of Rule 22 EPC do not cause the automatic debit order to lapse. Nor does a change of person handling the application in a representative's office.

Automatic debit orders do however cease to be effective if the grant proceedings are stayed under Rule 14 EPC (as a result of national entitlement proceedings) or interrupted under Rule 142 EPC (in the event of death or legal incapacity, or an action against property): see point 13(e) and (f) AAD. If, when the proceedings are resumed, the automatic debiting procedure is to be used again, a new automatic debit order must be issued.

Likewise, a new automatic debit order is required for limitation or revocation proceedings (see EPO Form 2380).

Re point 14 AAD: Statements of account

See also point 9 AAD for cases where the EPO notes errors.

 

[ 1 ] See Annex A.1, in this supplementary publication.

[ 2 ] See pp. 5 - 12 of this supplementary publication.

[ 3 ] See the decisions of the Administrative Council of 14 December 2007 (OJ EPO 2008, 10) and 21 October 2008 (OJ EPO 2008, 513).

[ 4 ] The additional fee is part of the filing fee; see decision of the Administrative Council of 16 October 2013 (OJ EPO 2013, 501).

[ 5 ] See decision of the Administrative Council of 21 October 2008 (OJ EPO 2008, 513).

[ 6 ] See references in footnote 3.

[ 7 ] See references in footnote 3 and decision of the Administrative Council of 6 March 2008 (OJ EPO 2008, 124).

[ 8 ] See decision of the Administrative Council of 14 December 2007 (OJ EPO 2008, 5), applicable to payments made on or after 1 April 2008.

[ 9 ] See decision of the Administrative Council of 26 October 2010 amending the Implementing Regulations to the European Patent Convention (CA/D 12/10, OJ EPO 2010, 634).

[ 10 ] See notice from the EPO dated 5 April 2011 concerning updated Form 1200 and the possibility to waive the right to the communication under Rules 161(1) and (2) and 162 EPC (OJ EPO 2011, 354).

[ 11 ] Applicable to European patent applications filed and international applications entering the European phase on or after 1 April 2009 - see references in footnote 3. See also introductory remarks above on point 3(d) AAD.

[ 12 ] See decision of the Administrative Council of 21 October 2008 (OJ EPO 2008, 513).

[ 13 ] See references in footnote 3.

[ 14 ] See the note to point 3(c) AAD concerning designation fee(s). See also references in footnote 3.

[ 15 ] This applies to European patent applications filed and international applications entering the European phase on or after 1 April 2009. For European patent applications filed and international applications entering the European phase before that date, designation fees for all contracting states are debited automatically unless the applicant has indicated six or fewer specific states.

[ 16 ] For European patent applications filed and international applications entering the European phase before 1 April 2009, a communication under Rule 112(1) EPC may be issued in respect of individual designations deemed to be withdrawn due to non-payment of the designation fees. See decision of the Administrative Council of 21 October 2008 (OJ EPO 2008, 513).

[ 17 ] See notice from the EPO dated 2 November 2009 concerning the re-introduction of a grace period for the payment of extension fees (OJ EPO 2009, 603).

[ 18 ] Applies to requests for extension or validation where the basic period for paying the fee expires on or after 1 January 2010.

[ 19 ] As from 1 April 2009 renewal fees may not be validly paid more than three months before they fall due (Rule 51(1) EPC), see decision of the Administrative Council of 21 October 2008 (OJ EPO 2008, 513).

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