Supplementary publication 3/2015 - Official Journal EPO

Online publication date: 31.3.2015

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

95% of 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, set out in the Arrangements for deposit accounts (ADA). In that case, 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 AAD, an account holder may file with the EPO an automatic debit order to ensure automated payment of the fees due in the proceedings for which the order is filed.

From the date of receipt of an automatic debit order, the EPO will automatically debit, on the basis of its electronically stored procedural data, the appropriate amounts of all fees due in the proceedings for which the order has been filed, and treats the payment as received in due time. For proceedings for which automatic debiting is allowed, all fees are paid automatically, except those expressly excluded under point 4 AAD. The responsibility that payment is made correctly, in full and on time thus lies with the EPO, provided that the deposit account always contains sufficient funds to cover the payments arising. Payments due to be debited within the next 40 days are shown by the payment-plan function under Online Fee Payment in Online services.

Once an automatic debit order has been filed, the user of the automatic debiting procedure does not usually need to take any further action to ensure correct and timely payment. 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 debiting procedure users must actively inform the EPO that no payment of a fee is to be made, or in certain circumstances that only one particular fee amongst a number of fees due is to be paid; otherwise fees are debited automatically in full. An example is the invitation by the EPO to pay further search fee(s) under Rules 64(1) or 164(1) or (2) EPC. If these fees are due, the applicant must inform the EPO that he wishes to pay only one or more, but not all of them. Otherwise all the search fees for which the invitation was issued will be debited automatically. The same applies for claims fees (see below Re point 3 AAD, Fee types covered, (d)).

This does not however mean that applicants may request that specific fees (e.g. renewal fees) be excluded from the automatic debiting procedure.

The AAD form part of the ADA, which thus also apply to the automatic debiting procedure. 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 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 under point 5 below.

As mentioned in points 1.2 and 1.3 of Annex A.1, automatic debit orders may be filed on paper, by fax or via web-form-filing. However, only if they are filed electronically online, i.e. via EPO Online Filing, via Online Fee Payment in Online services, via the Case Management System (new online filing, CMS) or via ePCT can the EPO ensure their timely processing. Filing orders on paper, by fax or via web-form may result in delay in processing them and thus in debiting any fee due. [ 2 ]

The automatic debiting procedure is open only to applicants or patent proprietors and their representatives, but not 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 proceedings are over, the automatic debit order ceases to be valid (see point 13 AAD). This is the case for instance if an application is withdrawn, the decision to grant or to refuse a patent becomes final, or proceedings before the EPO as receiving Office, International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA) under the PCT are terminated. For revocation of the order, see point 12 AAD.

Re point 2 AAD: Types of proceedings covered

An automatic debit order may be filed for:

(i) European grant proceedings for a specific European patent application or international application before the EPO as designated or elected Office ("European phase"),

(ii) PCT proceedings for a specific international application before the EPO as receiving Office, ISA or IPEA,

(iii) appeal and review proceedings under Article 112a EPC to which the applicant or patent proprietor is a party,

(iv) limitation and revocation proceedings.

Re (i) above: for international applications before the EPO as designated or elected Office, applicants have to perform the acts specified in Rules 159(1)(a) to (h) and 162(1) EPC within, as a rule, the 31-month time limit. It is recommended that to enter the European phase they use EPO Form 1200, section 12 of which enables them to file an automatic debit order. If the order is filed in due time, namely within the 31-month time limit, any fee payable within that time limit will be debited on its last day.

Applicants should also note that none of the fees payable for requests for early processing to be effective can be paid by automatic debit order, since they would be debited – and thus paid – only on the last day of the 31-month time limit. [ 3 ] In such cases, a separate payment is needed for the fees due.

Re (ii) above: an automatic debit order ceases to have effect from the moment the proceedings before the EPO as receiving Office, ISA or IPEA are terminated (point 13.4 AAD). Accordingly, separate orders must be filed for PCT proceedings under (ii) above and for European proceedings under (i) above in respect of a specific international application.

Re (iv) above: for limitation or revocation proceedings, a new debit order has to be filed (see EPO Form 2380).

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).

I. In respect of European patent applications, European patents and international applications before the EPO as designated or elected Office, automatic debiting is allowed, in particular, for the following:

(a) 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 (RFees) 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). [ 4 ]

The RFees 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). [ 5 ]

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). [ 6 ]

Where the requirements of Article 14 and Rule 6 EPC as amended with effect from 1 April 2014 for the reduction of fees are met, only 70% of the filing fee, including any additional fee, is debited under the automatic procedure (Article 14(1) RFees). [ 7 ]

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.

(b) 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.

Under amended Rule 164 EPC[ 8 ] applicants may obtain, upon entry into the European phase, a search of any invention claimed, upon payment of a (further) search fee.

Furthermore, Article 2(1), item 2, first indent, RFees has been amended to include the search fee for searches under Rule 164 EPC.

Searches under Rule 164(1) EPC – EPO did not act as (S)ISA

If the application documents which are to serve as the basis for the supplementary European search do not comply with the requirement of unity of invention, a partial supplementary European search report is drawn up on those parts of the application which relate to the invention first mentioned in the claims (Rule 164(1)(a) EPC. Together with this partial search report the applicant is invited to pay, within two months, a further search fee for each invention other than the invention first mentioned in the claims (Rule 164(1)(b) EPC). If an automatic debit order is on file, these fees will be debited automatically.

Searches under Rule 164(2) EPC – EPO did act as (S)ISA

Where the examining division considers that an invention is claimed which was not searched by the EPO in the international phase, it will issue an invitation to pay a search fee within two months. If an automatic debit order is on file, this fee will be debited automatically.

Fee reductions

For the supplementary European search fee, the automatic debiting 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.

Any reduction in the fee for a supplementary European search report provided for by decision of the Administrative Council under Article 153(7) EPC applies exclusively to the search fee paid under Rule 159(1)(e) EPC. This means that the reduction does not apply to any further search fee paid under Rule 164(1)(b) EPC, irrespective of whether that fee is paid for an invention which was searched in the international phase.

(c) 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), [ 9 ] except where a designation was expressly withdrawn earlier. 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 the 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) and 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 71a(3) 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 10.1 AAD.

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

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

(d) Claims fees (Rules 45, 162 and 71(4) 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 applies: [ 10 ] 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. [ 11 ]

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. 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 10.1(b) 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 (d)). Without prejudice to Rule 137(2) to (4) EPC, the application may be amended once, within six months[ 12 ] of notification of a communication informing the applicant accordingly (combined communication under Rules 161 and 162 EPC). If within that period amended claims are filed, the claims fees due are computed on the basis of the last set of amended claims (Rule 162(2) EPC).

Under the automatic debiting procedure, claims fees payable under Rule 162(1) and (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) AAD).

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 AAD). [ 13 ]

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 AAD).

See also the 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(4) 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[ 14 ] 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(4) 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.

(e) "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) or 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), [ 15 ] 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 71a(4) 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 boards of appeal under Article 112a EPC, see point 6.1(f) AAD.

(f) Examination fee

The examination fee is automatically debited on the last day of the period specified in Rule 70(1) EPC. Where the requirements of Article 14 and Rule 6 EPC for the reduction of fees are met, only 70% of the examination fee is debited under the automatic debiting procedure. [ 16 ] The examination fee is reduced by 50% if the EPO has previously drawn up an international preliminary examination report (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, i.e. where the applicant has waived his right to the invitation under Rule 70(2) EPC or has requested, before the expiry of the period under Rule 70(1) or 159(1) EPC, as appropriate, that his application be processed under the PACE programme, the examination fee will be automatically debited on the date of receipt of the waiver or of the PACE request, respectively (see point 6.1(b) AAD).

If accelerated examination under the PACE programme is requested 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 under point 11 in this annex).

(g) 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 of 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. [ 17 ]

It 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 2004CB).

2. Fee for grant and printing the European patent specification

For European applications filed before 1 April 2009 or international applications entering the European phase before that date, the fee for grant and printing has two components: a fixed amount, plus a charge for each page of the application over and above 35.

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). [ 18 ]

3. For all applications

Applicants should also note the information on claims fees due under Rule 71(4) EPC (see note above under point 3.I(d)), and on the designation fee(s) (see note above under point 3.I(c)) and "European" renewal fees (see note above under point 3.I(e)), when these become due in the final phase of the grant procedure.

(h) Limitation or revocation fee

For limitation or revocation proceedings, a new debit order has to be filed (see Re point 2 AAD above).

The date for automatic debiting purposes is that of receipt of the request for limitation or revocation.

Please note that for applications filed before 1 April 2014, where the requirements for the language reduction are met (Article 14 and Rule 6 EPC), only 80% of the revocation or limitation fee is debited. [ 19 ]

(j) 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 10.1 AAD). For cases in which the omitted act was the non-payment of a procedural fee, see also point 10.1 AAD.

(k) Fee for re-establishment

References in the AAD (Annex A.1) and the present notes 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 10.1 AAD.

(l) Fee for appeal

The automatic debiting procedure only covers this fee if the appeal is filed by the applicant or patent proprietor. The date for automatic debiting purposes is that of receipt of the appeal (see point 6.1(h) AAD).

Please note that for applications filed before 1 April 2014, where the requirements for the language reduction are met (Article 14 and Rule 6 EPC), only 80% of the appeal fee is debited. [ 20 ]

(m) 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. The date for automatic debiting purposes is that of receipt of the petition for review (see point 6.1(h) AAD).

Please note that for applications filed before 1 April 2014, where the requirements for the language reduction are met (Article 14 and Rule 6 EPC), only 80% of the fee for petition for review is debited. [ 21 ]

(n) 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.

(o) and (p) Additional fee and surcharge

The automatic debiting procedure ensures that fees are paid on time, provided the deposit account contains sufficient funds. The additional fee under point 3.2(o) and the surcharge under point 3.2(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)

(q) Administrative fee for an additional copy of the documents cited in the European search report

This administrative fee is considered to have been paid on its due date (Article 4(1) RFees), i.e. the date of receipt of the request for an additional copy. If this request is submitted before the fees under Rule 38 EPC were debited, the administrative fee is debited together with those fees.

A search under Rule 164(2) EPC is a new search on inventions not covered by the international search report; therefore the request for copies filed with the EPO as ISA/IPEA does not cover the procedure under Rule 164(2) EPC. Consequently, to obtain copies of documents found in a search under Rule 164(2) EPC, the administrative fee has to be paid irrespective of whether it was already paid in the international phase.

(r) and (s) Extension and validation fees

Under the automatic debiting procedure, these fees 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). [ 22 ] 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. [ 23 ] 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) [ 24 ] 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 above under point 3.I(c) 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, [ 25 ]

(a) within two months of expiry of the basic period ("re-introduced grace period")[ 26 ] 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).

II. In respect of international applications before the EPO acting as receiving Office, ISA or IPEA, automatic debiting is allowed, in particular, for the following:

(c) International filing fee (Rule 15.2 PCT) and (d) the supplement for each page in excess of 30 pages

The international filing fee is debited automatically on the last day of the one-month period after receipt of the application.

If the application contains more than 30 pages, the international filing fee is increased by a supplement payable for each excess page. This extra amount is considered part of the international filing fee and must be paid by the applicant together with the (basic) filing fee. If the application contains a sequence listing as part of the description, the pages forming that part are not taken into account for calculating the page fee, provided all requirements are met.

The automatic debiting procedure takes account of circumstances in which the international filing fee is reduced, so the reduced amount will be debited where appropriate.

If the international application is filed in electronic form, the international filing fee is reduced by fixed amounts laid down in point 4(a) to (d) of the PCT Schedule of Fees.

It is also reduced by 90% if the requirements set out in point 5 of the PCT Schedule of Fees are met. For applicants entitled to file an international application with the EPO as receiving Office, the reduction applies if they are natural persons who are nationals and residents of an eligible EPC/PCT contracting state. [ 27 ]

(e) Administrative fee for the preparation and transmittal of a certified copy of a European or international application (priority document) (Rule 17.1(b) PCT and Rule 54 EPC)

Where the applicant claims the priority of an earlier application, a certified copy of it ("the priority document") must be filed with the receiving Office or the International Bureau within 16 months after the priority date. However, if the earlier application was filed with the EPO, the applicant may request the EPO to prepare and transmit a priority document to the International Bureau. Box No. VI of the request Form PCT/RO/101 contains a check-box for that purpose.

An administrative fee for a certified copy of the priority document is considered to have been received by the EPO on its due date, i.e. on the date of receipt of the request.

However, for administrative reasons, if the request for a certified copy is submitted before the fees under Rules 14.1, 15.2 and 16.1 PCT have been debited, the administrative fee is debited together with those fees. In all other cases, it is debited within seven days from the date of receipt of the request for the certified copy.

(f) Late-payment fee for the fees due under Rules 14.1, 15.2 and 16.1 PCT (Rule 16bis.2 PCT)

If the transmittal, international filing and search fees are not paid in time, or if the amounts paid are not sufficient to cover the fees due, the EPO will invite the applicant to pay the missing amount, together with a late payment fee.

The automatic debiting procedure ensures that fees are paid on time, provided the deposit account contains sufficient funds. Therefore, a late- payment fee will be debited only if the automatic debit order is filed after expiry of the period for payment but before expiry of the time limit set in the invitation (see point 10 AAD).

If a late-payment fee is due, it is debited automatically and is considered to have been received on the last day of the one-month time limit as from the date of the invitation.

(g) Fee for requesting restoration of the right of priority (Rule 26bis.3(d) PCT

If an international application is filed after expiry of the priority period, a request for restoration of the priority right under Rule 26bis.3 PCT may be filed with the EPO as receiving Office, provided inter alia that the request for restoration is filed, and the fee paid, within the time limit of two months from the date on which the priority period expired.

The fee is debited automatically on the date of receipt of the request for restoration. If the automatic debit order is received after the request for restoration was filed but before the expiry of the period for doing so, the fee is debited on the date on which the automatic debit order is filed.

(h) Administrative fee for the late furnishing of sequence listings (Rules 13ter.1(c) and 13ter.2 PCT)

If the sequence listing of an international application is not available in electronic form and/or does not comply with WIPO Standard ST. 25, the EPO as ISA will invite the applicant to provide it in electronic form and pay a late furnishing fee within a non-extendable time limit of one month from the date of the invitation. [ 28 ]

The administrative fee involved is debited automatically on the last day of the one-month period.

(i) Additional search fee (Rule 40.2(a) PCT, Rule 158(1) EPC)

If the EPO as ISA considers that the international application claims more than one invention, it invites the applicant to pay an additional search fee for each further invention. At the same time, it informs the applicant of the result of the partial international search on the first invention in the claims.

The additional search fees payable to the EPO as ISA are reduced by 75% where the applicant or, if there are two or more applicants, each applicant is a natural person who is a national and resident of a state not party to the EPC and which on the date of filing of the application is classified as a low-income economy by the World Bank. [ 29 ]

If the applicant fulfils the requirements for a reduction of the search fee, any additional search fee is validly paid upon payment of the reduced amount.

The automatic debiting procedure takes account of circumstances in which the additional search fee is reduced, so only the reduced amount is debited.

The additional search fee is debited automatically, and payment is considered to have been received on the last day of the one-month time limit as from the date of the invitation. The amount of the additional fee is that applicable on the date of receipt of the international application.

(j) Protest fee relating to the payment of an additional search fee (Rule 40.2(e) and Rule 158(3) EPC)

An applicant may pay an additional search fee under "protest". This means that when paying the additional fee(s) he must object to the finding of lack of unity in a written reasoned statement filed with the EPO as ISA. If the applicant informs the EPO that the fee for additional search fee is being paid under protest, the protest fee is debited automatically and payment is considered to have been received on the last day of the time limit under Rule 40.1(iii) PCT, i.e. the one-month period from the invitation to pay the additional search fee.

(k) Administrative fee for an additional copy of the documents cited in the international search report or international preliminary examination report (Article 20(3) PCT, Rules 44.3(b) and 71.2(b) PCT)

This administrative fee is considered to have been paid on its due date (Article 4(1) RFees), i.e. the date of receipt of the request for the additional copy. However, for administrative reasons, in fact it is only debited within seven days as from that date.

(l) Late-payment fee (Rule 58bis.2 PCT) for both the handling fee (Rule 57 PCT) and the fee for preliminary examination (Rule 58 PCT, Rule 158(2) EPC)

Late-payment fees will not become due if an automatic debit order has been filed. However, it can happen that the automatic debit order is received by the EPO as IPEA only after an invitation under Rule 58bis.1(a) PCT to pay the handling fee and the international preliminary examination fee together with the late-payment fee has been sent to the applicant. In this case, all three fees are debited automatically, and the late payment of these fees is considered to have been received on the last day of the one-month time limit as from the date of the invitation.

The late-payment fee is 50% of the amount of the unpaid fees specified in the invitation. However, it is at least equal to but not more than double the amount of the handling fee.

(m) and (n) Fee for preliminary examination (Rule 58 PCT, Rule 158(2) EPC) and handling fee (Rule 57 PCT)

For international preliminary examination, the handling fee and the preliminary examination fee must be paid direct to the EPO as IPEA. The amount of the preliminary examination fee is set by the EPO (Article 2(1), item 19 RFees). The handling fee is laid down in the PCT Schedule of Fees, published by the International Bureau. Both fees are automatically debited on the last day of the one-month time limit for paying them. The fee amounts payable are those applicable on the date of payment.

The automatic debiting procedure takes account of circumstances in which the fees are reduced, so only the reduced amounts are debited.

The handling fee is reduced by 90% under the same conditions as for the international filing fee, and the fee for international preliminary examination by 75% under the same conditions as for the international search fee.

(o) Additional fee for preliminary examination (Rule 68.3(a) PCT, Rule 158(2) EPC

Where the EPO as IPEA considers that the international application lacks unity of invention, it invites the applicant either to restrict the claims so as to rectify that or, if the inventions have been searched, to pay additional preliminary examination fees. If the applicant fulfils the requirements for a reduction in the preliminary examination fee, any additional fee is validly paid upon payment of the reduced sum.

The automatic debiting procedure takes account of circumstances in which the additional fee is reduced or not payable, so only the reduced amount or no fee at all is debited.

This fee is debited automatically and payment is considered to have been received on the last day of the one-month time limit as from the date of the invitation.

(p) Protest fee relating to the payment of an additional fee for preliminary examination (Rule 68.3(e) PCT, Rule 158(3) EPC)

The applicant may pay any additional fee under protest in accordance with Rule 68.3(e) PCT. The protest procedure is the same as before the EPO as ISA (see point 3.II.(i) above).

If the applicant informs the EPO that the additional fee is being paid under protest, the protest fee is debited automatically and payment is considered to have been received on the last day of the time limit under Rule 68.2(v) PCT, i.e. the one-month period as from the invitation to pay the additional fee.

Re point 4 AAD: Fee types not covered

Re point 4.1 – In respect of European patent applications, European patents and international applications before the EPO as designated or elected Office, automatic debiting is not allowed for the following:

(a) Opposition and other fees

Parties other than the applicant or patent proprietor cannot use the automatic debiting procedure in either opposition or subsequent appeal or review proceedings.

Re point 4.2 – In respect of international applications before the EPO acting as receiving Office, ISA or IPEA, automatic debiting is not allowed for the following:

The fees listed under point 4.2(a) to (d) AAD relate to supplementary international searches. The supplementary search fee and the supplementary search handling fee have to be paid to the International Bureau in Swiss francs.

Re point 4.3 AAD: Fees, expenses and prices laid down by the EPO President under Article 3 RFees, other than the administrative fees referred to in points 3.2(q), 3.3(e), 3.3(h) and 3.3(k) AAD

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

The administrative fee for a certified copy of a priority documents excluded from the automatic debiting procedure, except for cases falling under point 3.3(e) AAD.

Re point 5 AAD: Automatic debit order and automatic debiting

The automatic debit order should be submitted at the same time as:

  • the European patent application is filed, or
  • the procedural steps are taken to initiate processing before the EPO as designated or elected Office (entry into the European phase).

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 enabling applicants to select this means of payment.

For international applications before the EPO in the international phase, the automatic debit order should be submitted at the same time as the international application is filed. In this context, if the application is filed by means of the online or web-filing tools mentioned in point 1.3(a) of Annex A.1, Forms PCT/RO/101 and PCT/IPEA/401 likewise include a separate section for selecting automatic debiting as means of payment. [ 30 ] If the application is filed on paper, by fax or by means of web-form filing, the applicants can write ‘Automatic debiting' in the box marked ‘other' in the ‘mode of payment' section of the fee calculation sheet annexed to Forms PCT/RO/101 and PCT/IPEA/401. They must also give the deposit account number and the account holder's details. 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. The same applies to international applications using Forms PCT/RO/101 and PCT/IPEA/401.

As indicated under point 1 above, automatic debit orders may be filed on paper, by fax or via web-form filing. But this may result in delays in processing them, and thus in debiting any fees due. Only if they are filed online can the EPO ensure their timely processing.

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.

In proceedings under the PCT, an automatic debit order may not be submitted together with an international application filed with a receiving Office other than the EPO. In such cases, the order must be submitted direct to the EPO as ISA and/or IPEA.

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).

For automatic debit orders filed together with a European patent application by means of Online Filing, web-form filing, CMS or fax, no confirmation copy is required.

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

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 under points 3.I(j) and (k), 3.II(g), 10 and 13 in this annex.

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 7 AAD: Insufficient funds (shortfall)

If the deposit account does not contain sufficient funds, the debit order will not be carried out. The deposit account holder will be informed immediately, and invited to replenish the account. The date of payment will be the date of replenishment. If the date of payment is after the time limit for paying the fee, the general provisions of the EPC will apply.

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.

Subsequent automatic debit orders can be filed electronically via EPO Online Filing or CMS using EPO Form 1038E or PCT-SFD (one electronic request per application concerned), or via Online Fee Payment in Online services. This method ensures rapid processing of the debit order. They can also be filed on paper, by fax or via web-form filing. Paper orders 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.

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.I(j) AAD) or additional fees or surcharges (see notes under point 3.I(o) and (p) in this annex).

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 under points 3.I(j) and (k), 6 and 13 in this annex.

Regarding international applications in proceedings before the EPO as receiving Office, ISA or IPEA under the PCT, see point 10.2 AAD.

Re point 11 AAD: Use of other means of payment

Amongst other things, 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 (see in particular Annex A.1, point 10.1(e), and notes above under point 3.I(d)).

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

If the applicant wants an early start to processing before the EPO in the European phase ("early entry", Articles 23(2) and 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 the fee may be paid before that date (e.g. a renewal fee) [ 31 ] 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 from being paid.

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

Where automatic debit orders for proceedings mentioned in point 2(b) and (e) AAD are pending simultaneously, the account holder must specify which automatic debit order he wishes to revoke. The notice of revocation must therefore indicate the application number (EP or PCT number) accorded in the proceedings concerned. If he wishes to revoke automatic debit orders for both types of proceedings the notice of revocation must indicate the application numbers accorded in both proceedings.

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 under point 10 in this annex).

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 confirms the date of receipt of a notice of revocation.

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 under points 3.I(b), (c), (d), (f) and (r) in this annex). See also point 11 AAD.

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

Re point 13 AAD: Termination of the automatic debiting procedure

13.1 In respect of European patent applications, European patents and international applications before the EPO as designated or elected Office

An automatic debit order ceases to be effective when the proceedings in question are closed (see point 13.1(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 notes under points 3.I(k) and 10 in this annex.

There are various sets of circumstances in which an applicant, patent proprietor or representative can withdraw from the proceedings. It is therefore necessary to be clear whether the automatic debiting procedure is to be continued. Hence the requirement under point 13.1(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 13.1(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).

13.2 In respect of international applications before the EPO as receiving Office, ISA or IPEA

An automatic debit order ceases to be effective when the proceedings before the EPO as receiving Office, ISA or IPEA are terminated (see point 13.4 AAD).

There are various sets of circumstances in which an applicant or agent can withdraw from the proceedings. It is therefore necessary to be clear whether the automatic debiting procedure is to be continued. That is why point 13.2(b) and (c) AAD require not only that notification of a change of applicant or agent is received but also that the automatic debit order with the EPO is revoked in accordance with the procedure in point 12 AAD. Otherwise the automatic debiting procedure continues with the applicant or agent as hitherto.

An automatic debit order furthermore ceases to be effective on the day on which the international application is withdrawn or considered to be withdrawn (see point 13.2(a) AAD) and – in respect of international applications before the EPO as IPEA – on the day on which the demand is withdrawn or considered to be withdrawn (see point 13.3 AAD).

For more details see point 13.2 to 13.4 AAD.

 

 

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

[ 2 ] For further details, see notice from the European Patent Office dated 12 February 2015 concerning revision of the ADA and their annexes in this supplementary publication.

[ 3 ] See notice from the EPO dated 21 February 2013 concerning the request for early processing, OJ EPO 2013, 156, point 12.

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

[ 5 ] The additional fee is part of the filing fee; see notice from the EPO dated 8 January 2014 concerning European divisional applications – amendments of Rules 36, 38 and 135 EPC and Article 2(1) RFees (OJ EPO 2014, A22).

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

[ 7 ] Please note that under Rule 6 EPC, as amended with effect from 1 April 2014, the scope of application of Rule 6(3) EPC is limited to the filing fee and examination fee. For further details as to the new regime and the applicable transitional provisions, see notice from the EPO dated 10 January 2014 concerning amended Rule 6 EPC and Article 14(1) RFees (OJ EPO 2014, A23).

[ 8 ] See notice from the EPO dated 10 June 2014 concerning amended Rules 164 and 135 EPC (OJ EPO 2014, A70) and Guidelines C-III, 2.3, 3.1.1 and 3.1.2.

[ 9 ] See references in footnote 4.

[ 10 ] See references in footnote 4 and decision of the Administrative Council of 6 March 2008 (OJ EPO 2008, 124).

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

[ 12 ] See decision of the Administrative Council of 26 October 2010 (OJ EPO 2010, 634).

[ 13 ] 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) or (2) and 162 EPC (OJ EPO 2011, 354).

[ 14 ] Applicable to European patent applications filed and international applications entering the European phase on or after 1 April 2009 - see references in footnote 4. See also introductory remarks above under point 3.I(d).

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

[ 16 ] See footnote 7.

[ 17 ] See references in footnote 4.

[ 18 ] For details of the crediting mechanism under Rule 71a(5) EPC, see GL A-X, 11 and C-V, 4.2.

[ 19 ] Please note that under Rule 6 as amended as from 1 April 2014 the scope of application of Rule 6(3) EPC in conjunction with Article 14(1) RFees is limited to the filing fee and examination fee; see footnote 7.

[ 20 ] Under Rule 6 as amended as from 1 April 2014, the scope of application of Rule 6(3) EPC in conjunction with Article 14(1) RFees is limited to the filing fee and examination fee; see footnote 7.

[ 21 ] Under Rule 6 as amended as from 1 April 2014, the scope of application of Rule 6(3) EPC in conjunction with Article 14(1) RFees is limited to the filing fee and examination fee; see footnote 7.

[ 22 ] See the note above under point 3.I(c) concerning designation fee(s).

[ 23 ] 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.

[ 24 ] 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).

[ 25 ] 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).

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

[ 27 ] See Guide for applicants, Part 2: PCT procedure before the EPO (Euro-PCT Guide), January 2014, point 180.

[ 28 ] For details, see notice from the EPO dated 18 October 2013 concerning the filing of sequence listings (OJ EPO 2013, 542).

[ 29 ] The list is available at http://archive.epo.org/epo/pubs/oj008/11_08/11_5218.pdf and http://documents.epo.org/projects/babylon/eponet.nsf/0/D712DD08A7CEF1F2C12574FF003A99DA/$File/low_income_states_en.pdf

[ 30 ] For further details, see the notice from the European Patent Office dated 12 February 2015 concerning revision of the ADA and their annexes in this supplementary publication.

[ 31 ] Since 1 April 2009 it has not been possible to validly pay renewal fees 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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