Notice from the European Patent Office dated 27 September 2017 concerning revision of the Arrangements for deposit accounts and their annexes
The Arrangements for deposit accounts (ADA) and their annexes as in force since 1 April 2015[ 1 ] have been revised and restructured. The updated texts include all recent changes[ 2 ] and lay down new requirements for using and managing deposit accounts. Overall the changes aim at further streamlining workflows and at facilitating the payment process for both account holders and the Office. Account holders will benefit in particular from faster fee processing times and from fully transparent account balances and transactions.
The most significant change to the ADA is that debit orders have to be filed in an electronically processable format, using one of the accepted electronic means of filing (see point I.1 below). Users are protected against possible unavailability at the EPO of the electronic means of filing on the last day for making a payment (see point I.1.2 below). There is also a special procedure for applicants who file under Article 75(1)(b) EPC with a competent national authority (see point I.1.3 below).
This major change is accompanied by other more formal adjustments to fully implement the EPO's decision to move to online management of deposit accounts (see point I.2.4).
Deposit account holders who do not use online filing/payment services for some or all of their debit orders can instead pay by credit card or bank transfer to the EPO's bank account.[ 3 ]
In response to users' requests, the restrictions on the use of automatic debiting for the fees falling due on filing a request for early processing under Article 23(2) or 40(2) PCT at the EPO as designated or elected Office have been removed (see point II.2).
Given the new structure and the varied nature of the changes, users are recommended to read the individual revised provisions carefully.
The main changes to the ADA and their annexes are summarised below.
1. New filing and format requirements for debit orders
Under point 5.1.2 ADA (formerly point 6.2), the Office will accept and process debit orders only if they are filed in an electronically processable format (XML) using one of the following electronic means:
- EPO Online Filing or the EPO Case Management System (CMS), using EPO Forms 1001E, 1200E, 2300E or 1038E;
- the EPO Online Filing software or PCT-SAFE, CMS and ePCT using the PCT fee calculation and payment feature;
- Online Fee Payment (OFP) in Online services.
These new requirements apply also to the filing of automatic debit orders.
Debit orders submitted in any other way (e.g. using EPO Form 1010 or any other form of written submission; see also point I.1.4) or using a different format (e.g. Form 1010 filed in PDF via CMS, web-form filing, online filing or ePCT) are invalid and will not be carried out. The EPO will inform the party to the proceedings accordingly, as a courtesy service (see point 5.1.3 ADA).
1.1 Legal consequence of submitting a debit order in a non-accepted manner (point 5.4.2 ADA)
The legal consequence of submitting a debit order via a non-accepted means of filing or in an invalid format (point 5.1.3 ADA) is laid down in point 5.4.2 ADA which provides that the date of receipt will not be regarded as the payment date. This means that once the time limit for paying a fee has expired, the party to the proceedings can reverse any loss of rights only by making use of a legal remedy available under the EPC or PCT (e.g. grace period under Rule 51(2) EPC, further processing under Article 121 EPC, re-establishment of rights under Article 122 EPC, or late payment fee under Rule 16bis or Rule 58bis PCT).
1.2 Provision applicable if the electronic means of filing are unavailable (point 5.5 ADA)
If any of the accepted means of filing debit orders is unavailable at the EPO on the last day for paying a particular fee, the payment period will be extended to the first day thereafter on which all such means as are available for the type of application concerned[ 4 ] can be accessed again. This provision is based on Rule 134(1) EPC.
In the event of a general unavailability of electronic communication services, or if other like reasons within the meaning of Rule 134(5) EPC or Rule 82quater.1 PCT arise, payment periods are extended in accordance with these provisions.
If a system breakdown occurs at the payer's end, another payment method should be used (such as bank transfer or credit card).
1.3 Filings under Article 75(1)(b) EPC with a competent national authority (point 5.6 ADA)
Applicants who file their application with a competent national authority under Article 75(1)(b) EPC and wish to pay fees from an EPO deposit account should as far as possible file their debit orders using an accepted means of filing and a valid format under point 5.1.2 ADA. In such cases, to avoid any loss of rights, the debit order must be filed at the latest on expiry of the relevant time limit under the EPC or, where applicable, the PCT.
Applicants may also use new EPO Form 1020 for instructing the EPO to debit from their deposit accounts the fees that can be paid on filing, and for selecting the automatic debiting procedure (by crossing the appropriate box on the form). The EPO has designed this new form with a view in particular to the needs of applicants unable to file applications online.
Use of new EPO Form 1020 is exclusively restricted to paper filings under Article 75(1)(b) EPC.
1.4 Updating of EPO forms
References to the automatic debiting procedure or to vouchers for payment will be deleted from the paper versions of EPO Forms 1001, 1200, 2300 and 2380 with effect from 1 December 2017.
EPO Form 1010 will no longer be available on the EPO website as from 1 December 2017. As from that date, any reference in other official publications to its obligatory use is no longer applicable. The publications concerned will be updated in accordance with their usual revision cycle.[ 5 ]
2. New functionalities in Online Fee Payment and other changes in the management of debit orders
2.1 Validation of payments included in batch debit orders
The validation functionality which became operational on 5 July 2017 is now governed by point 5.3 ADA.[ 6 ]
2.2 Partial debiting
If the funds in the account are not sufficient to cover all the fees indicated in the debit order, the fees are debited in a precise order – namely by ascending order of fee codes – as long as the funds allow. This functionality was introduced on 1 November 2016[ 7 ] and is now governed by point 5.2.4 ADA.
2.3 Partial revocation of a debit order
Since 1 November 2016 it has been possible to revoke debit orders in part.[ 8 ] This possibility is now governed by point 6.1 ADA.
2.4 Further changes in the management of debit orders
The online request form for opening a deposit account has been updated to allow users who have closed their accounts to reopen them by crossing the appropriate box and indicating the account number. Any changes in the account holder's contact details must be notified to the Office using the same online form.
Requests for repayments and transfers of funds between deposit accounts must be filed by email attachment to firstname.lastname@example.org, or by completing and submitting the online contact form available on the EPO website under https://forms.epo.org/service-support/contact-us/contact0-form.html[ 9 ] together with the signed written request.
As from 1 December 2017, account statements will in principle be accessible via Online Fee Payment only. However, to ensure a smooth transition, the EPO will continue to send paper statements by post until 28 February 2018.
II. Annexes A.1 and A.2 to the ADA concerning the automatic debiting procedure
1. General points
These two annexes have been revised to reflect the changes due to the move to online management of deposit accounts.
In particular, under point 7.1 of the Arrangements for the automatic debiting procedure (AAD), partial debiting under point I.2.2 above is also applicable to the automatic debiting procedure.
Furthermore, under point 12 AAD, automatic debit orders must now be revoked online. As previously, they cannot be revoked in part, but only – given their nature – as a whole.
2. Availability of the automatic debiting procedure for Euro-PCT applications filed with a request for early processing under Article 23(2) or 40(2) PCT ("early entry")
2.1 Automatic debiting of the fees due on early entry into the European phase is available for Euro-PCT applications in which the request for early processing is filed on or after 1 November 2017.
2.2 Applicants can use automatic debiting to pay these fees, and the request for early processing will take effect on the day it is received, if the following three conditions are met:
- The automatic debit order is filed in a format accepted by the EPO, and the deposit account contains sufficient funds to cover the fees due.
- The applicant complies with any early-entry requirements[ 10 ] other than the payment of fees.
- The documents referred to in Article 20 PCT are already available to the EPO as designated or elected Office on the date on which the request for early processing is received.
2.3 The documents referred to in Article 20 PCT are available to the EPO if
- the international application has already been published[ 11 ]
- the international application was filed at the EPO as receiving Office
- the EPO is the (Supplementary) International Searching Authority[ 12 ] or International Preliminary Examining Authority[ 13 ]
- WIPO's International Bureau (IB) has communicated the international application to the EPO as designated Office prior to publication, in accordance with the applicant's express request under Rule 47.4 PCT.
2.4 The EPO requires the documents referred to in Article 20 PCT so that it can establish whether an additional fee for the 36th and each subsequent page[ 14 ] is payable (cf. points 3.2(a)(ii) and 5.2 AAD). Copies of the international application filed by the applicant on early entry into the European phase cannot be used for this purpose.
2.5 If the documents referred to in Article 20 PCT are not available to the EPO when the request for early processing is filed, i.e. if the international application has not yet been published and the EPO is neither the receiving Office nor the (Supplementary) International Searching Authority or the International Preliminary Examining Authority, the EPO will ask the IB to provide it with the documents referred to in Article 20 PCT (Article 13(1) in conjunction with Rule 47.4 PCT).
2.6 The fees due will then be automatically debited on the day those documents are received from the IB, so the effective date of early entry is deferred to that date.
2.7 Alternatively, the fees due may be paid, using another permitted means, on the day on which the request for early processing is filed. In that case the applicant must calculate any additional fee himself. The EPO will check that he has done so correctly when it receives the documents referred to in Article 20 PCT from the IB. If all fees due, including any additional fee, have been correctly paid, and all other requirements for effective early entry have been complied with, the request for early processing takes effect on the date of payment.
2.8 If any fees due on filing the request for early processing are paid using another permitted means of payment, the EPO will not carry out the automatic debit order for those fees (see point 11 AAD).
2.9 Any further fees payable under Rule 159(1) EPC and falling due at a later date, e.g. the examination fee, the designation fee and the third-year renewal fee, will be debited automatically in accordance with points 5.1 and 6 AAD, i.e. on the last day of the time limits under Rules 70(1), 39(1) and 51(1) EPC, respectively.
III. Annex B to the ADA
Annex B to the ADA 2015 has been deleted, since all necessary information about Online Fee Payment services (e.g. the OFP user manual) is published on the EPO website. Its appendix has therefore also been deleted.
Annexes C.1 and C.2 to the ADA 2015 remain in force, and have been renumbered as Annexes B.1 and B.2 to the ADA 2017.
IV. Entry into force
With the exception of the points referred to in the paragraph below, the revised texts enter into force on 1 December 2017 and supersede those dated 1 April 2015 (supplementary publication 3 – Official Journal EPO 2015).
Points 2.1(b), 3.2(a), 5.1 and 6.1 of Annex A1 and all corresponding information points in Annex A2 governing the automatic debiting procedure in respect of international applications entering the European phase with a request for early processing (Article 23(2) or 40(2) PCT) enter into force on 1 November 2017.
[ 1 ] Supplementary publication 3 – Official Journal EPO 2015.
[ 2 ] See points I.2.1, I.2.2 and I.2.3 of the present notice.
[ 3 ] For more details, see the EPO website.
[ 4 ] For example, the unavailability of ePCT cannot be invoked for an EP application in EP proceedings.
[ 9 ] Under "Topic" and "Subject", please select "Fee payment" and "Deposit account" from the respective drop-down menus.
[ 10 ] See the notice from the European Patent Office dated 21 February 2013 concerning the request for early processing, OJ EPO 2013, 156, point II.8.
[ 11 ] The international application is available in PatentScope. Some time after its publication the international application will also be accessible in the European Patent Register.
[ 12 ] The applicant has received the "Notification of receipt of search copy" (Form PCT/ISA/202) from the ISA/EP.
[ 13 ] The applicant has received the "Notification of receipt of demand" (Form PCT/IPEA/402) from the IPEA/EP.
[ 14 ] See OJ EPO 2009, 118 and 338.