As from 1 December 2017, the EPO is only accepting debit orders filed in an electronically processable format. This means that debit orders are no longer valid and will not be carried out if filed on paper or in a non-accepted format.
This change, along with various others, was made as part of the revision of the Arrangements for deposit accounts (ADA) and their annexes, and announced in a notice from the EPO dated 27 September 2017, published in Supplementary publication 5, OJ EPO 2017. The present list of frequently asked questions is intended to provide additional information on the main changes resulting from the revision. This list of questions is meant to serve as general information, without prejudice to the competence of the departments entrusted with the procedure.
The structure of these texts has remained unchanged for many years. The introduction of a number of amendments offered an opportunity for a restructuring to make them clearer, easier to read, and more consistent.
Apart from “online only processing of debit orders”, the texts have not changed substantially.
The provisions of the 2015 ADA correspond to the restructured 2017 update as follows:
|Point 2||Point 2
|Point 6||Point 5
It means that debit orders can only be filed in XML format, i.e. an electronically processable format using one of the electronic means listed in point 5.1.2 ADA.
The aim was to further streamline the workflows and to facilitate payment processing, thereby making deposit accounts easier to manage, for both applicants and the Office, as an overwhelming majority of users already make their payments via different EPO online tools.
Apart from reducing processing times, online-only filing of debit orders has several additional advantages for users in terms of account management:
Yes. Automatic debit orders will only be accepted if filed in an electronically processable format, e.g. using the Online Fee Payment service available on the EPO website.
No. The online processing of (automatic) debit orders only applies to new (automatic) debit orders filed as from 1 December 2017, when the new rules enter into force.
If you do not wish to use these tools to file some or all of your debit orders, you will need to switch to another payment method offered by the EPO, namely bank transfer or credit card.
No. Fee-debiting instructions given in the annotation tabs are invalid, and the EPO will not process them. As a courtesy, it will however inform you accordingly.
No, because the debit order itself is not electronically processable. It is therefore invalid and will not be carried out. As a courtesy, the EPO will inform you accordingly.
Such requests are not valid, and the EPO will not act on them. In fact, they were not accepted under the old rules either, since debit orders have to be clear, unambiguous and unconditional.
Please note however that if an insufficient amount is entered in a debit order, the EPO will debit the missing amount ex officio, and inform the applicant accordingly via Form 2935, setting a two-month limit for the applicant to contest the EPO’s finding.
You may pay your fee(s) by either credit card or bank transfer instead.
We recommend that you set up an in-house safety/emergency procedure to deal with any such breakdown.
As a rule, the EPO publishes an advance notice, on its website, of any periods of unavailability due to maintenance work. We recommend that you check the website for such downtimes, which are covered by the safeguards under point 5.5 ADA.
If you cannot find any information about system problems on the EPO website and still have doubts as to the origin of the problem, you may consider paying the outstanding fee (e.g. by bank transfer) and filing a request under Article 7(3) RFees, remembering also to pay the surcharge of 10% (see Article 7(3)(b) RFees). In parallel you should file a request under point 5.5 ADA, pointing out that the accepted means of filing debit orders (see point 5.1.2 ADA) were unavailable, since the EPO’s filing or payment tools may exceptionally be unavailable for reasons other than maintenance (e.g. malfunction). The surcharge paid under Article 7(3)(b) RFees will be refunded if it turns out that the system’s failure was indeed attributable to the EPO.
Online filing is not available at every central industrial property office or other competent authority. If you file your new European patent application on paper, you may use new EPO Form 1020 to file an (automatic) debit order together with your application documents. Please note that the use of EPO Form 1020 is restricted to filings under Article 75(1)(b) EPC, and the form lists only the fees that can be validly paid on filing.
The EPO accepts and processes (automatic) debit orders on EPO Form 1020 only on condition that:
Please note that EPO Form 1020 will not be accepted, and the (automatic) debit order will not be carried out, if filed directly with the EPO.
An electronically processable debit order for fees payable on filing can also be separately submitted to the EPO within the period under Rule 38(1) EPC, regardless of whether the European patent application filed under Article 75(1)(b) EPC is submitted electronically or on paper.
If you intend to send the debit order directly to the EPO, you must use the electronic filing/payment tools in accordance with point 5.1.2 ADA, e.g. Form 1038e in OLF or CMS. Due to the back-end validations in place, payment via OFP might be not possible if the national authority concerned has not yet forwarded the application documents to the EPO.
Its aim is to block the execution of debit orders issued for applications that are no longer pending before the EPO, thus reducing the administrative work involved in refunding invalidly paid fees, for both users and the EPO. It does so by automatically rejecting debit orders included in a batch debit order which relate to the payment of renewal fees for “definitively closed” European patent applications or granted patents.
The new functionality also rejects debit orders included in a batch debit order which relate to the payment of fees for transfer of rights for “definitively closed” European patent applications.
After validation, you will receive a message, generated by the system, indicating that the payment could not be carried out. The message can be printed or downloaded at any time and is stored under account history in the “rejected payments” folder. This enables both you and the EPO to retrace the issue. Thus, if a payment is erroneously rejected, no loss of rights will ensue and the date of the attempted payment will be accepted as the payment date.
Yes. In the past, if the funds available did not cover all the fee codes for a given application, the debit order was not carried out at all. But now it will be at least partially executed: the fees will be debited in a precise order – namely by ascending order of fee codes – as long as the funds allow.
An EP application has 38 pages and is filed on 12.12.2017; a debit order is filed via CMS for the filing fee (001), the additional fees (501)), the search fee (002), the designation fee (005) and the examination fee (006). The account balance is EUR 857.
The fees will be booked in the following order: 001, 002, 005, 006 and 501, until the funds are exhausted. When the account is replenished, the outstanding fees will be debited with effect from the date of replenishment.
However, if the deposit account is not replenished in due time and/or a debit order is filed on the last day for paying the fees due, further processing may be required.
In any case, it is the deposit account holders’ responsibility to ensure that their deposit account contains sufficient funds to cover all debit orders submitted.
Yes. Under the new rules, specific fees can be individually revoked, provided the revocation is filed by midnight CET on the same day as the original debit order was received at the EPO. In the past, the debit order had to be revoked in its entirety.
Please note that an automatic debit order can only be revoked via Online Fee Payment in Online services. As before, they cannot be revoked in part, but only – given their nature – as a whole.
Generally, on the working day following that on which the EPO received it.