The ADA and their annexes (Supplementary publication 4, OJ EPO 2019) have been revised and restructured to further streamline the workflow and facilitate the refund process. The main change concerns refund instructions that, since 1 October 2019, must be filed in an electronically processable format so as to facilitate the end-to-end electronic processing of refunds (see notice from the EPO dated 20 August 2019, published in Supplementary publication 4, OJ EPO 2019). The present list of frequently asked questions is intended to provide information on the main changes resulting from the recent revisions. This list of questions is meant to serve as general information, without prejudice to the competence of the departments entrusted with the procedure.
You may pay your fee(s) by another payment method offered by the EPO instead, e.g. by bank transfer, and, if applicable, file a request under Article 7(3) RFees (see next question).
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 regularly for such downtime notices.
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 by another payment method offered by the EPO, 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.
It means that refund instructions can only be filed in XML format, i.e. an electronically processable format using one of the electronic means listed in point 8.2 ADA. Refund instructions submitted on paper, by fax, via the Web-Form Filing service, as a PDF attachment or using the annotation field in the online forms, are invalid and will not be processed. As a courtesy service, the EPO will inform you about invalid refund instructions and will invite you to claim any refunds online via epo.org/fee-payment-service/en/refund.
No. According to new point 8.1 ADA, you can also indicate a deposit account held by a third party. Please note, however, that the refund instructions must always be filed by a party to the proceedings since a third party is not allowed to act in the proceedings before the EPO. Thus, if a third party submits refund instructions to the EPO, they will be ignored.
No. The refund instructions that you gave the EPO as RO or as International Authority under the PCT (ISA/IPEA) are only valid during the international phase. Therefore, you must file new refund instructions when you enter the European phase. You can do that with EPO Form 1200E.
Yes. Therefore, to ensure that refunds can be processed smoothly, please verify that your refund instructions are clear and up to date, e.g. in the case of a change of representative or a transfer of rights. You can do that with EPO Form 1038E. If the EPO notices that refund instructions are outdated, it will ex officio delete any instructions relating to refunds to a deposit account held by a party that has withdrawn from the proceedings. The EPO will also ex officio delete any instructions relating to refunds to a deposit account held by a third party if they were given by a party that has withdrawn from the proceedings.
If there are no refund instructions on file or if the instructions on file are ambiguous, the EPO will invite you to claim the refund online via its website (epo.org/fee-payment-service/en/refund) using the refund code indicated in the communication. Since the refund code is confidential, the communication is not public, i.e. not accessible in the EPO Register. When you receive a refund code, go to the above website, register or sign in with your email address and password, and enter the application number, the refund code and your bank account to which the refund should be made.
The validation functionality enables the automatic rejection of batch or individual debit orders initiated in Online Fee Payment (OFP) for applications
that are no longer pending before the EPO (this concerns granted patents (renewal fees) or applications that are definitively closed (renewal fees and fees for registration of a transfer));
for which the same fee has already been paid before, unless the fee is one of those that can be paid several times in the proceedings before the EPO; or
for which a renewal fee is paid before the applicable earliest valid payment date (Rule 51(1) EPC).
The automatic rejection in the Online Fee Payment service reduces the administrative work involved in refunding invalidly paid fees, for both users and the EPO.
The new functionality rejects the double payment of a fee that is payable only once in the proceedings, e.g. the filing fee or the third/fourth/fifth/etc. renewal fee. Fees that can be paid several times during the proceedings before the EPO, such as the fee for further processing, are excluded from double-payment validation. A list of excluded fees is available in Annex A.3 to the ADA.
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.
No. In the case of erroneous payments made on the basis of debit orders filed via OLF or CMS, the EPO will refund the relevant fee to the deposit account in accordance with the refund instructions on file.
Yes; the fees will be debited in a precise order – namely by ascending order of fee codes – as long as the funds allow. Since the additional fee for pages in excess of 35 (fee codes 501, 520) is part of the filing fee (codes 001, 020), the "page" fee is booked together with the filing fee.
If a debit order cannot be executed in full, no other debit order is booked until the account is replenished.
An EP application has 38 pages and is filed on 12.10.2019; 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, 501, 002, 005 and 006, 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.
If you have effected the payment via another payment method accepted by the EPO, you do not need to worry about a pending debit order that could not be executed due to insufficient funds. In the case of a debit order still pending more than two months after the date of receipt or after the date indicated as the deferred payment date, the EPO will remove it from the list of pending debit orders in Online Fee Payment, provided that
the fee specified in the debit order was paid by another means of payment; or
the patent application concerned is considered definitively closed.