Main changes to the Arrangements for deposit accounts and their annexes as from 1 December 2017

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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 This means that debit orders are no longer valid and will not be carried out if filed on paper or in a non-accepted format.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.

Fragen

“Online only processing” of debit orders

Validation of payments included in batch debit orders

Partial debiting/Partial revocation of a debit order/Replenishment of a deposit account

Antworten

Why have the ADA and their annexes been restructured?

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:

2015                       2017

Point 1                    Point 1

Point 2                    Point 2

Point 3                    Point 1

Point 4                    Point 3

Point 5                    Point 4

Point 6                    Point 5

Point 7                    Point 6

Point 8                    Point 7

Point 9                    Deleted

Point 10                  Point 2

Point 11                  Point 8


“Online only processing” of debit orders


What does “online only processing” of debit orders mean?

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.


Why has the EPO moved to “online only processing” of debit orders?

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.


Is automatic debiting also affected by the new filing and format requirements?

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.


What happens if I filed an automatic debit order on paper before 1 December 2017? Do I have to resubmit it online?

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.


What other options are available if I do not use the online filing/payment tools for debiting my EPO deposit account?

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.


What happens if, when filing EPO Form1038E in Online Filing, I use the annotation tabs to ask the EPO to debit the account for certain fees? Is that considered to be an electronic payment?

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.


What happens if I attach a Form 1010 to EPO Form1038e or file it using Web-Form Filing? Is that considered to be an electronically processable format?

No, because the debit orders itself is not electronically processable. It is therefore invalid and will not be carried out. As a courtesy, the EPO will inform you accordingly.


In my submissions I usually ask the EPO, as a precautionary measure, to debit any further fees due which I might have overlooked in my debit order. How are such requests dealt with under the new rules?

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.


What can I do if my IT system suddenly breaks down when I am in the process of filing my debit order?

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.


I have to file my European patent application under Article 75(1)(b) EPC with the competent national authority and I would like to pay my fees from my deposit account. However, my national patent office does not offer the possibility to file online. Can I still use EPO Form 1010?

No. EPO Form 1010 will no longer be accepted as from 1 December 2017, and will thus no longer be available on the EPO website as from that date.

However, you may use new EPO Form 1020 for instructing the EPO to debit from your deposit account the fees that can be paid on filing, and for selecting the automatic debiting procedure (by crossing the appropriate box on the form) if required.

The EPO has designed this new form with a view in particular to the needs of applicants who cannot file applications online because the competent national authority does not provide for online filing.

Please note that the use of new EPO Form 1020 is exclusively restricted to filings under Article 75(1)(b) EPC.

Alternatively, you can decouple the payment from the filing and make the payment online direct to the EPO. In this case, you can use Form 1038e in OLF or CMS. However, 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 filing documents to the EPO.


What can I do if, on the last day for paying a particular fee, I am unable to file my debit order because of a system issue but cannot ascertain whether the problem is attributable to the EPO?

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.


Validation of payments included in batch debit orders


What is the aim of this new functionality?

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.


What happens if a payment is erroneously rejected by the validation functionality?

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.


Partial debiting/Partial revocation of a debit order/Replenishment of a deposit account


What happens if the funds in my deposit account are not sufficient to cover all the fees indicated in my debit order? Will the EPO debit any fees and, if so, which one(s)?

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.

Example

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.


Is partial debiting also applicable to the automatic debiting procedure?

Yes

Can I partially revoke my debit order?

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 now only be revoked online. As before, they cannot be revoked in part, but only – given their nature – as a whole.


If I replenish my deposit account, when is the replenishment visible in the online fee payment tool?

Generally, on the working day following that on which the EPO received it.


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