2.2 Payment of claims fees under Rule 162

If the application documents on which the European grant procedure is to be based contain more than 15 claims, a claims fee is due in respect of the 16th and each subsequent claim, and a higher claims fee is payable in respect of the 51st and each subsequent claim.

Rule 162(1) states that any claims fees for a Euro-PCT application must be paid within the 31-month period under Rule 159(1) (A‑XIII, 11.8). However, Rule 162(2) relaxes this obligation to pay within that 31-month period by allowing – for amendments made both before and after expiry of the 31-month period – any claims fees to be paid up to expiry of the six-month period under Rules 161 and 162.

See A‑XII, 7.2 for the procedure to follow if the applicant wants to waive the right to receive the communication under Rules 161 and 162: for the waiver to be valid, the right under Rule 162(2) must be waived and any claims fees must thus be paid under Rule 161(1), i.e. within the 31-month time limit.

Rule 162(2), first sentence, covers the situation in which the applicant does not file amendments after expiry of the 31-month period and before expiry of the six-month period under Rule 161. In this case, the applicant must ensure that any claims fees for the set of claims filed within the 31-month period that were not paid within that period are paid before expiry of the six-month period under Rule 161.

Example 1:

A Euro-PCT application X contains 27 claims on expiry of the 31-month period. The applicant paid five claims fees within this period, meaning that they must ensure that seven claims fees are paid before expiry of the six-month period under Rule 161(2).

Rule 162(2), second sentence, covers the situation in which the applicant files an amended set of claims after expiry of the 31-month period and before expiry of the six-month period under Rule 161. In this case, the applicant must calculate the number of claims fees due on the basis of the claims on file on expiry of the six-month period. Before expiry of this period, they must ensure that any claims fees are paid for the number of claims on file on expiry of this period which exceeds the number of claims for which claims fees were paid within the 31-month period.

Example 2:

A Euro-PCT application Y contains 27 claims on expiry of the 31-month period. The applicant paid five claims fees within the 31-month period. After expiry of the 31-month period and before expiry of the six-month period under Rule 161, they file an amended set of 32 claims. The applicants must calculate the number of claims fees on the basis of the claims on file on expiry of the six-month period, i.e. 32 - 15 = 17. Since they have already paid five claims fees, 12 claims fees (17 - 5 = 12) are to be paid before expiry of the six-month period under Rule 161.

The amount of the claims fee varies according to a two-tier system. A claims fee must be paid for the 16th and each further claim. However, for any claim over 50, a higher amount is due (A‑XIII, 11.8). The claims fees are calculated on the basis of the number of claims in the application documents specified in accordance with Rule 159(1)(b), e.g. as specified in EPO Form 1200. For the procedure where the application documents have not been specified, see A‑XII, 5.3.

Where the number of claims specified under Rule 159(1)(b) changes as a consequence of a (further) amendment submitted within the six-month time limit under Rules 161 and 162, the new number is decisive for calculating the amount of the claims fees to be paid. This means that, if the number of claims forming the basis for the further procedure is reduced as a result of amendments made under Rule 161, any claims fees overpaid will be refunded (Rule 162(3)).

If there are more than 15 claims on file on expiry of the six-month period under Rule 161, any of the 16th and each subsequent claim for which no claims fees have been paid is deemed to be abandoned under Rule 162(4) and the applicant is duly notified (OJ EPO 2016, A103). A loss of rights may be remedied by a request for further processing under Art. 121 (E‑VIII, 2).

Features of a claim deemed to have been abandoned pursuant to Rule 162(4), and which are not otherwise to be found in the description or drawings, cannot subsequently be reintroduced into the application and, in particular, not into the claims.