Article 78
EUROPEAN PATENT OFFICE
Information from the EPO
Notice from the European Patent Office dated 4 June 2020 concerning changes to fee payment via the automatic debiting procedure
The provisions applicable to the automatic debiting procedure need to be updated to reflect developments in the Regulations under the Patent Cooperation Treaty (PCT) and the legal framework governing the European patent grant procedure. At the same time, and with the aim of further streamlining workflows and facilitating the management of deposit accounts, the procedure for closing deposit accounts is being simplified for the benefit of account holders. To this end, amendments are necessary in both Annex A.1 to the Arrangements for deposit accounts (ADA) ‒ Arrangements for the automatic debiting procedure (AAD) and Annex A.2 to the ADA ‒ Information from the EPO concerning the automatic debiting procedure. The amendments enter into force on 1 July 2020.
The changes and improvements can be summarised as follows.
I. Ex officio revocation of all pending automatic debit orders upon closure of a deposit account
As long as there are pending automatic debit orders, a deposit account cannot be closed. To date the EPO has required account holders to revoke each pending automatic debit order before meeting a request for closure of a deposit account.
With the aim of easing the burden on users and simplifying the process, the EPO will revoke any pending automatic debit orders ex officio when processing a valid request for closure of a deposit account (for the requirements applicable to such requests, see point 2.2 ADA). Point 10.3 AAD and "Re point 10 AAD" in Annex A.2 are being amended accordingly.
II. Additional search fee under Rule 40bis PCT in conjunction with Rule 20.5bis PCT in the event of correction of an erroneous filing
The Regulations under the PCT have been amended with effect from 1 July 2020 to permit the incorporation by reference of correct elements or parts where elements or parts of the international application were filed erroneously. Under new Rule 40bis PCT, the International Searching Authority (ISA) may charge an additional fee where originally filed elements or parts of an international application are corrected after the search has begun or even been completed. Where the EPO is acting as ISA, in such cases it will search the international application and charge an additional search fee of EUR 1 775. Applicants have one month to pay the fee; otherwise the EPO will not draw up the additional search report.
This additional search fee cannot be paid using the automatic debiting procedure. For this reason, a new point (k) is being added to point 3.2 AAD.
III. Abolition of the option to waive a further communication under Rule 71(3) EPC
With effect from 1 July 2020 the EPO has decided to abolish the option to waive a further communication under Rule 71(3) EPC (see Notice from the EPO dated 26 May 2020 concerning abolition of the option to waive the right to a further communication under Rule 71(3) EPC, OJ EPO 2020, A77). To reflect this change, in Annex A.2 the second paragraph of point I.7 under "Re point 3 AAD" is being deleted. The EPO will not process waivers which are filed in response to a communication under Rule 71(3) EPC dated 1 July 2020 or later. Waivers filed in reply to a communication under Rule 71(3) EPC dated before 1 July 2020 will still be processed. However, users are reminded that, in such cases, the fee for grant and publication will not be debited automatically from a deposit account and therefore must be paid using an alternative means.