Notice from the European Patent Office dated 24 April 2023 concerning the revision of the Arrangements for deposit accounts (ADA) and their annexes in view of the entry into force of the Unitary Patent system
With effect from 1 June 2023, a revised version of the Arrangements for deposit accounts and their annexes will allow users to pay fees due in Unitary Patent proceedings before the European Patent Office (EPO) from their deposit accounts.
1. When the Unitary Patent system enters into force on 1 June 2023, the EPO will be responsible for collecting fees payable during Unitary Patent proceedings before it in accordance with the Rules relating to Fees for Unitary Patent Protection (RFeesUPP).1 These include, in particular, the renewal fees for European patents with unitary effect (hereinafter referred to as "Unitary Patents") and any additional fees for their belated payment. Fees for Unitary Patents can be paid using the same means of payment as are available during European patent grant proceedings, and so also from deposit accounts held with the EPO. The Arrangements for deposit accounts (ADA) and their annexes have therefore been amended to properly reflect this in the applicable legal framework.
2. The EPO has also taken this opportunity to revise the ADA to reflect the latest technical developments in electronic means of authentication for accessing its online fee payment services and for signing submissions (see point 10 below).
I. Payment of Unitary Patent fees from deposit accounts held with the EPO
3. Fees levied by the EPO in accordance with the RFeesUPP can be paid from a deposit account held with it either by submitting a debit order or by using the automatic debiting procedure. To reflect this, the terms "European patents with unitary effect" or "Unitary Patents" and "proceedings relating to European patents with unitary effect" or "proceedings relating to Unitary Patents" have been added, where appropriate, in the relevant provisions of the ADA,2 in the arrangements for the automatic debiting procedure (AAD)3 and in the information from the EPO concerning the automatic debiting procedure.4
4. Point 7.3 ADA has been amended to place debit orders for the payment of fees for Unitary Patents within the sequence of processing debit orders which are submitted at the same time. It stipulates that debit orders for payments for multiple applications are processed in the order "PCT" followed by "EP" followed by "UP" and, within each of these application types, in ascending order of application number. As is already the case for Euro-PCT applications, the EP application number is the relevant reference for Unitary Patents.
5. New point 9.3 mirrors existing point 9.2 and covers all cases in which Unitary Patents are considered to be definitively closed for the purposes of points 8 and 9.1 of the ADA. Debit orders for such definitively closed Unitary Patents will be rejected automatically and cancelled as a result. As set out in point 9.3, a Unitary Patent is considered definitively closed if the Unitary Patent itself has lapsed and no successful means of legal redress has been filed or if it has been revoked by the Unified Patent Court. A Unitary Patent is also considered definitively closed if the underlying European patent benefiting from the unitary effect has been revoked during either revocation proceedings or opposition proceedings and this revocation has not been successfully appealed.
II. Payment of Unitary Patent fees using the automatic debiting procedure
6. All fees payable to the EPO for Unitary Patents, in particular renewal fees and any additional fees for their belated payment, can also be paid using the automatic debiting procedure, except for the administrative fees set out in the Rules relating to Unitary Patent Protection (UPR) and fees and expenses charged for any services rendered by the EPO other than those specified in the RFeesUPP.5 The EPO strongly encourages users to make use of this automatic debiting option to pay their Unitary Patent fees too, so as to ensure that all these fees are paid in time. Under the revised AAD, the same decisive payment dates apply for Unitary Patent renewal fees and any additional fees for their belated payment as those that already apply for renewal fees for European patent applications.6
7. Please note that an automatic debit order submitted for the European patent grant proceedings ceases to be effective on the day on which the grant of the European patent takes effect. Users wishing to continue using the automatic debiting procedure to pay the fees for their Unitary Patent after this date will therefore need to submit a new automatic debit order online in an electronically processable format, preferably via Central Fee Payment (CFP), including where an opposition is filed against the European patent benefiting from unitary effect.7
8. Unless an automatic debit order for fees for a Unitary Patent is revoked via CFP, it only ceases to be effective on the day on which the Unitary Patent lapses or is revoked with final effect or on which the underlying European patent is finally revoked in EPO revocation or opposition proceedings.8
9. Automatic debit orders for Unitary Patent fees submitted before the entry into force of the revised ADA and their annexes on 1 June 2023 remain valid and will be processed as of that date in accordance with revised point 5.1(e) AAD.
III. New means of electronic authentication for submitting debit orders via CFP
10. The EPO is constantly working on improving its online services ‒ including its fee payment tools ‒ to make the procedures simpler and more secure. To anticipate future technical advances in authentication for accessing online services and signing submissions electronically, point 7.1.1 has been amended to refer to the signatures and forms of authentication accepted for the online service used to submit a debit order. It also refers to the decision of the EPO President dated 14 May 2021 concerning the electronic filing of documents,9 which lists the different types of electronic signatures accepted by the EPO.
IV. Repayment of undue payments for Unitary Patents
11. To avoid refunds of fees that were not due at the time of payment, CFP displays the fees for Unitary Patents which are actually due at the time of access in the fee group FEES DUE10 and so enables users to individually select only those fees for payment. Users are therefore strongly encouraged to use CFP to pay all fees for their Unitary Patents.
12. If users choose not to use CFP to pay fees for Unitary Patents ‒ i.e. where they instead pay them by submitting a debit order via Online Filing or Online Filing 2.0 or include them in a batch debit order uploaded via CFP, they will still be able to pay fees that are not due. However, these payments will be automatically flagged by the EPO's fee processing systems and repaid directly to the payment source.11 A new point 9.5 has been added to the ADA to reflect this repayment process for debit orders. The process is limited to fees for Unitary Patents; all other fees will continue to be refunded in accordance with the EPO notice dated 20 August 2019 concerning the revised fee refund procedures.12 To further reduce the number of refunds, a validation functionality will be implemented in the near future whereby undue payments of fees for Unitary Patents that have been included in batch debit orders uploaded via CFP are also rejected at source.
V. Payment of compensation for translation costs under Article 4 RFeesUPP
13. Proprietors of Unitary Patents for which the European patent application was filed in an official EU language other than English, French or German are entitled to compensation for their translation costs under certain conditions.13 The EPO will examine any request for compensation and then notify the proprietor whether or not it can be granted.14
14. The compensation amounts to EUR 500 and is paid as a lump sum.15 The EPO processes its payment as a regular refund in accordance with point 15 ADA and its notice dated 20 August 2019 concerning the revised fee refund procedures (OJ EPO 2019, A82). Users are therefore encouraged to file clear and unambiguous refund instructions when requesting compensation under Rules 8 and 9 UPR.
2 In particular, points 7, 7.5.2 and 8.1 ADA.
3 In particular, points 1.1, 1.2, 2.1, 2.3, 3.1 and 5.1 AAD.
4 In Re point 2 AAD and Re point 3 AAD.
6 See point 5.1(b) and (e) AAD.
7 See point 11.1(a) AAD.
8 See point 11.1(g) AAD.
11 This source is the deposit account, the bank account or the credit card used to make the undue payment.
13 See Rule 8 UPR.
14 For further information on the compensation scheme, see point 75 et seq. of the Unitary Patent Guide on the EPO website.
15 See Rule 11 UPR in conjunction with Article 4(1) RFeesUPP.