Article 18

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 12 February 2025 concerning improvements to the automatic debiting procedure

Users of the automatic debiting procedure will benefit from a more flexible system for automatic payment of fees during the European patent grant procedure. From 1 April 2025 users will be able to choose between three types of automatic debit order, covering either all fees, all fees except renewal fees or renewal fees only.

1. In the Official Journal notice dated 25 September 2024 (OJ EPO 2024, A82), the EPO announced the implementation of a new fee architecture for renewal fees that allowed for detection of undue renewal fee payments at source and immediate repayment of these fees. This new fee architecture was an essential step towards realising the long-standing wish of users for a more flexible system for the automatic debiting of fees falling due throughout the European patent grant procedure.

2. From 1 April 2025, the EPO will offer users the option to choose between three different types of automatic debit order for paying fees during the European grant procedure. The present notice gives an overview of these new options, how to select them and the implications for the patent application concerned. It also outlines the changes made in the Arrangements for deposit accounts (ADA) and its annexes, in particular the Arrangements for the automatic debiting procedure (AAD), to reflect this development.

3. The revision of the ADA for the implementation of the different types of automatic debit order is taken as an opportunity to reflect some additional changes since the last revision of the ADA, in particular developments in the EPO's filing tools.

I. Different types of automatic debit order

4. The automatic debiting procedure lets you file an automatic debit order with the EPO to ensure the automated payment of all fees due in the proceedings for which the order is filed. Under the current system, you can either opt for full automatic payment of all fees due or pay individual fees as they fall due either by separate debit order or by any other method of payment. This system does not take into account cases where responsibility for paying fees falls to different persons over the course of the European patent grant procedure, e.g. where the representative pays all the procedural fees and the applicant or a payment agency pays renewal fees.

5. To offer more flexibility when using the automatic debiting procedure, from 1 April 2025, you will be able to choose between the following three types of automatic debit order during the European patent grant procedure:

• automatic debit order for all fees
• automatic debit order for all fees except renewal fees and
• automatic debit order for renewal fees only.

6. These three types of automatic debit order are only available for selection in European proceedings. In PCT proceedings and proceedings relating to Unitary Patents before the EPO, only one type of automatic debit order covering all fees will continue to be available. The fee types covered by an automatic debit order for all fees will remain unaffected. This means that the fees not covered by the automatic debiting procedure under point 3.3 AAD (formerly point 3.2 AAD) will continue to be excluded from this payment method. In other words, in cases where All fees except renewal fees is selected as the automatic debit order type, the fees under point 3.3 AAD are excluded from automatic debiting as well as renewal fees and additional fees under Rule 51(2) EPC. These fees will have to be paid via a different payment method. The automatic debit order type Renewal fees only in turn exclusively covers all renewal fees and additional fees under Rule 51(2) EPC.

7. You can file your automatic debit order for all fees and for all fees except renewal fees in the Fees section on the relevant filing forms in Online Filing 2.0 or in Central Fee Payment. In Online Filing 2.0, if you select Automatic debit order in the Payment method drop-down menu, the debit order will cover all fees by default to prevent the unintended non-payment of renewal fees. To exclude renewal fees from your automatic debit order, you must select the checkbox Exclude renewal fees from payment via automatic debt order. This then corresponds to the second type of automatic debit order covering all fees except renewal fees. Please note that automatic debit orders of the type Renewal fees only can be submitted only through Central Fee Payment, by selecting Request new automatic debit orders under Automatic debiting management. The type of automatic debit order required can be selected via a drop-down menu. In EPO Online Filing, the option to exclude renewal fees from automatic debiting is not available, which means that any automatic debit order submitted through EPO Online Filing always covers all fees.

8. Whenever an automatic debit order is filed for an application for which there is already an automatic debit order active covering, at least partially, the same types of fees, the newly filed automatic debit order is deemed invalid and will not be carried out. This would apply, for example, where an automatic debit order for renewal fees only is already active and an additional automatic debit order for all fees is filed or vice versa. When submitting an automatic debit order in Central Fee Payment you will be informed immediately if another automatic debit order is already active for the selected application. This information includes which type of automatic debit order is currently active and which type of automatic debit order can still be filed. This means that only the automatic debit order types All fees except renewal fees and Renewal fees only can ever be active simultaneously for the same application. In order to extend the scope of an active automatic debit order, e.g. from covering renewal fees only to covering all EP fees, the first automatic debit order must be revoked in Central Fee Payment and a new automatic debit order filed.

9. A rejection notice will be displayed in the Automatic debiting procedure request/revocation history whenever an invalid automatic debit order is filed in Central Fee Payment or submitted through and processed by Online Filing 2.0 or EPO Online Filing. Whenever you upload a batch request for automatic debit orders, you will be shown a summary of all accepted and rejected requests. Further details on each automatic debit order included in the batch are available in the Automatic debiting procedure request/revocation history. To prevent time limits for fee payments from being missed unintentionally, Central Fee Payment should be used to always check the status of your automatic debit orders whenever they are filed through Online Filing 2.0 and EPO Online Filing and to manage your automatic debit orders.

II. Amendment of the ADA and their annexes

(a) Amendments resulting from the introduction of different types of automatic debit order

10. As part of the Arrangements for deposit accounts (ADA), the Arrangements for the automatic debiting procedure (AAD) provide the specific legal basis for the automatic debiting procedure. In order to reflect the new types of automatic debit order, in particular the option to automatically debit only renewal fees, point 1.3 has been amended to clarify the limitation that automatic debit orders cannot be restricted to specific types of fees other than those covered by the new types of automatic debit order. In addition, point 3 of the AAD has been amended to include the types of automatic debit orders and the fee types covered. A new point 3.1 has been added, listing the three new types of automatic debit orders available during European proceedings. Previous points 3.1 and 3.2 have been renumbered accordingly. In addition, point 4.1 AAD has been amended to reflect that the EPO will debit a deposit account only in respect of those fees for which automatic debiting is allowed and which are covered by the type of automatic debit order selected.

11. The new types of automatic debit order have also been reflected in Annex A.2 to the ADA – Information from the EPO concerning the automatic debiting procedure, in particular its points I and II, Re point 3 AAD. In addition, the reference in Re point 3 AAD, II.2 to former point 3.2(a) AAD has been updated to reflect the renumbering as a result of the newly introduced point 3.1 AAD.

(b) Additional changes

12. The revision of the AAD has been taken as an opportunity to also update the ADA to reflect the latest developments having an impact on the filing of debit orders in EPO online filing tools. Point 7.1.2 ADA has been updated to include all the relevant online forms allowing for the filing of debit orders in an electronically processable format, including in particular forms 7000 and 7038 for the Unitary Patent procedure. The same applies to point 15.2 with respect to the filing of refund instructions.

13. Under points 7.1.3 and 15.3 ADA, the examples of invalid means of filing debit orders have been removed. This is in particular because the Web-Form Filing service has been fully decommissioned and is no longer available since 1 January 2025.1 The same applies to fax as a means of filing.2 Although debit orders filed on paper continue to be invalid, the indication as an example is considered superfluous and has therefore also been removed, as has the EPO Contingency Upload Service.

14. The EPO Contingency Upload Service offers a contingency measure in the unlikely event of unavailability of the EPO online filing services or in emergencies. This service allows users to upload PDF documents without having to create or sign in to an EPO account.3 The EPO Contingency Upload Service does not allow the filing of debit orders in electronically processable format as required under point 7.1.2 ADA and is therefore not a valid means of filing debit orders in general. However, to take into account the purpose of the EPO Contingency Upload Service as a means of filing in emergencies also in the context of filing debit orders, a new point 7.1.4 ADA has been added. According to point 7.1.4 ADA, debit orders can also be submitted, by way of exception, via the EPO Contingency Upload Service, provided that the emergency is genuine, i.e. it is the last day of the period for payment of the fee for which a debit order is filed and the user has been unable to submit the debit order in an electronically processable format due to a system outage, irrespective of its source. To allow the EPO to determine whether these requirements are met, evidence of the outage (e.g. in the form of screenshots) must be filed together with the debit order.

III. Entry into force

15. The changes to the ADA and their annexes will enter into force on 1 April 2025. The three different types of automatic debit order will be available from that date. Automatic debit orders already active at that date will remain unaffected and will continue to be effective for all fees, except those expressly excluded from the automatic debiting procedure under point 3.3 AAD. If you wish to change the type of automatic debit order, the active debit order must be revoked in Central Fee Payment in accordance with point 10 AAD before a new automatic debit order of a different type can be filed, preferably in Central Fee Payment.