3.7.2 Effects of non-payment of claims fees

If an applicant fails to pay claims fees, he is considered under R. 45(3) EPC (former R. 31 EPC 1973) to have abandoned the claims. Apart from resolving the specific question whether certain parts of the application were part of the description or were claims, decision J 15/88 (OJ 1990, 445) made clear that such abandonment of certain claims could only cause a substantive loss of subject-matter if the subject-matter involved was contained only in the claims and not also in the description or drawings. The Legal Board held that an applicant who declined to pay claims fees when they were demanded ran the risk that features of a claim deemed to have been abandoned pursuant to R. 31(2) EPC 1973, which were not otherwise to be found in the description or drawings, could not subsequently be reintroduced into the application and, in particular, into the claims. The idea that there could be forced abandonment of subject-matter, in reliance on R. 31(2) EPC 1973, appeared rather to be in conflict with the principles of higher law to be deduced from Art. 52(1) EPC 1973 in conjunction with Art. 123(2) EPC 1973. An applicant normally had the right to derive subject-matter from any part of the description, claims or drawings as originally filed. See also T 490/90.

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