Archive | 2009, February | (2) posts

New EPO fees from 1 April 2009

On 1 April the EPO will introduce a new fee structure. In recent years the EPO has noticed a significant increase in the length and complexity of applications. The new fee structure is the EPO’s strategy for dealing with the problems that this raises. As part of its efforts to give applicants an incentive to reduce the length of applications and the number of claims, the EPO will therefore increase the claims fees for applications with more than fifty claims and introduce an additional fee at filing for applications of more than thirty-five pages. At the same time, a flat designation fee and a flat fee for grant and publication will be introduced.

The new fees apply to European patent applications, including European divisional applications, filed on or after 1 April 2009 and to international applications entering the regional phase before the EPO on or after that date. In some cases it may be possible to escape the fee increases by filing your European patent application or regional stage application before 1 April 2009, even if the time limit for doing so expires later.

The new fees may make it even more interesting than it was previously to review international applications before entering the European stage: by making amendments before that stage, it may be possible to reduce the costs.

Below are a few comments about the various new fees, but please do not hesitate to contact us if you wish to discuss in more detail what can be done in individual cases.

Increased claims fees for applications with more than 50 claims
Last April the EPO increased fees for applications comprising more than 15 claims. Since then a claims fee of EUR 200 has been payable for the sixteenth and each subsequent claim. For applications filed on or after 1 April 2009 this fee will continue to apply for each claim from the 16th to the 50th. For the 51st and each subsequent claim, however, the claims fee will be EUR 500.

For an international application with more than 50 claims, I recommend that you consider making claim amendments before filing in order to limit the number of claims. For example, simply by introducing multi-dependent claims, you can reduce the number of claims to a level which costs considerably less.

Additional fee at filing for applications of more than 35 pages
Under the new fee structure, the filing fee is composed of a basic fee and an additional fee of EUR 12 per page for the 36th and each subsequent page of the application.

For an international application of more than 35 pages, I suggest that you review the text before filing to consider whether there is any way in which you can limit the number of pages. It is often possible to do this, at least in part, by amending the claims as described above.

Flat designation fee
Under EPC 2000, the designation system has been simplified so that all contracting states are deemed to be designated at the time of filing the European patent application. From 1 April, in line with this, a single flat-rate designation fee of EUR 500 will cover the designation of all contracting states, unless individual designations are expressly withdrawn.

For applications subject to the old system, in order to prevent any loss of rights, you must ensure that you pay the correct amount to cover the individual designation fees, and, most important of all, the maximum amount of seven times the fee if you wish to cover all contracting states.

Extension fees will still have to be paid for each state.

Fee for grant
At present a fee for each additional page after the first 35 is payable at the grant stage, but from 1 April, as this fee will now be introduced at the filing stage, there will be a flat fee for grant and publication. The old fee for grant, with a page fee for applications comprising more than 35 pages, will continue to apply for European patent applications that are filed and for international applications that enter the regional phase before 1 April 2009.

Maria Stenbäck, European Patent Attorney

EPO’s fight against divisional applications

EPO is seeking to limit the submission of divisional applications, which would be a severe blow to small, newly started technical companies in particular. Although a stop was put to their latest proposal by the Committee on Patent Law, it is highly likely that despite this setback we will see a modified version put before the Administrative Council meeting in March.

EPO’s proposal
EPO has proposed limiting the option of submitting divisional applications to a period of 24 months following either a first order from the Examining Division or a first notification that the parent application lacks unity of invention. The proposal represents a significant limitation of the possibilities allowed to applicants under current rules, which enable divisional applications to be submitted for as long as the basic application remains valid.

The proposal is intended in part to limited alleged misuse of the submission of divisional applications. Based on the figures presented by EPO, it is estimated that alleged misuse occurs in fewer than one in a thousand applications.

However, the proposal is very far-reaching. If it is passed, it will no longer be possible to submit a divisional application in connection with oral proceedings. At present, this method can sometimes be the only way to ensure that an applicant has the possibility to obtain protection for patentable material contained in the submitted application. In cases where the patent application is rejected during the course of the proceedings, under current rules the applicant has the option of pursuing other lines of retreat through divisional applications, but under the proposed change in the rules divisional applications must be submitted at an early stage.

Small players hit hardest
EPO’s line will particularly hit small, newly started technical companies, which often lack both the economic resources and a precise knowledge of the position of the technology. At the same time, the innovation which forms the basis of such a newly started company often includes a number of inventions for which the company may be totally dependent on being granted strong protection.

Given that a company may often lack the resources to submit a large number of patent applications during the start-up phase, it has to rely on one or two broader-based applications. But due to a lack of the resources needed to fully protect the position of the technology beyond the basic idea behind the invention, as formulated in the applicant’s principal requirements, it often becomes necessary to utilise the option of divisional applications.

As the application is scrutinised, any changes to a principal requirement are defended in a rejoinder. Under EPO’s proposal, where the rejoinder does not have the desired effect, the time limit for submitting divisional applications would meantime have expired. Consequently the applicant must, at the time of submitting the rejoinder, already submit divisional applications for the set of inventions that can be identified by the applicant, in the event that an umbrella claim contained in the basic application is not approved. Given the fact that this entails a significant increase in procedural costs for a regular applicant, for a start-up company this option becomes prohibitively expensive. The proposal is therefore hostile to start-up companies of the type which EU common market policy otherwise claims to support.

The industry’s position
Against this background, Swedish and European industry together with representative associations are strongly opposed to EPO’s proposal, and a majority of the national delegates who spoke at the CPL meeting were also responsive to the concerns of the industry and the representative associations’ misgivings. The original proposal failed to muster support, subsequent to which a revised proposal was put forward whereby the option of submitting a divisional application would have to be justified and receive the approval of the Examining Division. This proposal also failed to gain sufficient support.

I would like to see a limitation introduced which would simply establish an exception in the case of divisional applications whose submission constitutes clear misuse of the regulatory system. The issue is whether EPO continues to pursue its hard line against divisional applications and whether this will gain resonance at the Administrative Council meeting in March.

Nils Ekström, European Patent Attorney

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