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4 April 2018
Following a Decision of the Administrative Council of the European Patent Organisation (found here), it is now possible to pay the third year renewal fee for European patent (EP) applications up to six months in advance of the due date.
Previously, with regard to all renewal fees due for an EP application, it was only possible to pay the fee up to three months in advance of the due date. In general, this is acceptable for applicants and for the European Patent Office (EPO), however, certain issues arise in connection with EP applications which are derived from international (PCT) applications.
The first renewal fee due for an EP application is in respect of the third year of the lifetime of the application. This third year renewal fee is due 24 months after the filing date of the EP application, i.e., at the beginning of the third year. Under the old Rule 51(1) EPC, renewal fees may be paid three months in advance of the due date. Therefore, the third year renewal fee may be paid, at the earliest, 21 months after the filing date.
When an EP application is derived from a PCT application, also known as an EP-PCT application, the EP-PCT application inherits the filing date of the PCT application. Renewal dates for EP-PCT applications are, therefore, calculated based on the filing date of the original PCT application.
If a PCT application contains a priority claim, a corresponding EP-PCT application may be filed, at the latest, 31 months after the priority date. Commonly, this is around 19 months after the PCT application has been filed. This means that EP-PCT applications are often filed around five months before the due date for the third year renewal fee and around two months before it is possible to pay this fee.
As a result of the above, applicants are required to pay fees for filing an EP-PCT application 19 months after filing a PCT application and then pay the third renewal fees two to five months later. This split in payment deadlines is burdensome for both applicants and the EPO.
Under the new Rule 51(1) EPC, which came into force on 1 April 2018, it is possible to pay the third year renewal fee up to six months in advance of the due date (18 months after the filing date of an application). Therefore, for EP-PCT applications being filed at 19 months, the third year renewal fee may now be paid in combination with the other fees due at that time. This change will allow applicants and the EPO to handle the filing fees and renewal fees at one time, simplifying processing and reducing handling costs.
Please note, this change applies only to the payment of the third year renewal fee. Subsequent renewal fees (in respect of the fourth year and onwards) may be paid at the earliest, three months in advance of the due date.
The proposal, as submitted by the President of the EPO, can be found here, wherein the reasoning and possible implications of the change are discussed in full.
Electronics, Computing & Physics group
If you require further information on anything covered in this briefing, please contact James Mitchell (firstname.lastname@example.org; 44 20 7940 3600) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, April 2018