EPO fee changes – effective from 1 April 2018
29 March 2018
In June 2017, the European Patent Office (EPO) announced a freeze on inflation-based official fee increases for 2018. Instead, the EPO will selectively adjust certain official fees, effective from 1 April 2018. These fee adjustments, summarised below, relate to the handling of PCT applications, online filings and appeal fees.
International (PCT) applications where the EPO is the ISA/IPEA
The EPO is reducing the official fees for PCT applications that are handled by the EPO as the International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA). In particular, the EPO has announced a €100 reduction for both the international search fee and the preliminary examination fee, thereby reducing them to €1,775 and €1,830 respectively.
Furthermore, where the EPO was the IPEA, a 75% reduction in the examination fee to €456 will apply when entering the regional phase at the EPO – an increase from the 50% reduction that is currently available.
The above fee reductions will provide better cost efficiency for PCT applicants whilst improving the consistency of the EPO’s fee structure with respect to the lesser search and examination fees for direct European filings. The 75% reduction in examination fee will also provide a greater financial incentive to appoint the EPO as the IPEA, especially where PCT applicants may be seeking a positive international search opinion before entering the regional phase before the EPO.
International (PCT) applications entering the European Regional Phase where the EPO is not the ISA/IPEA
In order to offset the costs of the above and other fee reductions, the EPO will no longer offer a fee reduction to the supplementary European search report fee. Currently, this fee is reduced by €190 if the International Search Report (ISR) was drawn up by any of the following offices:
- US Patent and Trademark Office;
- Japanese Patent Office;
- Korean Intellectual Property Office;
- Chinese Intellectual Property Office;
- Federal Service for Intellectual Property (Russian Federation); or
- Australian Patent Office.
The fee reduction will be discontinued as of 1 April 2018. Therefore, all PCT applicants entering the European regional phase will pay the same supplementary search fee regardless of the ISA used.
The EPO is currently developing an online filing system where, once implemented, it will be possible to file documents in character-coded (CC) formats, i.e. XML or DOCX (Microsoft Word) format. Although it is not presently possible to file documents online in a CC format, the EPO has announced a reduction in the official filing fee, grant fee and transmittal fee as of 1 April 2018 if all relevant documents are filed online in a CC format.
The EPO originally planned to deploy the new filing system by 1 April 2018 to coincide with the fee reductions. However, the deployment of the new filing system is likely to be delayed due to ongoing testing of the filing software. Furthermore, in order for the EPO to accept online filings in CC formats for international applications, the EPO was required to submit a proposal with the World Intellectual Property Organisation (WIPO) to amend the relevant filing standards for international applications.
Hence, at this stage there is not a definitive date by which the EPO will fully deploy the new filing system for all filing procedures. Nevertheless, Withers & Rogers will continue to monitor developments in this matter to keep our clients up to date and ensure that applicants can make use of the fee reductions once the EPO’s new filing system comes into effect.
The official appeal fee will be increased by roughly 20% to €2,255 from 1 April 2018. However, small and medium-sized enterprises, non-profit organisations, universities, and public research organisations will be eligible to pay a reduced appeal fee at the current rate of €1,880. If you are unsure whether you will eligible for the reduced appeal fee, please contact your Withers & Rogers attorney for more information.
Electronics, Computing & Physics group
If you require further information on anything covered in this briefing, please contact Rajan Chauhan (email@example.com; 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.
Decision of the Administrative Council of 13 December 2017 amending Articles 2 and 14 of the Rules relating to Fees (CA/D 17/17)
Preparatory document for the Decision CA/D 17/17
Decision of the Administrative Council of 13 December 2017 abrogating its decision CA/D 10/05 concerning cases where the search fee for the supplementary European search is to be reduced (CA/D 16/17)
© Withers & Rogers LLP, March 2018