Part IV. Fees payable on entering the European regional phase. Fees - general remarks

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1 IV.7.5. extend beyond the originally filed contents of the application in the original language, then the application in its original language can form the basis for such an amendment, which is consequently allowable under Art.123(2) EPC. This also means that the originally filed text of the application in the non-epo language can form the basis for any correction to its translation. Art.70(2) EPC was modified in its new EPC-2000 version such that it no longer refers directly to translations under Art.14(2) EPC and so provides its effect for all translations which might be provided of a Euro-direct application [on filing under the EPC] or of a Euro-PCT application, where the translation is filed either in the PCT or on passage into the European phase. In any case, it would be inequitable not to apply the principles of Art.70(2) EPC to Euro-PCT applications which are either translated in the PCT (R12.3 PCT or R12.4 PCT), or translated on entry into the European phase (Art.153(4) EPC). Such inequitable treatment would be contrary to the general principles of procedural law set out in Art.125 EPC (see G3/91). Republication of the international application in an EPO official language PCT publication in EPO language Art.153(3) EPC The international publication of a Euro- PCT application in an official language of the EPO shall take the place of the publication of the EP application and shall be mentioned in the European Patent Bulletin. Since in these cases the International publication takes the place of the EP publication, these applications are not subject to other publications in the European phase. Re-publication of translation Art.153(4) EPC If the Euro-PCT application is published in another language, a translation into one of the official languages shall be filed with the EPO [within 31 months of the filing date, or priority date if claimed R159(1)(a) EPC]. Art.153(4) EPC The EPO shall publish this translation. Where the International application was published in a language other than an EPO language, a translation must always be filed by the applicant at the EPO according to Art.153(4) EPC and R159.1(a) EPC (see IV.7). The text of this translation is re-published by EPO after entry in the European phase. Effects on provisional protection Art.153(4) EPC Subject to Art.67(3) EPC, the provisional protection under Art.67(1) EPC and Art.67(2) EPC, shall be effective from the date of that publication. With regard to the effect of the republication of the translation on the provisional protection in the EPC, see II.12.8 (rights conferred by International publication) and II (steps necessary at the EPO to achieve provisional protection). IV.8. IV.8.1. Fees payable on entering the European regional phase Fees - general remarks Fees due upon entry in European phase When the International application enters the regional phase before EPO the following fees become due to the EPO: - filing fee* - designation fee**/*** - examination fee*** - renewal fees - supplementary search fee (if applicable) - claims fees (where applicable). Each of the fees listed above will be dealt with in detail in the following sections. * The filing fee includes an additional fee for applications comprising more than 35 pages. ** A single flat designation fee is due covering the designation of all EPC states. *** According to R39(1) EPC and R70(1) EPC respectively the designation and examination fees are due within 6 months of publication of the International search report (since this replaces the European search report - Art.153(6) EPC), however, the 31 month period under R159(1) EPC takes precedence if it expires later. If these 6 month time limits expire later than 31 months after the priority (or filing date if no priority is claimed) because the International search report was prepared and published very late, then these take precedence over the 31 month period under R159(1) EPC. Note that the amount, applicability and even the structure of fees charged by the Peter Watchorn & Andrea Veronese

2 EPO has recently changed a number of times and will probably change again in the near future (see the increased amounts of fees and expenses applicable as from , fixed by decisions of the Administrative Council OJ 2014, A5). Readers are thus advised to refer to the latest schedule of fees published by the EPO (e.g. by referring to the internet site) in order to determine which fee is applicable at a certain date. New fee structure as from OJ 2009, 118 On a new fee structure entered into force at the EPO. Essentially, the following changes were introduced: (1) A two tier system of claims fees: a lower claims fee is due for each claim from the 16 th up to the 50 th and a higher fee is due for the 51 st and each subsequent claim. (2) An additional fee for applications comprising more than 35 pages, as part of the filing fee. (3) A flat rate designation fee which covers the designation of all designated states [previously individual designation fees were payable for individual states, but if seven times this fee was paid, then all designations were validated]. (4) A flat rate fee for grant [at the grant stage this used to include an additional fee per page, but this is now paid at the filing stage] (5) A reduction of the period for advance payment of the renewal fee from 1 year to 3 months. Further amendments / renumbering as from OJ 2009, 587 The rules relating to fees were amended with effect on In particular, the amount and numbering of the fees referred to in Rfees 2 EPC is changed: For example, old Rfees 2.1 EPC becomes Rfees 2(1).1 EPC and Rfees 2.2 becomes Rfees 2(1).2 EPC. With this new numbering the following fees are those due for applications for which the old fee structure applied [these are applications which entered the European phase before ]. Rfees 2(2).3 EPC Designation fees for up to 7 states Rfees 2(2).3a EPC Designation fee for CH/LI Rfees 2(2).7 EPC Fees for grant* Rfees 2(2).15 EPC Claims fees * The grant fee for applications under the old fee structure still includes an extra payment for pages over and above 35, because this is not part of the filing fee for such applications. For applications under the new fee structure this additional fee is part of the filing fee and so is no longer payable on grant. For Euro-PCT applications the new amounts apply for payments made on or after Who may pay fees to EPO Euro-PCT Guide 168 Fees may be validly paid to the EPO in the International phase by any person. A-X, 1 The same applies to fees paid for European applications This includes Euro-PCT applications in the European phase because these are also European applications according to Art.153(5) EPC. Consequently payments may be made by persons other than the applicant and his representative. Also, there are no restrictions on residence/nationality/place of business. A-X, Where a third party makes the payment, but the purpose of that payment is unclear, the EPO requests the third party to indicate the purpose of that payment according to Rfees 6(2) EPC [within a period specified by the EPO]. A-X, 10.4 Where the third party does not reply in time to this communication under Rfees 6(2) EPC, then the fee is deemed not paid under Rfees 6(2) EPC. The fee is then refunded to that 3 rd party who made the payment. - This is the only case where fees are refunded to a third party who made a payment [with the exception of a fee paid for file inspection]. Methods of payment / Currency Rfees 5(1) EPC The fees due to the EPO shall be paid in Euro: - by payment or - by transfer to a bank account held by the Office. Rfees 7(1) EPC The date on which the payment is considered to have been made is the date on which the amount of the payment or of the transfer is entered in a bank account held by the EPO. For fail-safe provisions concerning the date on which the payment is considered to Peter Watchorn & Andrea Veronese 321

3 be made see Rfees 7(3) EPC, Rfees 7(4) EPC. Rfees 5(2) EPC The EPO President may allow other methods of paying fees than those specified in Rfees 5(1) EPC. OJ Suppl. 3/2015 Arrangements for Deposit Accounts [ADA]: These deposit accounts are kept at the EPO headquarters in Munich. Essentially, in order to make payments, the account holder has to file a written, signed debit order [see Point 6.2 ADA] or else transmit it by facsimile (no confirmation is required) or on-line. - The debit order must contain the particulars necessary to identify the purpose of the payment and the amount and must indicate the account number which is to be debited (see Point 6.3 ADA). - The date of payment is the date on which the debit order is received at the EPO [Point 6.3 ADA]. The account holder keeps the account in credit and asks the EPO to deduct fees from it. Payment is effected by the submission of a written debit order signed by the account holder. Automatic debiting OJ Suppl. 3/2015 This reference contains the arrangements for automatic debiting procedure [AAD]. Essentially, the holder of a deposit account at the EPO may file a debit order requesting the automatic debiting procedure. In this case, as the proceedings progress any fee which falls due is automatically debited and treated as paid in time. The responsibility for the payment resides only with the EPO, whereas the holder only has to ensure that the account is sufficiently in credit to pay the fees on time. - If an automatic debit order is filed in due time [before expiry of the 31 month period], automatic debiting can be used to pay any fee due within the 31 month period of R159(1) EPC. Point 2.2 AAD However, where an automatic debiting order has been with the EPO for its role in the International (PCT) phase, this does not carry over to the acts required to enter the EP phase. This requires a second, separate automatic debiting order. OJ Suppl. 3/2015 & Point 6.2 ADA EPO fees may be paid using: - Via an automatic debit order filed under the EPO automatic debiting procedure for IV.8.2. a specific Euro-PCT application, authorising the debiting of fees automatically as the proceedings progress. - EPO Online Filing or CMS, using Form 1200E. - Paper, fax or WFF, using form Online Fee Payment via Online services [authorisation by smart card takes the place of a signature]. - EPO Online Filing or CMS using EPO Form 1038E [letter accompanying subsequently filed items]. - Paper, fax or WFF using Form For more information concerning payments using these other means allowed by the EPO President, and in particular for the date on which the fee which is due is actually charged, reference is made to the aforementioned supplement to the Official Journal. For an analysis of these payment procedures, see Procedural law under the EPC-2000 Ed. 3, 2013, from the same authors, XXIV.21.6 and XXIV Certain older methods of payment allowed under earlier versions of Rfees 5 EPC are no longer allowed, see: OJ 2007, 489 closure of EPO Giro accounts OJ 2007, 626 payment by cheque abolished OJ 1999, 81 payment by cash abolished The EPO filing fee Art.22(1) PCT & Art.39(1)(a) PCT The applicant must pay the national fee (if any) to each designated or elected office In the case of the EPO, the national fee is the filing fee, see below. Requirement to pay the filing fee to EPO R159(1)(c) EPC In respect of an international application under Art.153 EPC, the applicant must pay the filing fee provided for in Art.78(2) EPC within 31 months from the filing date or, if priority has been claimed, from the priority date. Amount / Reduction for electronic filing Rfees 2(1).1 EPC Amount of the national basic fee (this is equal to the filing fee for a direct European application). Rfees 2(1).1 EPC When the Form 1200 is filed online, the national basic fee (filing fee) is reduced. Euro-PCT Guide 421 The official EPO form for entry into the regional phase before the EPO, (Form 1200) may be filed in electronic Peter Watchorn & Andrea Veronese

4 form using the EPO electronic on-line filing software. Euro-PCT Guide 421 & OJ 2015, A27 In addition to the EPO electronic online filing software, the EPO has also made available the CMS online filing system [Case Management System]. This system can be used to file EPO Form 1200 [Euro-PCT Guide 421] and other documents for EP entry. However, it cannot be used to file priority documents. OJ 2014, A98 In addition to the EPO electronic online filing software, the EPO has also made available the WFF online filing system [Web-Form Filing]. This system can be used to file EPO Form 1200 [Euro-PCT Guide 421] and other documents for EP entry. However, it cannot be used to file priority documents. No language reduction E-VIII, 2.6 Fee reductions mentioned in A-X, 9.3 also apply to Euro-PCT applications. The language reduction in the filing fee is dealt with in A-X, Consequently it appears that the language reduction of the filing fee is not available for Euro-PCT applications. This makes sense, since the application must be translated on EP entry under R159(1)(a) EPC and so there is never an application pending before the EPO in a non-epo language. Additional fee: more than 35 pages R38(2) EPC The EPO filing fee may contain a component which is a set amount per page over and above 35 pages. Rfees 2(1).1a EPC This additional charge for the 36 th and subsequent pages has been implemented in this EPO fee regulation. - This fee regulation specifies the amount charged for the 36 th and each additional page of a European application, or Euro- PCT application entering the European phase. - This does not count any page part of biological sequence listings, if this is present in the application. E-VIII, This additional fee must also be paid within the period specified in R159(1) EPC [31 months of the filing date, or earliest priority, if claimed]. OJ 2009, 118 The additional page fee is calculated on the basis of: - The International application as published, [but not counting any page part of a biological sequence listing] - Any amendments under Art.19 PCT - One page of abstract. Even if more than one page of bibliographic data is present, further pages are not counted. Form 1200 is also not counted. - Pages of the latest set of any amended documents [e.g. Art.34 PCT amendments or amendments filed upon entry into the regional phase] on which the European procedure is to be based [cf R159(1)(b) EPC] are also taken into account if: - they are available at EPO on the date of payment, and - the payment is before expiry of the 31 month period under R159(1) EPC. If the applicant files amended pages to replace pages of the application or of the latest set of amendments, and intends to have the replaced documents excluded from the calculation, then, the replacement pages and the pages they are meant to replace must be clearly indicated at the latest at the payment date. This can be done in Form 1200 and may result in a reduction of the number of pages for which a fee is due. In the absence of any information, the new pages are just counted as additional pages when the page fee is calculated. Pages of amendments filed after the period for paying the additional fee, and in particular during the R161 EPC period [set in a communication inviting the applicant to file amendments] are not taken into account and do not result in any reduction of the additional fee. Example of computation of additional fee PCT application of 100 pages, in English: - abstract 1 page - description 50 pages - claims 20 pages - drawings 20 pages - claims cf Art.19 PCT 9 pages On entry in the European phase within the 31 month period of R159(1) EPC for paying additional fees 10 pages of claims are filed to replace the claims on file. This replacement is clearly indicated in EPO Form Fee incurring pages: (replaced original claims) - 9 (replaced Art Peter Watchorn & Andrea Veronese 323

5 claims) + 10 (replacing claims) - 35 (fee exempted pages) = 46 pages. Filing fee for translated applications OJ 2009, 338 This reference explains how the filing fee is calculated for Euro-PCT applications which must be translated into an EPO language when entering the European phase - see (a), (b) and (c) below. (a) No amendments filed on EP entry OJ 2009, 338 Where no amendments are filed on passage into the European phase*, the filing fee is calculated on the basis of the pages of: - the application as published** - any Art.19 PCT amendments*** - any Art.34 PCT amendments**** - one page for the abstract * This means that there were no amendments under R159(1)(b) EPC. There may subsequently be amendments under R161 EPC [since these are filed after entry into the European phase]. ** This is the International application as published in the non-epo language. *** Art.19 PCT amendments must be in the language of publication [R46.3 PCT] and may or may not be published with the International application [see II.11.4]. **** Art.34 PCT amendments must be in the language in which preliminary examination was conducted [see III.6.2 and sub-sections]. (b) Claims amendments filed on EP entry OJ 2009, 338 Where the claims are amended on entry into the European phase* the applicant must file a full set of amended claims in the EPO language. The filing fee is then calculated on the basis of the pages of: - the description as published in the PCT** - the replacement pages of the claims*** * These are amendments under R159(1)(b) EPC, but not under R161 EPC [R161 EPC amendments are filed after entry into the European phase]. ** This is the International application as published in the non-epo language. *** This is the full set of claims in the EPO language filed by the applicant on entry into the regional phase. Presumably, the additional page for the abstract is also included. It appears in this case, that any amendments of claims of the International application under Art.34 PCT and Art.19 PCT are not included in the calculation. OJ 2009, 338 However, if: - there are several versions of the claims filed in the PCT* and - the applicant wishes the latest of these to be taken into account at the EPO, then the applicant must expressly indicate that he wishes this amendment to be considered as an amendment filed on entry into the European phase. * The original claims and at least one chosen from Art.19 PCT amendments and Art.34 PCT amendments (to the claims). If the applicant does this he will only be charged for the pages of the set of claims he indicates. If he does not, he will be charged for all sets of claims [original and at least one of Art.19 PCT and Art.34 PCT]. This reference does not say what happens if the applicant wishes to abandon a later set of claims filed in the PCT and revert to an earlier one. (c) Description/drawings amendments filed on EP entry OJ 2009, 338 The applicant can file amended pages of the description or a complete amended description, or amended drawings on entry into the European phase. All must be filed in an EPO language. The filing fee is then calculated on the basis of the pages of the translations of the description or drawings as amended. If amendments to the description or drawings were made under Art.34 PCT and the applicant wishes these to be taken into account by the EPO, the applicant must either: - do both of the following: - file a translation of these amendments, and - indicate which pages are to be replaced in the translation of the application as published, or - file a complete new version of the description If the above requirements are met, the filing fee is calculated based only on the translation of the description as amended. If not, the applicant must pay based on the total number of pages filed. Note that even where the applicant provides a completely amended and Peter Watchorn & Andrea Veronese

6 translated description [i.e. a completely revised translated description is filed rather than replacement pages], the applicant is still required to file a translation of the description claims and drawings of the application as originally filed [Euro-PCT Guide see IV.7.2.1]. This is so that the EPO can check that any amendments are based on the International application as originally filed [Art.123(2) EPC]. Time limit R159(1)(c) EPC The EPO filing fee must be paid to the EPO within 31 months of the priority date of the International application (or filing date, where no priority is claimed). E-VIII, The additional page fee is also due within the same 31 month period. Sanction for failure R160(1) EPC If the filing fee is not paid in due time, the EP application is deemed to be withdrawn. OJ 2009, 118 The same applies where the additional fee is not paid in due time. R160(2) EPC If the EPO notes that the application is deemed to be withdrawn under R160(1) EPC, it shall communicate this to the applicant. R112(2) EPC applies mutatis mutandis. OJ 2009, 118 The same applies where the additional fee is not paid in due time. The reference to R112(2) EPC means that the applicant may ask the EPO to review the facts and issue an appealable decision on this finding. Remedy in case of loss of rights Art.121 EPC, R135(1) EPC & Euro-PCT Guide 546 If the applicant failed to pay the filing fee in time, the loss of rights which ensues under R160(1) EPC is deemed not to have occurred if, within 2 months of notification of the loss of rights the applicant pays both the filing fee and the further processing fee. OJ 2009, 123 The same applies where the additional fee is not paid in due time. Rfees 2(1).12 EPC The amount of the further processing fee is 50% of the filing fee. A-III, 13.2 Where the applicant has paid the basic filing fee on time, but not paid the additional page fees, the calculation of further processing fee does not take the basic filing fee into account [i.e. the further processing fee is 50% of the unpaid additional page fees, not 50% of the basic filing fee plus additional phase fee]. R49.6 PCT & Euro-PCT Guide 548 The loss of rights ensuing under R160(1) EPC for failure to pay the filing fee may also be overcome by requesting reinstatement under R49.6 PCT. - However, this is more onerous to achieve and the fee is higher. - Consequently, this remedy is only advantageous if the period for further processing has already expired. Rfees 2(1).13 EPC Fee for re-establishment under R49.6 PCT. R49.6 PCT explicitly mentions reinstatement as remedy for loss of rights ensuing from failure to perform acts listed in Art.22 PCT (here paying the filing fee). OJ 2009, 118, which explains the introduction of the page component of the filing fee, does not indicate whether reinstatement cf R49.6 PCT applies also to the failure to pay the additional fee. Since the additional fee is considered part of the filing fee, this would appear possible. Note that re-establishment under R49.6 PCT is not re-establishment under Art.122 EPC [although analogous conditions apply - same time limits, all due care etc]. This is because Art.122 EPC is not directly applicable to the loss of rights under R160(1) EPC, due to R136(3) EPC [because further processing applies, reestablishment is excluded]. For more details on the procedure according to R49.6 PCT, see IV However, re-establishment under Art.122 EPC is applicable to the period for requesting further processing. This means that, if the applicant fails to request further processing in time after a loss of rights ensued under R160(1) EPC, he may request re-establishment for failure to request further processing (E-VII, 2.2.1). Filing fee & effects under Art.54(3) EPC Art.153(5) EPC The Euro-PCT application is treated as an EP application and is considered as comprised in the state of the art under Art.54(3) EPC, if: - the conditions laid down in Art.153(3) EPC or Art.153(4) EPC are fulfilled [i.e. that the International application is published, and that if it is not published in an EPO language a translation into one of such languages is filed, which the EPO publishes] and Peter Watchorn & Andrea Veronese 325

7 - the conditions laid down in the Implementing Regulations are fulfilled [i.e. R165 EPC]. R165 EPC A Euro-PCT application is considered comprised in the state of the art under Art.54(3) EPC, if in addition to the conditions laid down in Art.153(3) EPC or Art.153(4) EPC, the filing fee under R159.1(c) EPC has been paid. Since the additional page fee is part of the filing fee [R38(2) EPC], it would appear that the status of the application as prior art under Art.54(3) EPC also depends on payment of this additional fee. Early entry into EP phase OJ 2013, 156 The filing fee must be paid in order to achieve early entry into the EP phase under Art.23(2) PCT or Art.40(2) PCT. - This includes the payment of any additional page fee. For more details on early entry into the EP phase, see IV IV.8.3. European designation fee Automatic designation under the PCT R4.9(a)(i) PCT The filing of the PCT request form constitutes the designation of all PCT states. R4.9(a)(iii) PCT This includes regional designations of PCT states where such a possibility exists. For more details on designations under the PCT see I.4. PCT applications and EP designations Euro-PCT Guide 116 When a PCT application is filed, by filing the request all PCT contracting states are automatically designated for both national and any applicable regional designation. The automatic designation EP covers all states for which the PCT and the EPC are in force at the filing date. Euro-PCT Guide 117 & J30/90 Where a [PCT] state accedes to the EPC after the International filing date, but before the application enters the European regional phase, it is not possible to designate this state under the EPC when entering the European phase. European designations withdrawn for certain states R90bis.2(b) PCT The designation of a PCT state, via a regional designation [e.g. the EPC] can be specifically withdrawn in the International phase. R90bis.2(a) PCT The notice of withdrawal must be filed at the IB, RO or IPEA within 30 months of the filing date, or priority date, if claimed. For more details on withdrawal of designations see I.4.6. Euro-PCT Guide 551 Confirms that it is possible in the International phase to withdraw the EP designation for an EPC state. This means that it would be possible, in the International phase, to withdraw a designation (e.g. Sweden), from the regional designation of the EPO. This would then have the effect that Sweden could no longer be designated under the EPC on entry into the European phase [confirmed in Euro-PCT Guide 551]. R90.4(d) PCT Where a document relates to a withdrawal under R90.4(e) PCT [including withdrawal of designations], the power of attorney waiver does not apply. This means that where the designation is withdrawn at an office (e.g. the RO) which applies the power of attorney waiver, the representative filing such a withdrawal will have to provide a power of attorney. For more details see V Obligation to pay designation fee to EPO R159(1)(d) EPC In respect of an international application under Art.153 EPC, the applicant must pay the designation fee within 31 months from the date of filing or, if priority has been claimed, from the priority date if the period under R39 EPC has expired earlier. By designating one or more member states of the EPC, the applicant establishes the states where he intends to obtain patent protection. Since when the International application is filed all member states of the PCT and of the EPC are validly designated [see above], any of these states may be validly designated upon entry in the regional phase before the EPO. The only exception being where the designation of an EPC state under the regional EPC designation was actively withdrawn during the international phase. The legal act validating the designation of an EPC contracting state is the payment of the corresponding designation fee. One single designation fee Rfees 2(1).3 EPC There is a single flat designation fee covering the designation of all EPC states. This single fee covers the designation of all EPC contracting states, unless some states acceded to the EPC after the application was filed [Euro Peter Watchorn & Andrea Veronese

8 PCT Guide 117] or unless designations of certain EPC states under the regional EP designation were withdrawn in the International phase (see above). If not paid on time, the application is deemed withdrawn under R160(1) EPC. Time limit to pay the designation fee R159(1)(d) EPC The designation fee for Euro-PCT applications entering the European phase must be paid to the EPO by the later of: - 31 months of the priority date of the International application, or filing date if no priority is claimed [time limit under R159(1) EPC] and, - 6 months from publication of the International Search Report* [regardless of whether a supplementary search report is prepared by the EPO - this is the time limit under R39(1) EPC]. * For international applications the international search report replaces the European search report under Art.153(6) EPC. This second 6 month time limit becomes applicable only in the cases where the international search report is published very late (more than 25 months after the priority). Sanction for failure R160(1) EPC If the designation fee is not paid on time then the application is deemed withdrawn. R160(2) EPC The applicant is informed of any loss of rights [deemed withdrawal of the application]. R112(2) EPC applies mutatis mutandis. Since only one designation fee is now due for all EPC states, it is no longer possible for an individual designation to lapse for failure to pay the designation fee for that state. Either all designations are validated, by payment of the flat designation fee, or none at all by failure to pay this flat designation fee. The reference to R112(2) EPC means that the applicant may ask the EPO to review the facts, and issue an appealable decision on this finding. Remedy in case of loss of rights Art.121 EPC, R135(1) EPC & Euro-PCT Guide 554 If the applicant failed to pay the designation fee in time, the loss of rights under R160(1) EPC is deemed not to have occurred if, within 2 months of notification of the loss of rights [under R112(1) EPC/R160(2) EPC] the applicant pays both the designation fee and the further processing fee. Rfees 2(1).12 EPC* The amount of the further processing fee is 50% of the unpaid fee [in the case, the designation fee]. Reinstatement not applicable Euro-PCT Guide 555 The loss of rights ensuing from failure to pay designation fees may not be overcome by requesting reinstatement under R49.6 PCT, because the designation fees are not part of the national fee and therefore R49.6 PCT is not applicable. Furthermore according to R136(3) EPC, re-establishment under Art.122 EPC may not be applied to periods for which further processing is available. However, under the EPC, re-establishment is applicable to the period for requesting further processing. This means that, if the applicant fails to request further processing in time after a loss of rights ensuing under R160(1) EPC, he may request re-establishment for failure to request further processing (E-VII, 2.2.1). Early entry into EP phase OJ 2013, 156 Payment of the designation fee may be required, in order to achieve early entry into the EP phase under Art.23(2) PCT or Art.40(2) PCT. For more details on early entry into the EP phase and when payment of the designation fee is required to achieve this, see IV IV.8.4. IV Fees for extension and validation states Fees for extension states The EPO has concluded extension agreements with a number of non-epc contracting States. At the applicant's request, EP applications and patents can be extended to these "Extension States", and have the same effects as national applications and patents in their territory. However, since these States are not party to the EPC, the EPC is not directly applicable, and only the provisions of the extension agreements and the national law apply. Each extension is subject to the payment of an extension fee, to be paid within the same time limit as the designation fee. Terms of the extension agreements The extension agreement between the EPO and Slovenia (which later acceded to Peter Watchorn & Andrea Veronese 327

9 the EPC), was the first such agreement (see OJ 1994, 75). All of the later agreements where essentially based on that first agreement so that the same procedure at the EPO applies to all extensions. However, the national requirements before the extension states may differ. How to extend EP application via PCT In the case of an International application, a request for extension to the states indicated below is automatic when both the EPO and the following states are designated in the same International application. This applies even if the national procedure has been started in the state in question [this is indicated in the extension agreements given for each extension state in the OJ references below]. Which extension states A-III, 12.1, Euro-PCT Guide 122 & EPO Form 1200 The European patent application and the corresponding granted patent can be extended to those states which: (i) are not EPC contracting states, but (ii) are PCT contracting states, (iii) are designated in the PCT application [for a national patent]* and, (iv) which had an extension agreement with the EPO in force at the time of filing the International application. * Since all PCT states are designated automatically on filing the request [R4.9(a) PCT], this is automatic unless the designation of that state is withdrawn in the International phase [R90bis.2 PCT]. Currently two extension agreements are in force: Bosnia Herzegovina OJ 2004, 619 Montenegro OJ 2010, 10 An updated list of the EPC contracting states and the states having an extension agreement with the EPO can be found on the EPO web-site. For more details on extension of European patent applications and its relevance in the International phase, see also I The request for extension Euro-PCT Guide 558 If the above conditions are met, a request for extension is deemed filed when the Euro-PCT application enters the regional phase. Clearly if the designation of the extension state is withdrawn in the international phase [R90bis.2 PCT see I.4.6], then extension will not be possible in the European phase. Extensions fees: when to pay A-III, 12.2 & Euro-PCT Guide 559 For the extension to take effect, the extension fee must be paid within the same period as for the designation fees*. * R159(1)(d) EPC This period is the later of: - 31 months of the filing/priority date of the International application [R159(1) EPC period] and, - 6 months from publication of the International Search Report [regardless of whether a supplementary search report is prepared by the EPO R39(1) EPC period]. How many fees Euro-PCT Guide 560 One extension fee is due for each extension state. There is no single flat extension fee. Indication of states paid for Euro-PCT Guide 562 When paying extension fees, the applicant must indicate which extension states he is paying for. Euro-PCT Guide 562 If the states he finally pays for do not correspond to those which were indicated in Form 1200, then the applicant will have to provide the correct indication. - This part of the Guide also appears to imply that even where indications are provided on Form 1200, the applicant will still have to indicate which states he is paying for when making payment. However, since most applicants requesting extension, do so in respect of all extension states and pay the extension fees due, then it is no longer necessary to indicate which extension states have been paid for. Loss of rights and further processing Euro-PCT Guide 558 A-III, 12.2 If the extension fee for a state is not paid in time, the request for extension to that state is deemed to be withdrawn. A-III, 12.2 No separate communication is sent to notify a loss of rights resulting from the failure to pay extension fees on time [i.e. the applicant is not sent a R112(1) EPC communication indicating the deemed withdrawal of the extension] Peter Watchorn & Andrea Veronese

10 Consequently, the applicant cannot normally request further processing for failure to pay the extension fee on time. This is subject to the exception below. A-III, 12.2 If the applicant failed to pay both of the following on time: - the designation fee and - at least one extension fee then he is sent a communication under R112(1) EPC informing him of both the deemed withdrawal of the application [R160(1) EPC] and the loss of the extension [A-III, 12.2]. It is only in this situation, that the applicant may request further processing for failure to pay the extension fee (and also failure to pay the designation fee on time as well). In all other cases the deemed withdrawal of the request for extension due to the failure to pay an extension fee cannot be remedied by further processing. A-III, 12.2 The extension can then be reanimated by paying a 50% surcharge [further processing fee] on the extension fee. J14/00 & A-III, 12.2 No re-establishment of rights under Art.122 EPC and R136 EPC is possible in respect of failure to pay the extension fees. These provisions are quite harsh for the applicant, because if he has failed to pay the extension fees in time, but he has in the meantime duly paid the designation fees, the request for extension is deemed withdrawn, and the legal remedy of further processing is not available. Grace period also not paid on time [A-III, see above]. OJ 2009, 603 Payment within the grace period is subject to the payment of a 50% surcharge on the late paid extension fee. Decision under R112(2) EPC and appeal J4/05 The applicant cannot request the EPO for a decision under R69(1) EPC_1973, [now R112(2) EPC] with regard to the payment of extension fees. J14/00, J19/00, J9/04, J2/05 & J4/05 The applicant cannot appeal a finding of the EPO that the fee was not paid in time. Such an appeal is inadmissible. The provisions of the EPC only apply to extensions in so far as these are mentioned in the Extension Ordinance (EO). Since the EOs do not mention the possibility of a decision under R112(2) EPC, or appeal according to Art.106 EPC then neither of these procedures apply to the failure to pay the extension fee. Withdrawal or lapse of extension A-III, 12.3 The extension can be withdrawn at any time. - It will be deemed withdrawn if the Euro- PCT application is: - finally refused - withdrawn or - deemed withdrawn. - A separate communication [indicating lapse of the extension] is not issued to the applicant. - Validly paid extension fees are not refunded. OJ 2009, 603 If the applicant fails to pay the extension fee within the basic period, he can pay the fee within two months of expiry of the basic period [grace period]. This grace period used to apply to late payment of designation and extension fees under EPC_1973 (no longer necessary for designation fees since these fees are now subject to further processing). The reintroduction of the grace period for extension fees means that the explanation of aggregate time limits in L5/93 (abandoned) once again applies to late payment of extension fees in the grace period. This procedure for payment within a grace period exists in addition to the possibility for payment by means of further processing where the designation fee is IV Fees for validation states The EPO has concluded validation agreements with two states so far, Morocco (MA) and Moldova (MD). These are not referred to as extension agreements, but the system appears to be very similar, if not identical to the extension agreements explained in IV.8.4.1, at least as far as procedures to be followed are concerned. Terms of the validation agreements The terms of the validation agreement between the EPO and Morocco are given in OJ 2015, A18, OJ 2015, A19 and OJ 2015, A20 as reported below Peter Watchorn & Andrea Veronese 329

11 The terms for the validation agreement with Moldova are given in OJ 2015, A84 and OJ 2015, A84. How to validate EP application via PCT OJ 2015, A20 For PCT applications, a request for validation in Morocco is automatic when filing the application via the PCT. A-III, 12.1 The EPO and the validation state must both be designated in the PCT application. This is in any case automatic because filing the request constitutes the designation of all PCT states and regional offices [R4.9(a) PCT]. For more details, see I.4.4.2, sub-section Designation of EPO/Morocco. Furthermore, since the Euro-PCT Guide 558 states that a specific request for extension is also not required when entering the EP phase, this should also apply to the validation. Validation fee: amount, when to pay OJ 2015, A18 The amount of the validation fee for Morocco is set in this reference. OJ 2015, A84 The amount of the validation fee for Moldova is set in this reference. OJ 2015, A19 The validation fee must be paid within the later to expire of: - 6 months of the publication of the PCT search report, and - 31 months of the earliest priority [or where no priority is claimed, the filing date Art.2(xi)(c) PCT]. OJ 2015, A85 The above also applies to the fee for validation in Moldova. This is the same period as that for paying the EP designation fee under R159(1)(d) EPC [for more details on payment of the designation fee see IV.8.3]. Loss of rights and further processing OJ 2015, A19 If the validation fee is not paid in time, the request for validation is deemed to be withdrawn. Note OJ 2015, A19 applies to validation fees in general, and so to the validation fees for all validation states. This is confirmed by the later validation agreement with Moldova [see OJ 2015, A85, which confirms that OJ 2015, A19 also applies to payment of validation fees for this state]. OJ 2015, A19 No separate communication is sent to notify a loss of rights resulting from the failure to pay the validation fee on time [i.e. the applicant is not sent a R112(1) EPC communication indicating the deemed withdrawal of the validation]. Consequently, the applicant cannot normally request further processing for failure to pay the validation fee on time [confirmed in A-III, 12.1]. This is subject to the exception below. OJ 2015, A19 If the applicant failed to pay both of the following on time: - the designation fee and - the validation fee then he is sent a communication under R112(1) EPC informing him of both the deemed withdrawal of the application [R160(1) EPC] and the loss of the validation. It is only in this situation, that the applicant may request further processing for failure to pay the validation fee (and also failure to pay the designation fee on time as well). In all other cases the deemed withdrawal of the request for validation due to the failure to pay a validation fee cannot be remedied by further processing. OJ 2015, A19 The validation can then be reanimated by paying a 50% surcharge [further processing fee] on the validation fee. OJ 2015, A19 No re-establishment of rights under Art.122 EPC and R136 EPC is possible in respect of failure to pay the validation fee. These provisions are quite harsh for the applicant, because if he has failed to pay the validation fee in time, but he has in the meantime duly paid the designation fees, the request for validation is deemed withdrawn, and the legal remedy of further processing is not available. Grace period Again, the procedures below apply in general to fees for all validation states [currently Morocco and Moldova]. OJ 2015, A19 If the applicant fails to pay the validation fee within the basic period, he can pay the fee within two months of expiry of the basic period [grace period]. This grace period used to apply to late payment of designation and extension fees under EPC_1973 (no longer necessary for designation fees since these fees are now subject to further processing). The reintroduction of the grace period for validation fees means that the explanation of aggregate time limits in L5/ Peter Watchorn & Andrea Veronese

12 (abandoned) once again applies to late payment of validation fees in the grace period. This procedure for payment within a grace period exists in addition to the possibility for payment by means of further processing where the designation fee is also not paid on time [OJ 2015, A19 - see above]. OJ 2015, A19 Payment within the grace period is subject to the payment of a 50% surcharge on the late paid validation fee. OJ 2015, A85 The above also applies to the fee for validation in Moldova. Decision under R112(2) EPC and appeal A-III, 12.1 The applicant cannot request the EPO for a decision under R112(2) EPC with regard to the payment of validation fees. A-III, 12.1 The applicant cannot appeal a finding of the EPO that a validation fee was not paid in time. Withdrawal or lapse of validation A-III, 12.3 The validation can be withdrawn at any time. - It will be deemed withdrawn if the Euro- PCT application is: - finally refused - withdrawn or - deemed withdrawn. - A separate communication [indicating lapse of the validation] is not issued to the applicant. - Validly paid validation fees are not refunded. IV.8.5. The claims fee Claims fee due for more than 15 claims R162(1) EPC If the application documents on which the EP grant procedure is to be based comprise more than 15 claims, claims fees shall be paid for the 16 th and each subsequent claim as laid down in the rules relating to fees within the period under R159(1) EPC. Two tier system A lower claims fee is due for each claim from the 16 th up to the 50 th claim and a higher claims fee is due for the 51 st and subsequent claims. Rfees 2(1).15 EPC The prescribed amount for each claims fee, is: - a fixed amount for the 16 th and each subsequent claim up to a limit of 50 - a higher fixed amount for the 51st and following claims. Applicants are referred to the latest updated version of the EPO fee regulations for changes in the amounts of these fees. Time limit R162(1) EPC The fee must be paid within the time limit according to R159(1) EPC which is: - 31 months from the priority date of the application [or from the filing date, if no priority is claimed]. Late payment on invitation R162(2) EPC If the claims fees are not paid in due time, they may still be paid within six months from a communication concerning the failure to observe the time limit. - If within this period amended claims are filed, the claims fees due are computed on the basis of such amended claims. Euro-PCT Guide 505 This period is not extendable. E-VIII, The invitation to pay claims fees under R162(2) EPC is sent together with the communication under R161 EPC informing the applicant of his right to amend the application [see also subsection below: amount payable if the claims are amended]. No surcharge is due in case of late payment. R162(3) EPC Any claims fees paid within the period under R162(1) EPC and in excess of those due under R162(2) EPC, second sentence, is refunded. If within the additional R162(2) EPC period to pay claims fees the applicant files a new set of claims which results in the amount of claims fees already paid being in excess, the excess is refunded. See below under Amount payable if claims are amended. Sanction for failure R162(4) EPC Where a claims fee is not paid in due time, the claim concerned is deemed to be abandoned. Euro-PCT Guide 508 The applicant is notified if a claim is deemed abandoned. J15/88, E-VIII, & Euro-PCT Guide 508 Where subject matter which is present in a claim deemed abandoned according to R162(4) EPC does not appear in the description or drawings*, it cannot be re-introduced into the application Peter Watchorn & Andrea Veronese 331

13 Euro-PCT Guide 508 does not mention the drawings, but E-VIII, and J15/88 do. J9/84 Abandoning a fee exempt claim [e.g. claim 2] does not transfer the fee exemption to another claim. B-III, 3.4 Where a claim is deemed abandoned for non-payment of a claims fee, [and a supplementary search is performed by the EPO], that claim is not searched. - The supplementary search report identifies any claims not searched for this reason. B-XI, 6 This is also mentioned in the ESOP. Legal remedies Art.121(1) EPC Further processing applies to any time limit not respected by the applicant [subject to certain exceptions, which do not include the payment of claims fees]. Further processing is applicable, since it is not excluded by Art.121(4) EPC or by R135(2) EPC. Rfees 2(1).12 EPC The further processing fee for non payment of the claims fees is 50% of the amount of the claims fees not paid on time. R136(3) EPC Re-establishment under Art.122 is ruled out for any period for which further processing is available [i.e. in this case]. E-VII, However, if the applicant fails to request further processing in due time, he may request re-establishment in respect of the time limit for requesting further processing. Procedure in case of insufficient payment A-III, 9 If the amount paid [under R45 EPC*] is insufficient to cover all claims from 16 onward, and the applicant has not indicated which claims he wants to keep, he is asked which ones he wants to keep. * R45 EPC refers to claims fees paid in respect of direct European applications; the principles should, however, be equally applicable to claims fees due for international applications entering the European phase. Accordingly, the applicant would be well advised to clearly indicate which claims he is paying for and do so within the time limit for late payment according to R162(2) EPC (six months from the notice of failure to pay). If he fails to indicate this, the EPO may apply Rfees 6(2) EPC and find that the claims fees are deemed not paid, because the purpose of the payment is not indicated. Amount payable if claims are amended R161 EPC After entry into the European phase, the applicant is invited to amend the application within a non-extendable period of six months from the invitation. E-VIII, The communication inviting late payment of the claims fees [R162(2) EPC] and the filing of amendments to the application [R161 EPC] is one in the same. Consequently these two invitations both have the same time limit - six months and non-extendable in both cases [Euro-PCT Guide 505] and both six month periods start and expire on the same day. Euro-PCT Guide 504 Subject to the exception mentioned below*, the claims fees to be paid within the above six month period are calculated based on the number of claims of the application documents indicated for further prosecution of the application in Form * R162(2) EPC [As an exception to the above], if the applicant amends the claims in the above six month period [which starts and expires after filing Form 1200], the amount of the claims fees is calculated on the basis of the amended set of claims on file at the end of this period. Euro-PCT Guide 506 Where the applicant amends the claims within this period, this new set of claims is then used to calculate the claims fees. If the applicant files amended claims in this period, the claims fees to be paid within this same period are then those due for the amended claims which he files, minus any claims fees which he has already paid. For example: - International application enters European phase all acts completed, except payment of claims fees. - Application has 20 claims on entry into the European phase [5 claims fees due - R162(1) EPC] month period expires [R159(1) EPC] No claims fees paid yet EPO sends invitation to the applicant to pay claims fees late [R162(2) EPC] and, if applicant so wishes, to amend the application (R161 EPC) Applicant files a new set of 19 claims and pays 4 claims fees. This is within the six month time limit which, taking into account the 10 days for notification [R126(2) EPC] would expire on Peter Watchorn & Andrea Veronese