Part IV. IV.7. Republication of the international application in an EPO official language. Fees payable on entering the European regional phase

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1 IV.7. Republication of the international application in an EPO official language Art.158(1) EPC The publication under Art.21 PCT of an international application designating the EPO takes the place of the publication of the European patent application, and is mentioned in the European Patent Bulletin, but this is subject to Art.158(3) EPC. Art.158(2) EPC The international application shall be supplied to EPO in one of its official languages. Note: This means that, where the International application was published in a language other than an EPO language, a translation has to be filed by the applicant at the EPO.(See the section "IV.6 - Furnish a translation of the application") Art.158(3) EPC If the international application is published [by the International Bureau, under Art.21 PCT], in a language other than one of the EPO official languages, the EPO will republish it in the translation as supplied to it under Art.158(2) EPC. Note: Accordingly, all international applications which where not published by the International Bureau in an EPO official language are re-published by EPO after entry in the European phase. The text is that of the translation supplied by the applicant under Art.158(2) EPC and R107(1)(a) EPC. Art.158(3) EPC Subject to the provisions of Art.67(3) EPC, the provisional protection in accordance with Art.67(1)(2) EPC, shall be effective from the date of that publication. Note: With regard to the effect of the republication of the translation on the provisional protection in the EPC, see the sections - "II Rights conferred by International publication" and - "II Steps necessary at the EPO". IV.8. IV.8.1. Fees payable on entering the European regional phase Fees - general remarks When the International application enters the regional phase before EPO the following fees become due to the EPO: - national basic fee (= EPO filing fee) - designation fees - 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. Who may pay fees to EPO Euro-PCT Guide 180 & L6/91 Fees may be validly paid to the EPO by any person. Note: 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. L6/91 However, correspondence concerning particulars of payments under RFees 7 EPC may only be made with the party concerned, or with his representative. Also, refunds of fees/other sums are made to the party concerned or to the representative authorised to receive payments. How to pay fees to EPO OJ 2001, 524 Beginning in January 2002 all EPO accounts are in Euros, and payments must be made in Euros to the EPO's Euro accounts. Cheques must also be made out in Euros. Rfees 5(1) EPC Payments can be done by transfer to EPO's: - bank accounts - giro accounts, - by delivery or remittance of cheques payable to the EPO. Rfees 5(2) EPC Furthermore, under the provisions of Rfees 5(2) EPC the President has allowed other forms of payment using the following methods: OJ 2/2002 suppl "ADA" Arrangements for deposit accounts (ADA:). These deposit accounts are kept at the EPO headquarters in Peter Watchorn & Andrea Veronese 223

2 Munich. In order to make payments, the account holder has to file a written, signed debit order or else transmit it by facsimile (no confirmation is required) or by letter. Note: The applicant keeps the account in credit and asks the EPO to deduct fees from it. The above reference indicated that payment orders could be given by telex or telegram. However, these means of filing debit orders are no longer accepted by the EPO (OJ 2005, 44). OJ 2/2002 suppl AAD Automatic debiting procedure: 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 holder only has to ensure that the account is sufficiently in credit to pay the fees on time. IV.8.2. The "national fee" before EPO Art.39(1)(a) PCT & Art.22(1) PCT The applicant must pay the national fee (if any) to each elected office EPO national fee Art.158(2) EPC & R106 EPC In the case of EPO, the national fee provided for in Art.22(1) PCT & Art.39(1)(a) PCT consists of: (a) the national basic fee (which is equal to the EPO filing fee under Art.78(2) EPC) (b) the designation fees - Art.79(2) EPC. The regulation for the payment of these fees is given in the following sections. IV The national basic fee (the European filing fee) Art.158(2) EPC & R106(a) EPC When entering the regional phase before the EPO, the applicant must pay the national basic fee as part of the "national fee" provided in Art.22(1) PCT and Art.39(1)(a) PCT. Note: The EPO national basic fee is the same as the filing fee under Art.78(2) EPC. Amount / Reduction Rfees 2.1 EPC Amount of the national basic fee (equal to the filing fee for a direct European application). Rfees 2.1 EPC When the Form 1200 is filed online*, the national basic fee is reduced. * OJ 2002, 545 The official EPO form to enter the regional phase before EPO, (Form 1200) may be filed in electronic form using the electronic on-line epoline system. Time limit R107(1)(a) EPC The EPO national basic 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). Sanction for failure R108(1) EPC If the national basic fee is not paid on time, then the application is deemed withdrawn. R108(3) EPC The applicant is informed of this. R69(2) EPC applies mutatis mutandis. Note: the reference to R69(2) EPC means that the applicant may ask the EPO to review the facts and issue an appealable decision on this finding. Late payment plus surcharge R108(3) EPC Where the applicant fails to pay the national basic fee on time, the EPO invites him to pay it late within two months of an invitation (non-extendable). - The applicant must also pay a surcharge in this two month period. - If the applicant pays the fee and the surcharge in time, the loss of rights under R108(1) EPC is deemed not to have taken place. Amount of the surcharge Rfees 2(3c) EPC The amount for late payment of the: - national basic fee (filing fee) - the search fee - the examination fee - one or more designation fees, is the greater of a minimum set amount and 50% of the total amount of the relevant late paid fees, but cannot exceed a maximum set amount. Reinstatement of rights G3/91 Failure to observe the R107(1)(c) EPC time limit for payment of the national basic fee is excluded from restitutio according to Art.122(5) EPC. Restitutio does not apply to the period of grace for the late payment of filing, search and designation fees under R85a EPC* either. * Note: This decision was issued before the new R108 EPC came into force and the late payment of the filing fee (national Peter Watchorn & Andrea Veronese

3 IV basic fee), search fee and designation fees for both direct European and Euro-PCT applications were both governed by R85a EPC. However, the principles of this decision are equally applicable to the period of grace for late payment of the national basic fee according to new R108(3) EPC. The decision means that the applicant cannot excuse failure to pay the national basic fee (i.e. the filing fee) within the period of grace according to R108(3) EPC any more than he can excuse the failure to pay this fee within the original time limit according to R107(1)(c) EPC (Art.122(5) EPC). The only way for the applicant to reinstate his rights is to pay the fee late with the surcharge according to R108(3) EPC. European designation fees R106(b) EPC The national fee [Provided for in Art.22(1) PCT, Art.39(1)(a) PCT & Art.158(2) EPC], includes the designation fees provided for in Art.79(2) EPC. Amount of the European designation fees Rfees 2(3) EPC This rule sets the amount of the designation fee for each designated EPC contracting state, it also indicates that, where the applicant pays seven designation fees, then the designation fees for all EPC states are deemed paid. Note:Iin most cases applicants validate the designation of all EPC contracting states on entry into the European regional phase, by paying seven designation fees. If the applicant pays less than seven designation fees, then he validates the designation of certain EPC states only, and he must indicate which those states are (Rfees 7(1) EPC). This is most conveniently done on form Time limit to pay the designation fees R107(1)(d) EPC Art.79(2) EPC The designation fees 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 R107(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 Art.79(2) EPC]. * Note: For international applications the international search report replaces the European search report under Art.157(1) 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 R108(1) EPC If no designation fee is paid on time then the application is deemed withdrawn. R108(2) EPC If the designation fee of a particular contracting state is not paid on time, then the designation of that state is deemed withdrawn. R108(3) EPC The applicant is informed of this. R69(2) EPC applies mutatis mutandis. Note: the reference to R69(2) EPC means that the applicant may ask the EPO to review the facts, and issue an appealable decision on this finding. Late payment plus surcharge R108(3) EPC Where the application or a designation is deemed withdrawn according to R108(1)(2) EPC, then the EPO invites him to pay the fee within two months of an invitation (non-extendable). - The applicant must also pay a surcharge in this two month period. - If the applicant pays the designation fees and the surcharge in time, the loss of rights under R108(1) EPC is deemed not to have taken place. R108(4) EPC Where no communication under R108(3) EPC is sent (see below), the applicant can pay a designation fee in respect of that state plus surcharge within two months of the expiry of the time limit according to R107(1) EPC. J5/91 & A III 12.3 Any designation fee for any state can be paid late plus surcharge by the later to expire of the above two time limits (consequently, the question of which states are covered by R108(3) EPC* and which are covered by R108(4) EPC* is irrelevant). * Note: The above Guideline and case-law actually relate to the late payment of designation fees for Euro-direct applications under R85a(1) EPC and R85a(2) EPC. However, since Euro-PCT applicants and Euro-direct applicants are to be treated equally G3/91), then it makes sense that the same principle applies to Euro-PCT applications as well. Guideline Peter Watchorn & Andrea Veronese 225

4 A III explains both time limits under R108(3) EPC and R108(4) EPC, but it does not explicitly state that the fees can always be paid until the later of the two time limits expires. Amount of the surcharge Rfees 2(3c) EPC The amount for late payment of the: - national basic fee (filing fee) - the search fee - the examination fee - one or more designation fees, is the greater of a minimum set amount and 50% of the total amount of the relevant late paid fees, but cannot exceed a maximum set amount. Reinstatement of rights G3/91 Failure to observe the R107(1) EPC time limit for payment of the designation fees is excluded from restitutio according to Art.122(5) EPC. Restitutio also does not apply to the period of grace for the late payment of filing, search and designation fees under R85a EPC [now R108] either*. Note: This implies that the only way for the applicant to reinstate his rights is to pay the fees late with the surcharge according to R108(3) EPC or R108(4) EPC. When the communication under R108(3) EPC is or is not sent OJ 2001, 586 The EPO will only send a communication under R108(3) EPC where the applicant, on entry into the European phase: - indicates* that he intends to pay seven designation fees, thus validating the designations of all EPC states under Rfees 2(3) EPC, and he then pays less than seven designation fees within the 31 month period under R107(1) EPC - indicates* that he intends to pay six or fewer designation fees and indicates which states these are for and then pays fewer than the indicated number of designation fees within the 31 month period under R107(1) EPC - indicates* that he intends to pay six or fewer designation fees and indicates which states these are for and then (within the 31 month period under R107(1) EPC) pays the indicated number of designation fees, but in respect of states other than those previously indicated. OJ 2001, 586 If the applicant uses form 1200 for entry into the European phase and he pays less than seven designation fees, indicating the States for which the payment is intended, then the pre-printed declaration in form 1200 exempts the EPO from having to send a communication according to R108(3) EPC for the states which are not specifically designated by the applicant. No communication according to R108(3) EPC will be sent in respect of these states. Note: Where the applicant is only interested in the designations of six EPC states or less, then under Rfees 7(1) EPC he has to identify the states for which he wishes to pay, or has already paid the EPC designation fees on entry into the European regional phase (this can be done in section 10.2 of form 1200). Where a designation fee for any of those states named in section 10.2, is not paid in time, then a communication under R108(3) EPC requesting late payment plus surcharge is sent in respect of those states. However, the preprinted declaration in form 1200 informs that no such communication will be sent in respect of any other states not indicated by the applicant. Consequently, where the applicant uses this declaration and pays on time the designation fees for the states named in this section of form 1200, then no communication according to R108(3) EPC will be sent for the other states. In these cases R108(4) EPC applies. However, where a communication under R108(3) is sent, the applicant can pay late plus surcharge for any state until the later of the time limits to expire R108(3) EPC and R108(4) EPC (see above). Accession to EPC after PCT filing date Euro-PCT Guide 7,35 J30/90 Where a PCT member 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 Euro-PCT Guide 215 It is possible in the International phase to withdraw the EP designation for an EPC state. Note: The above reference implies that it would be possible, in the International phase, to withdraw e.g. the designation of Sweden, from the regional designation of the EPO (see the section "I Withdrawal of designations"). This would Peter Watchorn & Andrea Veronese

5 IV then have the effect that (in the above example) Sweden could no longer be designated under the EPC on entry into the European phase. Fees for extension States OJ 1994,75 & OJ 1997, 538 Euro-PCT Guide 223 & EPO Form 1200 The European patent application and the corresponding granted patent are extended to those states designated in the International application which are not EPC contracting states, but which have an extension agreement with the EPO in force at the time of filing the International application. - For the extension to take effect, the extension fee must be paid within the same time limit as for the designation fees. - One extension fee is due for each extension state. When paying one such a fee, the state for which it is intended must be indicated. - If the extension fee is not paid in time the request for extension is deemed withdrawn. Note: For a full list of states having such agreements with the EPO, see the section "I Extension of European patents to Non-EPC states via the PCT" Late payment plus surcharge A III 13.2 No communication under R108(3) is issued in this case. Note: This means that where the applicant does not pay the extension fee on time, the EPO will not send him a communication point this out. The applicant must recognise this failure himself and pay of his own volition without invitation from the EPO (see next paragraph). R108(4) EPC A III 13.2* However, the applicant can pay the extension fee late plus surcharge within two months of the expiry of the time limit for payment (31 months from the priority R107(1) EPC - or 6 months from publication of the International search report - Art.79(2) EPC). * Note: This Guideline refers to R85a(2) EPC in respect of Euro-direct applications. For Euro-PCT applications, R108(4) EPC has been introduced. It is not explicitly stated here that the R108(4) EPC time limit can be used to pay extension fees late on entry into the European phase (2 months after the expiry of the original time limit). However, in order to avoid unequal treatment for Euro-direct and Euro-PCT applicants (G3/91) it would make sense if the above also applied to the payment of extension fees for Euro-PCT applications by application of the R108(4) EPC time limit. Late payment surcharge A III 13.2 The surcharge for late payment - RFees 2.3(c) EPC applies mutatis mutandis. Note: It is not clear if late paid extension fees are included in the calculation of the minimum and maximum surcharges for late paid European designation fees according to Rfees 2.3(c) EPC, or if they are subject to a separate and additional surcharge with its own separate maximum. For the amount of the surcharge under Rfees 2.3(c) EPC, see the section "IV European designation fees". Indication of states paid for Euro-PCT Guide 225 When paying, the applicant must indicate which extension states he is paying for. This applies in particular if the states he is paying for, do not correspond to those indicated in Form Sanction for non payment OJ 1994, 75, Euro-PCT Guide 227 OJ 1997, 538, A VII 13.2 Where the extension fee is not paid on time (including the possibility for late payment with surcharge), the request for extension is deemed withdrawn. A VII 13.2 Re-establishment of rights is not possible (further processing or restitutio). IV.8.3. The claims fee More than ten claims R110(1) EPC Where the European application has more than ten claims, a claims fee is payable for the eleventh and subsequent claims. Time limit R110(1) EPC This must be paid within the time limit according to R107(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 R110(2) EPC Where a claims fee is not paid on time, the applicant is invited to pay it late within a one month grace period from the invitation. Note: No surcharge is due Peter Watchorn & Andrea Veronese 227

6 Sanction for failure R110(4) EPC If any claims fee is not paid on time, the claim in question is deemed abandoned. A III 9 The applicant is notified if a claim is deemed abandoned. J15/88 & A VII 1.3 Where subject matter which is present in a claim deemed abandoned according to R110(4) EPC does not appear anywhere else in the application, it cannot be reintroduced into the application. 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. Reinstatement of rights G5/93 The failure to pay claims fees under R104b(1)(b)(iii) EPC* is subject to restitutio. A III 9 R109 EPC R110(2) EPC * Note: This old rule mentioned in this decision, has been replaced by R110 EPC. Procedure in case of insufficient payment If the amount paid [under R31 EPC*] is insufficient to cover all claims from 11 onward, and the applicant has not indicated which claims he wants to keep, he is asked which ones he wants to keep. * Note: R31 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 R110(2) EPC (one month from the notice of failure to pay). If he fails to indicate this, the EPO may apply Rfees 7(2) EPC and find that the claims fees are deemed not paid. Amount payable if claims are amended After entry into the European phase, the applicant is invited to amend the application within a non-extendable period of one month from the invitation. If the applicant amends the claims in the grace period for payment of claims fees under R110(2) EPC, the amount of the claims fees is calculated on the basis of the amended set of claims. Euro-PCT Guide 197, 243 The communication inviting late payment of the claims fee (R110(2) EPC) and the filing of amendments to the application (R109 EPC) is one in the same. Note: Consequently these two invitations both have the same time limit - one month and non-extendable in both cases and both starting and expiring on the same day. Euro-PCT Guide 243 Where the applicant amends the claims within this period, this new set of claims is then used to calculate the claims fees. Note: 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 15 claims on entry into the European phase (5 claims fees due - R110(1) EPC) month period expires (R107(1) EPC) No claims fees paid yet EPO sends invitation to the applicant to pay claims fees late (R110(2) EPC) and, if applicant so wishes, to amend the application (R109 EPC) Applicant files a new set of 14 claims and pays 4 claims fees. This is within the one month time limit. Note: It may also happen that the applicant pays all claims fees due in the 31 month period and then files amended claims, with more claims that the original set, for example: - International application enters European phase all acts completed, except payment of claims fees. - Application has 12 claims on entry into the European phase (2 claims fees due - R110(1) EPC) Applicant pays 2 claims fees month period expires (R107(1) EPC) EPO sends invitation to the applicant to amend the application (R109 EPC) Peter Watchorn & Andrea Veronese

7 Applicant files a new set of 20 claims and he must also pays 8 additional claims fees also within the one month time limit (since 10 claims fees are due, but he only paid 2 on entry into the European phase). Refund of excess claims fees R110(3) EPC Claims fees paid in excess of those due are refunded. Euro-PCT Guide 243 Where the applicant amends the claims after entry into the European phase according to R109 EPC (during the R110(2) EPC grace period) and this new set of claims contains fewer claims than the original set, then any excess already paid is refunded. Example: - the applicant entered the European phase with 15 claims from the International phase and paid 5 claims fees within 31 months of the priority, - EPO sent R109 EPC communication inviting him to file amendments, - the applicant filed within one month of this invitation, an amended set of 12 claims. In this case, the EPO will refund 3 claims fees. One R110(2) EPC communication only Euro-PCT Guide 244 If additional claims fees become due as a result of amendments filed in response to the R110 EPC/R109 EPC communication, a second such communication will not be sent. For example: Application has 15 claims R110(2) EPC/R109 EPC communication sent inviting late payment of claims fees (based on the current set of claims, 5 such fees are due) and inviting the applicant to file amendments Applicant files a new set of 20 claims (i.e. 10 claims fees become due in total - 5 more than previously due). He must pay 10 claims fees before the end of the one month time limit set in the above communication. He does not get another communication under R110(2) EPC to pay the extra 5 claims which have became due as a result of his amendment. Multiple sets of claims L3/85 & A III 9 With multiple sets of claims according to R87 EPC, claims fees are due in respect of the set with the most claims (if this has eleven or more claims). Note: Under certain limited circumstances it is possible to have different sets of claims for different EPC contracting states. This is where, for example, prior rights exist in respect of a part of the claimed subject matter for certain EPC states and not for others. See the example given at the end of the section "III Prior art for preliminary examination". Enumerated embodiments J5/87 Enumerated embodiments annexed to the description and acting as a possible subject of examination, and appearing as claims according to Art.84 EPC and R29 EPC, are to be charged as claims. Note: However, the following decisions followed a different approach: J15/88 & J16/88, J29/88, J25/89, J26/89, J27/89, J28/89, J34/89 & T490/90 Enumerated embodiments, where these are not referred to as claims, and where claims are already present in the application which are referred to as such, are not subject to the payment of a claims fee. Note: Enumerated embodiments have often been used in the past as a ruse to avoid the payment of claims fees. To combat this problem the EPO has often applied R86(4) EPC, making it difficult for the applicant to introduce the subject matter from these embodiments, originally part of the description, into new or amended claims introduced during the examination procedure. IV.8.4. IV.8.5. IV.8.6. Fee for the supplementary European search For the details on this, see the section "IV Supplementary search fee / Time limit". The examination fee For the details on this, see the section "IV The examination fee" and relevant sub-sections. The renewal fee Renewal fees are charged by EPO for the third and subsequent years calculated from the date of filing of the European patent application. Which due date is applicable R107(1)(g) EPC When an International application enters the regional phase before the EPO, the renewal fee under Art.86(1) EPC for the Peter Watchorn & Andrea Veronese 229