Changes to the EPO Fees from 1 April 2009
Article from our Winter 2008-2009 edition of InsideIP.
In December 2007, the EPO announced a series of changes to fees, to be introduced in two phases. The first phase came into force on 1 April 2008, the main change being to significantly increase the cost of excess claims fees. The second phase is due to come into force on 1 April 2009. The changes being introduced on 1 April 2009 include new rules governing designation fees as well as additional fees for applications with long specifications and/or large numbers of claims.
The new fees will apply both to international (PCT) applications which enter the European regional phase on or after 1 April 2009, and to new European patent applications filed on or after this date.
Where applicants wish to file applications designating less than six states, or have particularly long applications, there is an opportunity to make cost savings by filing new applications or entering the regional phase before 1 April 2009.
Designation fees
At present, if fewer than seven contracting states are designated, a designation fee is charged at the rate of €85 per contracting state. Alternatively, a payment of €595 secures designation of all contracting states. However, from 1 April 2009, the variable-rate fee will no longer apply to newly filed applications (and regional phase entries); instead, each application will incur a single designation fee of €500 regardless of how many states are designated. This represents a small cost saving for applicants designating all states, but equally represents a significant cost increase for those applicants who normally only designate three or four states.
The EPO has confirmed that the deadline for payment of the designation fee will remain unchanged, at 6 months after publication of the search report.
It is worth noting that European patent applications filed before 1 April 2009 will continue to have designation fees calculated under the present system, regardless of whether the deadline for payment falls before or after this date. This means that the old system of individual designation fees is likely to continue in parallel with the new system for many years to come, since there are still a very large number of pending cases for which designation fees have not yet been paid.
The possible cost savings resulting from the change in designation fees will be most relevant for ex-PCT applications which are due to enter the regional phase after 1 April 2009, for which fewer than six states are to be designated. In these cases, since the designation fee will be significantly higher under the new rules, early entry to the regional phase before the deadline of 1 April 2009 will result in a cost saving.
Fees based on specification length
At present, a €790 fee is payable on all applications at grant. If an application comprises more than 35 pages, an additional fee of €12 per page (for the 36th page and each subsequent page) is charged at grant. However, from 1 April 2009, a single grant fee of €790 will be charged on all applications regardless of length; for applications longer than 35 pages, the additional charge of €12 per page (for the 36th page and each subsequent page) will be payable at filing instead of at grant.
The aim of this change is clearly to discourage the filing of lengthy applications.
Additional page fees for international applications will be based on the international publication. Applicants can avoid the initial costs of these fees for very long applications by entering the regional phase before the 1 April deadline.
Excess claims fees
Excess claims fees are currently payable at the rate of €200 per claim, for the 16th claim and each subsequent claim. After 1 April 2009, if an application
contains more than 50 claims, the excess claim fee will be charged at €500 per claim for the 51st claim and each subsequent claim; the fee for each of claims 16 to 50 remains at €200.
This increase is unlikely to have a significant effect, since the previous increase to €200 has already significantly reduced the number of claims in a typical application.
If you require any further information about the upcoming fee changes, including advice on how they may relate to an existing or future application, please contact us.