EPO FEE INCREASES
The European Patent Office announced fee increases with effect from 1 April 2009. These may be summarised as follows:
- From April 1st 2008 the claims fees were increased to €200 ($270) for 16th and subsequent claims;
- From April 1st 2009 a fee of €500 ($670) is payable for the 51st and subsequent claims.
EXCESS PAGE FEES
Previously an excess page fee of €12 ($17) per page over 35 pages was payable together with the grant fee after an application had been allowed. This fee is now payable on filing. The fee does not need to be paid again after allowance. There is no net increase in the cost of obtaining an EP but the excess page fee is brought forward.
The amount is calculated according to the number of pages over 35 by counting the pages of the description, claims, any drawings, and one page for the abstract in the language of filing. The pages of the request for grant do not count. Pages forming part of a sequence listing are not counted either provided that the listing in the description complies with WIPO Standard ST .25 and is presented as a separate part of the description. Nucleotide or amino acids sequences which are presented in “raw” form rather than in the prescribed format do not fall under this exemption.
If the application is filed without claims, the additional fee takes account of the pages of the first set of claims filed. If the application is filed by reference to a previously filed application, the pages of the certified copy including those for the certification and for bibliographic data are counted.
The additional pages fee is due within one month of the filing date for a direct EP or of the date of receipt for a European divisional application.
For PCT applications entering the European regional phase, the additional fee is due within the 31-month period from the priority date. The additional fee is calculated on the basis of the international application as published, any amendments under Article 19 PCT and one page for the abstract.
If the applicant intends pages of the international publication or of previous amendments to be replaced by pages of the latest set of amendments and therefore to be excluded from the calculation, this must be clearly indicated when entering the European regional phase.
If a PCT application was published in another language besides English, French or German, the translation needs to be filed. The translation forms the basis for the European publication. The excess pages fee is calculated from the translation and any amendments.
If amended claims are filed when entering the European phase, it must be indicated that the published claims are to be replaced. If an amendment was made, the entire claims set must be replaced. The additional fee is calculated on the amended claims set.
An amended description may be filed. The excess pages fees will be based on the translation of the description as amended provided that the amendment is clearly identified.
If several sets of claims or an amended description are filed, the applicant must expressly state which pages are to be counted. Otherwise fees for all of the pages must be paid.
Excess pages fees can be saved if the PCT application was published in Japanese, Chinese, Korean, or other non-European language.
If the additional fee is not paid on time, the application is deemed withdrawn. The application can be continued by requesting further processing.
Costs can be saved by amending the specification in the international phase, for example by:
curtailing the discussion of the prior art, deleting unwanted embodiments, using smaller type or margins, or putting more than one figure on each sheet of the drawings.
DESIGNATION FEES
After 1 April 2009, it is no longer possible to separately designate EPC contracting states. A single designation fee of €500 ($670) is payable on filing. This automatically covers all EPC contracting states unless individual designations are expressly withdrawn.
By payment of the unitary designation fee for a divisional application only those contracting states that were validly designated in the parent case are designated in the divisional application.
For European patent applications including divisionals filed before 1 April 2009, the old system of payment of individual fees up to a maximum of 7 will continue to apply.
The fees for the extension states, currently Albania, Boznia, and Serbia, remain at €95 ($128) per state.
The new designation fee regime is slightly cheaper if all states are designated. Besides the saving in official fees, there will be a saving in EPO and attorneys’ correspondence regarding the choice of states. This will lead to a reduction in EPO and applicants costs. Furthermore the need for an applicant to make a possibly limiting decision can be delayed until after grant.
CLAIMS FEES
Claims fees were significantly increased on 1 April 2008. After that date, a fee of €200 ($270) was payable on each of the 16th and subsequent claims. The fees are not affected by claims dependencies.
From 1 April 2009, a two-tier system is introduced so that the claims fee for the 51st and subsequent claims is increased to €500 ($670).
The EPO initiative in raising the claims fees in 2008 has backfired. It is understood that the fee increase was made to fill a hole in the EPO pension fund.
Before 1 April 2008, moderate claims fees were paid by many applicants. Following 1 April 2008, claims fees can easily exceed the total filing cost. Many applicants now routinely limit their cases to 15 claims. Most inventions can be claimed effectively in 15 claims.
For more complex inventions divisional applications can be a cheaper option than paying claims fees.
| Comparisons of divisional filing costs -vs- claims fees | |||
| Divisional Filing Costs | Claims Fees | ||
| Filing | €180 | ||
| Search | €1050 | ||
| 3rd Annuity | €400 | ||
| €1630 ($2190) | 8 claims €1600 ($2150) | ||
| Professional charge | €1200 ($1610) | 6 claims €1200 ($1610) | |
| Total | €2830 ($3800) | Total | 14 claims €2800 ($3760) |
| Six months after publication of search report | |||
| Exam fee | €1565 | ||
| Designation fee | €500 | ||
| Total | €2065 ($2771) | 10 claims €2000 ($2683) | |
Divisional applications are often forced if there is a disunity of invention objection. This is particularly common with US cases which have multiple independent claims in the same category.
ADDED (NEW) SUBJECT MATTER PROBLEMS
Claims can be abandoned to reduce costs but one must be careful to avoid giving up subject matter which is not expressly disclosed in the description and claims as filed. It is common for added subject matter objections to be encountered in the EPO in view of the stricter regime in comparison to US practice.
Accordingly a divisional application can be filed at the start of the regional phase procedure utilising funds which would otherwise be paid as claims fees. The examination and designation fees for a divisional application do not need to be paid until six months following publication of the European search report. The European search report is accompanied by a written opinion from the examiner. Therefore the prospects of success can be determined before any further costs are incurred.
PRELIMINARY CLAIMS AMENDMENT
Following the increase in claims fees on 1 April 2008, it has become common to make a preliminary amendment to the claims when entering the regional phase or a PCT application or upon filing of a direct EP. Following entry into the regional phase the EPO issues a Rule 161 EPC letter setting a one month period for amending the claims and paying any excess claims fees.
We recommend that a substantive amendment is made at this stage. This can lead to a significant saving in costs.
Several recommendations can be considered:
- The EPO will only search the first presented invention. Accordingly the most important independent claim should be placed first.
- Any clearly unpatentable independent claims should be deleted, for example claims which lack novelty after the PCT search report. The EPO may disregard any clearly unpatentable claims and then declare that the remaining claims lack unity. If claim 1 is disregarded in this way then claim 2, which may not be an important claim, will be made the main claim for the search. Any subsequent important independent claims may only be prosecuted as divisional applications.
- The EP cases can have independent method and product claims without encountering a US style restriction requirement. However the independent claims should have the same technical features so as not to lack unity, or be linked by a common inventive concept.
- Multiple dependencies can be used. For example, method and product claims can have a single set of dependent claims such as:
“A method or product as claimed in any preceding claim, wherein …” - Claims which have no independent validity can be dropped.
- Alternatives can be included in a single claim.
- US style claim dependencies with all claims dependent on claim 1 are considered limiting under EPO practice. For example if a case is to be limited to claims 1 + 3 + 5 to overcome a prior art objection, US style dependencies where all claims are dependent on claim 1 will support a combination of claims 1 + 3 or a combination of claims 1 + 5. However a combination of claims 1 + 3 + 5 may not be supported unless that combination is expressly recited in the description. Often claims are drawn from different embodiments or examples so that a combination of them would give rise to an added subject matter objection.
- Added subject matter (”new matter” in US terminology) is a common problem with US originating cases. A previous presentation has covered this topic. We would be happy to send details to you.
DIVISIONAL APPLICATIONS
Currently an EP divisional application can be filed at any time up to the date of grant of the parent. It is common to file a divisional application as a precaution before oral proceedings with the fees paid afterwards if the parent case is refused.
Divisional applications are routinely used in important cases to create prolonged uncertainty for third parties. The EPO cannot be relied on to throw out a bad case every time. Therefore multiple filings can occasionally reap undeserved benefits.
The European Patent Convention does not prevent double patenting. When the Convention was established, it was considered to relate to patent applications and not patents. National patent laws prevent double patenting. Multiple divisional applications are perceived to be a problem. A recent board of appeal decision, T307/03 attempted to deal with the problem but is probably wrongly decided.
NEW RULE 36EPC — Divisional Applications
New Rule 36 EPC governs the filing of divisional applications. This new rule was announced on 3 April 2009. It will come into force on 1 April 2010. This rule is intended to prevent “abusive” divisional applications.
The new rule will require a change in practice and should be noted carefully.
The cut-off date for possible divisional applications will need to be separately calculated and docketed for each case.
Rule 36 (1) and (2) is amended to read as follows:
(1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:
(a) the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division’s first communication in respect of the earliest application for which a communication has been issued, or
(b) the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time.
(2) A divisional application shall be filed in the language of the proceedings for the earlier application. If the latter was not in an official language of the European Patent Office, the divisional application, may be filed in the language of the earlier application; a translation into the language of the proceedings for the earlier application shall then be filed within two months of the filing of the divisional application. The divisional application shall be filed with the European Patent Office in Munich, The Hague or Berlin.(emphasis added).
· Article 82 relates to unity of invention.
· New Rule 36 applies to divisional applications filed on or after 1 April 2010.
· If the time limits provided by Rule 36(1) have expired before 1 April 2010, a divisional application may still be filed within six months, that is by 1 October 2010. If the period is still running on 1 April 2010, they will continue to do so for not less than six months.
· Further processing is not available but restoration may be possible.
Rule 36 will undoubtedly give rise to difficulties. Besides the need to calculate and docket the date for each case following issue of examination reports, there are several interesting questions:
Will the new rule prevent a divisional filing to cover an embodiment excluded by a limiting amendment after two years from the first examination report?
Will it be necessary to provoke an Article 82 (disunity) objection by filing multiple independent claims in order to trigger the period for filing a divisional application?
Can an opportunity for filing a divisional application be created in appeal proceedings?
NEW RULE 137 (4 and 5) EPC – Amendment of the European patent application
Rule 137 is amended to read as follows:
(1) Before receiving the European search report, the applicant may not amend the description, claims or drawings of a European patent application unless otherwise provided.
(2) Together with any comments, corrections or amendments made in response to communications by the European Patent Office under Rule 70a, paragraph 1 or 2, or Rule 161, paragraph 1, the applicant may amend the description, claims and drawings of his own volition.
(3) No further amendment may be made without the consent of the Examining Division.
(4) When filing any amendments referred to in paragraphs 1 to 3, the applicant shall identify them and indicate the basis for them in the application as filed. If the Examining Division notes a failure to meet either requirement, it may request the correction of this deficiency within a period of one month. (emphasis added)
(5) Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept nor may they relate to subject-matter not searched in accordance with Rule 62a or Rule 63.
New Rule 137 formalises the requirement to identify the basis in the application as filed for an amendment. This may give rise to an immediate added subject matter objection after a response has been filed. This may arise if an amendment which is the same as one which was allowable in a corresponding US case has been made.
NEW RULE 161 EPC — Amendment of the application
New Rule 161 was announced on 3 April 2009. This rule will come into force on 1 April 2010. There will be serious consequences for Euro-PCT applicants and especially for their attorneys.
The wording of the new rule is unclear but a senior formalities officer in the EPO has confirmed the intended affect.
Rule 161 (1) and (2) is amended to read as follows:
(1) If the European Patent Office has acted as the International Searching Authority and, where a demand under Article 31 PCT was filed, also as the International Preliminary Examining Authority for a Euro-PCT application, it shall give the applicant the opportunity to comment on the written opinion of the International Searching Authority or the International Preliminary Examination Report and, where appropriate, invite him to correct any deficiencies noted in the written opinion or in the International Preliminary Examination Report and to amend the description, claims and drawings within a period of one month from the respective communication. If the applicant does not comply with or comment on an invitation in accordance with the first sentence, the application shall be deemed to be withdrawn.
(2) Where the European Patent Office draws up a supplementary European Search report on a Euro-PCT application, the application may be amended once within a period of one month from a communication informing the applicant accordingly. The application as amended shall serve as the basis for the supplementary European search.(emphasis added).
· New Rule 161 will apply to cases where a communication under the current Rule 161 has not issued before 1 April 2010.
· Already filed PCT applications designating the EPO as ISA will be affected.
· The EPO has suggested that new Rule 161 will cover all cases in which the EPO is the ISA.
· The EPO have suggested that the rule may be tidied up.
A number of interesting questions arise:
· Do Chapter II amendments meet this requirement?
· What does “comply with” mean?
· New Rule 161 will lead to a major change in practice for cases where the EPO is the ISA. There may be an argument for using another Patent Office, for example the Korean Patent Office, as the ISA.
· One month for a response is not long enough. For example the EPO letter would need to be received by the European attorney, docketed and reported to the instructing US attorney who in turn will need to docket and report the letter to the client, take instructions and then instruct the EP attorney to file a substantive response.
Applicants and their attorneys should be prepared to file a substantive response when entering the EP regional phase. It would be good practice for the attorney responsible for the PCT application (who may not be the same as the attorney responsible for the EP) to seek instructions from his client to prepare a response to be submitted on or shortly after the EP regional phase entry.
The new Rule 161 adds to the need to front load EP prosecution. Early EP examination can benefit cases in other jurisdictions. Filing a substantive response on or after EP regional phase entry will save attorney’s costs and annuities payable to the EPO.
Fixed price prosecution is a more feasible possibility since one will know that an examination response would need to be filed and the case possibly put in order for allowance during a period of one year following regional phase entry. Leaman Browne offer fixed price prosecution tariffs for our clients.