As of April 1, 2009 the EPO has changed their fee structure. Now, an additional fee of EUR 12 for the 36th and each subsequent page of an application is due, wherein the figures, claims and the abstract need to be counted as well. Pages rendering a sequence listing in the proper WIPO standard are not counted. For Euro-PCT applications this additional page fee is calculated on the basis of the corresponding International application as published. For example, a Japanese language publication of a PCT application entering the regional European phase comprises 40 pages description, 9 pages figures, 10 pages claims and one page abstract and bibliographic data. This results in an additional fee of EUR 300 to be remitted as part of the filing fee. If a European application is filed by reference to a previous application the number of pages of the certified copy which has to be provided to the EP application forms the basis for the calculation of the page fee. Applicants can take into account this new fee by amending their templates for patent applications as to condense as much text or information on one application page as possible.
Hence, it is advisable to ideally exploit the formats of application documents as set out in the EPC, i.e. utilizing minimum margins, minimum-size capital letters and 1,5 spaced typing.
Additionally, EPO introduced a flat designation fee of EUR 500 covering all contracting states if the applicant does not withdraw selected states explicitly.
Further, excess claims fees are altered: for each claim from the 16th to 50th EUR 200 are due, and for the 51st and each subsequent claim EUR 500 are to be paid.
As of April 1st, 2010, EPO introduces time limits for the filing of divisional applications.
- Voluntary divisional applications of the applicant will only be allowed within a period of 24 months from the first office action by the EPO examining division in respect of the parent application.
- If during the examination proceedings the EPO examining division issues a notice of non-unity a divisional application can be filed within 24 months. If the examining division issues an other notice based on a different ground of lack of unity a further term of 24 months for filing a divisional application is due.
- The new provisions will immediately apply for all pending applications on April 1st, 2010.
- A grace period of 6 months will allow the filing of voluntary divisionals until October 1st, 2010 regarding already pending applications. Therefore, all pending applications should be studied for eventually filing a voluntary application within this grace period.
A mandatory response to the written opinion issued with the European search report will be introduced by April 1st, 2010. This reply from applicants, required before entering examination, will allow them six months to research and justify any issues raised in the written opinion. For Euro-PCT applications where the EPO was not the International search authority a supplementary European search report is issued to which a mandatory response is required within six months as well. The new regulations will affect European applications where the European search report or supplementary European search report is issued after April 1st, 2010.
For Euro-PCT applications where the EPO was the International search authority no supplementary European search report is issued, and an invitation to respond to the written opinion/international search report drawn up by the EPO will be issued shortly after entry to the European regional phase. The time limit for responding to this invitation is only one month. If no reply is filed in due time, the application will be deemed withdrawn. Therefore, applicants should start preparing comments and/or amendments already before or shortly after entering the regional phase. The new provisions regarding the mandatory reply to the written opinion where the EPO was the International search authority will be applicable to applications where an invitation to amend the claims has not yet been issued by the EPO on April 1st, 2010.
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This information is simplified and must not be regarded as a statement or advice of law or practice.
Author: Dr. Tobias Kleimann