A revised system for language-related fee reductions pursuant to Rule 6 EPC was introduced by the EPO on 1 April 2014. Under the previous system, applicants of EPC countries having an official language (admissible-non-EPO language) other than English, French or German were entitled to certain fee reductions irrespective of their size. The revised system is designed to support small applicants by limiting the size of companies eligible for fee reductions. Under the revised system, the reduction is increased from 20% to 30% and applies only to the filing and examination fee, and the applicant must be in one of the following categories:
- small and medium-sized enterprises (SMEs),
- natural persons,
- non-profit organisations, universities and public research organisations.
The EPO uses the definition of small and medium-sized enterprises as that defined in the European Commision Recommendation 2003/361/EC of 6 May 2003. The category of small and medium-sized enterprises is made up of enterprises which employ fewer than 250 persons, which have an annual turnover not exceeding EUR 50 million and/or an annual balance sheet total not exceeding EUR 43 million and for which no more than 25% of the capital is held directly or indirectly by another company that is not an SME.
Since Irish is an admissible non-EPO language, Irish applicants which meet the category requirements are entitled to reduced fees despite the fact that Ireland is the only English-speaking country in the Eurozone. The other admissible non-EPO languages include Albanian, Bulgarian, Croatian, Czech, Danish, Dutch, Estonian, Finnish, Greek, Hungarian, Icelandic, Italian, Latvian,Lithuanian, Luxemburgush, Macedonian, Maltese, Norwegian, Polish, Portuguse, Romanian, Serbian, Slovakian, Slovenian, Swedish, and Turkish.
The revised system applies to European patent applications filed on or after 1 April 2014, and to international applications entering the European phase on or after that date. The reduction available is 30% of the filing fee and examination fee. In particular, the 30% reduction of the examination fee is significant as it amounts to €540. Where the European Patent Office has drawn up an international preliminary examination report, the examination fee can be reduced by 50%.
Applicants that wish to benefit from the reduction in the filing or examination fee must expressly declare that they are eligible. The request for grant form includes pre-printed boxes where the request for examination in an admissible non-EPO language and the declaration can be made by simply ticking the appropriate boxes on the form and including the appropriate examination request in an admissible non-EPO language. For example, the appropriate request for examination in Irish is “Iarrtar leis seo scrúdú an iarratais de bhun Airteagal 94.” The remainder of the form may be in English and all other documents relating to the examination proceedings may be provided in English.
The revised system is based on trust, which means that typically the EPO will grant the fee reduction by virtue of applicant’s declaration of entitlement. However, the EPO will carry out random checks to confirm eligibility. If it turns out that the applicant was not eligible, the reduced fee will be deemed not to have been paid and the application will be deemed withdrawn. The Applicant has the option to remedy the loss of rights by requesting further processing subject to paying the underpayment and the further processing fee.
The EPO will only conduct random checks while the application is pending. The EPO will no longer check eligibility after the application has granted or require the patentee to provide evidence to that effect. Importantly, if a deficiency in the declaration is discovered after grant, it will not affect the validity of the granted European patent.
In view of the fact that more and more international companies are filing their European applications in the name of Irish subsidiaries to avail of Ireland’s favourable tax regime, it is possible that at least some of these companies meet the small and medium-sized enterprise criteria which would allow them to avail of the reduced fees at the EPO. Accordingly, if your company has their principal place of business within a country such as Ireland having an official language other than English, French or German and falls within the definition of small and medium-sized enterprises as defined by the European commision, your company may be entitled to reduced filing and examination fees when filing patent applications at the EPO. It is therefore important that companies discuss with their European patent attorney whether they are eligible for fee reductions at the EPO.