Fees for European patents are adjusted by the European Patent Office (EPO) every two years. The changes to the fee structure take effect from 01 April of even numbered years. The next set of changes is due to take effect on 01 April 2014. The majority of fees relating to administrative acts will remain unchanged; but fees relating to substantive procedural acts will see the official fees payable to the EPO increase on average by approximately 4.6%.
But what can be done to avoid the fee increases or at least minimise the impact of the adjustments?
- One of the pivotal changes to be introduced is the fee for filing second or subsequent generation divisional applications (a divisional filed from a divisional application). The EPO will repeal the time limit for filing divisional applications on 01 April 2014, meaning a divisional application can be filed from any pending European Application. However, an additional fee will be payable for second or subsequent generation divisional applications. Indeed, the total filing fee for a second generation divisional application will be approximately 64.6% more expensive than the original divisional application. Each generation of divisional will see the additional fee payable incease by 100%.The fee increase can be avoided by filing a divisional application before 01 April 2014.Applicants should also consider that, if a parent application contains more than one invention; additional fees can be avoided by filing multiple divisional applications from that parent application, as opposed to filing sequential generations of divisional applications. Also consider that accumulated renewal fees are payable in respect of divisional applications and the filing of divisional applications before 01 April 2014 will benefit from a reduced cost of accumulated renewal fees.
- The fee for a request for revocation of a European Patent will increase by a substantial 56.7%, but proprietors can circumvent the fee increase if the request for revocation is filed before 01 April 2014.
- As is currently the case, by filing a European or Euro-PCT Application online, a saving of approximately 43% can be made.
- The appeal fee will increase by approximately 33.3% on or after 01 April 2014. Under current and continuing practice, the appeal fee will be refunded if the appeal is withdrawn before filing a statement of grounds. Moreover, to ease the impact of the fee increase, new rules will also see the appeal reimbursed at 50% if the appeal is withdrawn after deadline for filing a statement of grounds but before certain specific events during the written procedure.
- Pay special attention to the fact that the fee for a search on a European Application, including a search on an International (PCT) Application entering the European Regional Phase (Euro-PCT Application), will increase by approximately 9.3%. Thankfully, as is current practice at the EPO, Euro-PCT Applications for which the United States Patent and Trademark Office; the Japan Patent Office; the Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation); the Australian Patent Office; the State Intellectual Property Office of the People’s Republic of China; or the Korean Intellectual Property Office was the International Searching Authority (ISA) qualify for a fee reduction of approximately 16.3%; and so the choice of ISA can help reduce search fees for Euro-PCT Applications. In any case, the fee increase can be avoided by filing a European or Euro-PCT Application before 01 April 2014. Early processing of the Euro-PCT Application is required if the deadline for entering the European Regional Phase occurs on or after 01 April 2014.
- Reducing the total number of pages of the European or Euro-PCT Application will equate to a 6.7% saving in excess pages fees, and reducing the total number of pages to 35 or less will avoid excess pages fees altogether.
- Renewal fees are set to increase by approximately 4.2% on or after 01 April 2014, but can be validly paid up to three months before the due date to avoid the fee increase, meaning that you can start paying renewal fees at the current rates right now.
- International searches and supplementary International Searches carried out by the EPO will not see any fee increases and so applicants can select the EPO as ISA or supplementary ISA (SISA) without any impact on costs.
It is likely, if not inevitable, that fees will continue to increase at the EPO but applicants and proprietors can minimise the impact of fee increases by selectively conducting procedural acts at the EPO before the fee increases are due to take effect. Some of these measures can avoid the fee increases, and some will help to lessen the effect of the increases on budgets and financial accounts alike.