Adjustment to Fee Reductions for Applicants entitled to use an admissible non-EPO language for EPO submissions
The EPC allows for a reduction in fees in certain cases when the applicant is a national or resident of a country where an official language registered with the EPO is not one of the three main EPO languages, English, French and German. This includes all countries where the main language is not one of those three languages, even those countries where English is widely spoken as a second language and commonly used for business, such as the Scandinavian members of the EPC. It also includes Ireland where, although English is an official language for the purposes of the EPC, in Ireland this is in conjunction with Gaelic as a second official language. The use of Gaelic enables the fee reduction to be obtained at the EPO for applicants with Irish residency or nationality.
Under the current EPC any resident or national of a qualifying member state can obtain a 20% reduction in the filing fee, examination fee, opposition fee, appeal fee, fee for petition for review and the fee for limitation or revocation post-grant simply by filing the appropriate documents in the relevant non-EPO language, and then later filing a suitable translation. Often the fee reduction would be small in relation to the translation costs making the process unattractive. One notable exception is in relation to the fee for examination, where the only item that is required to be submitted in the relevant non-EPO language is a sentence requesting examination under Article 94 EPC.
Dehns takes advantage of this reduction for clients entitled to do so since the simple addition of the appropriate sentence to the relevant form provides a saving of up €346 in the examination fee with the current rates. The system relating to this fee reduction is changing significantly from 1 April 2014 when there will be changes to EPC Rule 6 and to the Rules Relating to Fees Article 14. The new fee structure applies to European patent applications filed on or after 1 April 2014 and to international applications entering the European regional phase on or after that date. The list of fees to which the reduction applies has changed. Some applicants previously entitled to the reduction will no longer be able to make use of the fee reduction. Other applicants will be entitled to an increased reduction in fees compared to the prior reduction.
From 1 April 2014 the reduction in fees for use of relevant non-EPO languages will be provided only for the filing fee and the examination fee. No other fees will be reduced and thus the types of fees that can be reduced are considerably fewer than under the previous system. This may not have much practical impact since, as noted above, the main benefit for applicants has often been in relation to the examination fee, where a reduction is still possible.
A more significant change arises from a change in the rules defining who is entitled to claim the lower rate of fees. Previously the reduction was available for any national or resident of a qualifying member state of the EPC. Under the new regime the applicant must also be one of a small and medium sized enterprise, a natural person, a non-profit organisation, a university or a public research organisation. This means that larger companies previously entitled to the reduction may no longer be able to claim it. In relation to small and medium sized enterprises the EPO has adopted the definition used by the European Union in the Commission Recommendation of 6 May 2003 concerning the definition of micro, small and medium sized enterprises. This defines small and medium sized enterprises as being those that employ fewer than 250 persons (as full-time employees or equivalent), which have an annual turnover not exceeding €50 million and also an annual balance sheet total not exceeding €43 million.
In addition to adjusting who can claim the fee reduction, the EPO has also increased the size of the fee reduction. This now stands at 30% of the applicable fee. Thus, in relation to the examination fee this means that the reduction can be as high as €541.50 taking into account the fee increases also being implemented by the EPO from 1 April 2014.
It is important for applicants and their European patent attorneys to establish if they are entitled to this fee reduction. We ask that you keep us informed of any changes that might affect entitlement to the reduction.
It appears that entitlement to the fee reduction should be determined based on the nature of the applicant when fees are paid. The entitlement to pay the fees is assessed based on a simple declaration submitted by the applicant and evidence is not required, unless the EPO has any doubts concerning the voracity of this declaration. In cases of any doubt as to what fees must be paid we suggest that you contact us for advice. If the fees are paid incorrectly (and assuming that this is brought to the attention of the office in some way) then the fee is deemed not to have been paid at all. It is therefore important to ensure that any applicant claiming the refund is entitled to do so. Late payment of the fees with a surcharge would usually be possible using the EPO's "further processing" procedure and since the deadline for this is not set until the Patent Office issue a Notification concerning failure to pay the fee then the time limit for this remedy would only be set once the mistaken payment of the lower rate fee came to light. If the fee was originally paid late using the further processing procedure then re-establishment of rights would be possible provided the applicant pass the "all due care" test and provided re-establishment was requested in time. Once again, this would generally only apply should the mistake come to light. If a fee was mistakenly paid at the lower rate and the application subsequently is granted then it appears that the patent could not later be revoked or opposed on the basis of the mispaid fee since there is no relevant ground of revocation or opposition.