Fees in proceedings before the European Patent Office

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The fees due at the European Patent Office (EPO) in relation to a European patent application are laid out in the Rules relating to Fees of 20 October 1977, as adopted by decision of the Administrative Council of the European Patent Organisation of 7 December 2006 and as last amended by decision of the Administrative Council of 12 December 2018.

Contents

Renewal fees

Renewal fees are payable to the EPO in respect of pending European patent applications in respect of the third year from the date of filing. [1] These fees are paid in advance of the year in which they are due (such that the renewal fee for the third year falls due two years from the date of filing) and fall due on the last day of the month containing the anniversary of the date of filing. [2] Renewal fees may not be validly paid more than three months before they fall due, except for the renewal fee in respect of the third year which may not be paid more than six months before it falls due. [3]

If a renewal fee for a European patent application is not paid in due time, the renewal fee may still be validly paid within six months of the due date, provided that the additional fee provided by Rule 51(2) EPC is also paid within the six-month period. [4] For the calculation of the six-month additional period, the so-called de ultimo ad ultimo rule is applied by the EPO. [3] According to this rule, the six-month period runs "from the last day of the month to the last day of the month". [5] For instance, if a renewal fee was due in February 2004, the additional fee fell due on August 31, 2004 (Tuesday), i.e. six months from the end of February 2004.

The obligation to pay renewal fees terminates with the payment of the renewal fee due in respect of the year in which the mention of the grant of the European patent is published. [6] Subsequently, renewal fees are payable to the national offices of the EPC Contracting States in which the European patent is brought into effect. Each Contracting State then pays the European Patent Organisation a proportion of each renewal fee received for a European patent in that State. [7]

Whereas for a pending European patent application an applicant must pay a single maintenance fee at the EPO, it may be much more costly to pay several maintenance fees to the several national patent offices for maintaining a granted European patent in a number of countries. This however depends on the number of countries in which the patent proprietor wants to maintain its European patent into force. [8] [9]

Refund

Under certain circumstances, such as following the withdrawal of a European patent application or the withdrawal of an appeal, some fees that were paid may be refunded. This is true for search fees, [10] the examination fee, [11] and the appeal fee. [12]

Fee structure

The fee structure "does not necessarily reflect the actual workload imposed on the EPO in any individual case. Rather, legislators have chosen lump sums as fees that are for example independent of the number of auxiliary requests to be decided or the days allowed for conducting oral proceedings." [13]

Related Research Articles

European Patent Office

The European Patent Office (EPO) is one of the two organs of the European Patent Organisation (EPOrg), the other being the Administrative Council. The EPO acts as executive body for the organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative body. The actual legislative power to revise the European Patent Convention lies with the Contracting States themselves when meeting at a Conference of the Contracting States.

European Patent Convention International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application. When filing the subsequent application, the applicant must claim the priority of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.

The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention (EPC) as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007.

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

There are two provisions in the regulations annexed to the Patent Cooperation Treaty (PCT) that relate to the search and examination of patent applications concerning computer programs. These two provisions are present in the PCT, which does not provide for the grant of patents but provides a unified procedure for filing, searching and examining patent applications, called international applications. The question of patentability is touched when conducting the search and the examination, which is an examination of whether the invention appears to be patentable.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

In most patent laws, unity of invention is a formal administrative requirement that must be met by a patent application to become a granted patent. Basically, a patent application can relate only to one invention or a group of closely related inventions. The purpose of this requirement is administrative, as well as financial. That is, the requirement serves to preclude the option of filing one patent application for several inventions, while paying only one set of fees. Unity of invention also makes the classification of patent documents easier.

The European Patent Bulletin is a weekly trilingual publication of the European Patent Office (EPO), generally issued every Wednesday. It contains "entries made in the Register of European Patents, as well as other particulars, the publication of which is prescribed by [the European Patent Convention (EPC)] or its implementation".

The European Patent Convention (EPC), the multilateral treaty providing the legal system according to which European patents are granted, contains provisions regarding whether a natural or juristic person needs to be represented in proceedings before the European Patent Office (EPO).

Maintenance fees or renewal fees are fees paid to maintain a granted patent in force. Some patent laws require the payment of maintenance fees for pending patent applications. Not all patent laws require the payment of maintenance fees and different laws provide different regulations concerning not only the amount payable but also the regularity of the payments. In countries where maintenance fees are to be paid annually, they are sometimes called patent annuities.

This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

Grant procedure before the European Patent Office

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

In European patent law, the limitation and revocation procedures before the European Patent Office (EPO) are post-grant, ex parte, administrative procedures allowing any European patent to be centrally limited by an amendment of the claims or revoked, respectively. These two procedures were introduced in the recently revised text of the European Patent Convention (EPC), i.e. the so-called EPC 2000, which entered into force on 13 December 2007.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.

Article 83 of the European Patent Convention (EPC) relates to the disclosure of the invention under the European Patent Convention. This legal provision prescribes that a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Under Article 82 EPC, a European patent application must "...relate to one invention only or to a group of inventions so linked as to form a single general inventive concept." This legal provision is the application, within the European Patent Convention, of the requirement of unity of invention, which applies also in many other jurisdictions.

During the grant procedure before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC out of pending earlier European patent applications. A divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the earlier application, unless specific provisions in the European Patent Convention (EPC) require something different. A divisional application, which is divided from an earlier application, cannot be broader than the earlier application, neither in terms of subject-matter nor in terms of geographical cover.

Under the European Patent Convention (EPC), a petition for review is a request to the Enlarged Board of Appeal of the European Patent Office (EPO) to review a decision of a board of appeal. The procedure was introduced in Article 112a EPC when the EPC was revised in 2000, to form the so-called "EPC 2000". A petition for review can essentially only be based on a fundamental procedural defect. Its purpose is not to obtain a reconsideration of the application of substantive law, such as points relating to patentability. The petition is a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. Before the entry into force of the EPC 2000 in December 2007, it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds.

The unitary patent for Switzerland and Liechtenstein is a patent having a unitary character over the territories of Switzerland and Liechtenstein. It can either be a national patent, or a European patent granted under the European Patent Convention (EPC) and having a unitary character pursuant to Article 142(1) EPC. The unitary patent "may only be granted, transferred, annulled or lapse in respect of the whole territory of protection," i.e. for both Switzerland and Liechtenstein.

References

  1. ↑ Article 86(1) EPC
  2. ↑ Rule 51 EPC (previously Rule 37 EPC 1973).
  3. 1 2 Guidelines for Examination in the EPO , section a-x, 5.2.4 , "Renewal fees". (Reflecting the changes to Rule 51(1) EPC as of April 1, 2018).
  4. ↑ Rule 51(2) EPC (previously Rule 37(2) EPC 1973)
  5. ↑ Decision J4/91 of October 22, 1991, Legal Board of Appeal 3.1.1 of the European Patent Office. Published in OJ 8/1992, 402.
  6. ↑ Article 86(4) EPC
  7. ↑ Article 39 EPC
  8. ↑ Article 2.1(4) RFees
  9. ↑ "Payment of renewal fees for European patents". National Law relating to EPC. European Patent Office (EPO). Retrieved 15 December 2019.
  10. ↑ Article 9 RFees
  11. ↑ Article 11 RFees
  12. ↑ Rule 103 EPC
  13. ↑ Decision T 2017/12 , Reasons 2(Board of Appeal of the EPO 3.5.0624 February 2014).
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