Friday - 23 February 2018

EPO Fee changes from April 2018.

Discontinuation of reduced search fee for many European regional phase applications

The EPO has announced that for applications that enter the European regional phase from 1 April 2018, the 190 EUR reduction in the supplementary search fee if the International Search Report (ISR) was drawn up by the US, Japanese, Korean, Chinese, Russian or Australian patent office, will no longer be available. See here.

Therefore applicants who selected the US, Japanese, Korean, Chinese, Russian or Australian patent office as International Searching Authority (ISA) may wish to consider entering the European regional phase before 1 April 2018, so that the 190 EUR reduction in the search fee is still available.

Expansion of window in which third-year renewal fee can be paid

Rule 51(1) EPC will be amended so that from 1 April 2018, it will be possible to pay the third year renewal fee up to six months before it falls due.  Because the third year renewal fee falls due 24 months after the filing date of the application, this may make it possible for applicants who have filed a PCT application to pay the third year renewal fee upon European regional phase entry.  Applicants can, of course, still pay the third year renewal fee closer to the due date if desired.  Please note that all renewal fees other than the third year renewal fee remain unaffected, and so cannot be validly paid more than three months before their respective due dates. See here.

Change in appeal fee

The appeal fees due at the EPO are also changing.  From 1 April 2018, there will be two levels of appeal fee: See here.

  1. For appellants that are either (a) a natural person, or (b) a small- or medium-sized enterprise, a non-profit organisation, a university or a public research organisation, the appeal fee will remain at 1,880 EUR.  An EPO notice gives guidance as to what is classified as a small- or medium-sized enterprise, a non-profit organisation, a university or a public research organisation. See here. 
  2. For all other entities, the appeal fee will increase to 2,255 EUR.

Other fee changes

There are a number of other amendments to the rules relating to fees that will come into force as of 1 April 2018:

  • The fee for an international search on an international application will be reduced by 100 EUR, from 1,875 EUR to 1,775 EUR;
  • The fee for preliminary examination of an international application will be reduced by 100 EUR, from 1,930 EUR to 1,830 EUR;
  • The reduction in the examination fee due on a European regional phase application for which the EPO drew up an international preliminary examination report will be increased from 50% to 75%.

Proposed introduction of ability to postpone start of examination by three years

The EPO has also launched a consultation on introducing an optional postponement of the start of examination.  This is ostensibly in response to feedback from pharma/biotech companies.  In summary, the intention would be to allow applicants to request a postponement of the start of examination by three years, if the request is filed within six months of supplementary European search or six months from European regional phase entry.  The consultation indicates that the intention is for the new procedure to enter into force on 1 July 2018, and be published in the November 2018 edition of the EPO Guidelines for Examination.  

We will, of course, keep you informed if this new procedure is brought into force.