The EPO's Administrative Council has approved various official fee changes (Decision CA/D 16/17 & Decision CA/D 17/17) and these changes will come into force on 1 April 2018.
These EPO fee changes go beyond the yearly inflation-based fee adjustments and will impact three general areas:
- fees for PCT applicants with the EPO as Receiving Office and/or International Searching Authority (RO/ISA) or for European Regional Phase entry;
- providing fee incentives to encourage filing in character-coded format (XML/DOCX); and
- achieving a better cost coverage for appeals.
These official fee changes aim to better reflect the EPO administrative overheads, as well as encouraging more applicants to use electronic filing for all European patent applications. Applicants will be pleased to note that there are no changes made to the EPO annual maintenance fees/renewal fees in the new EPO fee schedule. However, it will be possible to pay the 3rd year annual maintenance fee up to 6 months early to facilitate early payment of the 3rd year annual maintenance fee on EPO Regional phase entry from a PCT application.
For PCT applications filed using the EPO as RO/ISA on or after 1 April 2018:
- The international search fee will be reduced to €1775 from €1875;
- If a PCT application is submitted in character-coded (XML/DOCX) format, the standard transmittal fee of €130 will not be payable.
EUROPEAN REGIONAL PHASE ENTRY
For PCT applicants with the EPO as ISA/IPEA, when entering the European Regional Phase on or after 1 April 2018:
- A 75% discount (presently 50%) in the European examination fee will be offered where PCT Chapter II International Preliminary Examination by the EPO has occurred. This change will result in a saving of over €450 on filing at the EPO, when the EPO was the International Search Authority (ISA).
- This change will make PCT Chapter II a more cost-effective route.
For PCT applicants entering the European Regional Phase, the EPO search fee reduction available to applicants where the international search was performed by any of the following Patent Offices will no longer be available on or after 1 April 2018:
- United States Patent and Trademark Office (USPTO);
- Japanese Patent Office (JPO);
- Korean Intellectual Property Office (KIPO);
- Chinese Intellectual Property Office (SIPO);
- Federal Service for Intellectual Property (Russian Federation) (Rospatent); and
- Australian Patent Office.
Thus, effectively, EPO search fees for PCT-EP Regional phase filings will increase by €190 if the International search was carried out by any of the above Patent Offices.
For all European Patent Applications filed or pending on or after 1 April 2018:
- These fee changes provide for reduced fees relating to the EPO filing fees and grant fees where the necessary documents are ‘filed online and in character-coded format’ i.e. (XML/DOCX format). After 1 April 2019, the EPO intends to introduce fee penalties where the documents are not ‘filed online and in character-coded format’ i.e. (XML/DOCX format).
- The Appeal fee for filing an appeal will increase from €1880 to €2255.
Practical Advice to Applicants
- For pending PCT applicants where the USPTO, JPO, KIPO, SIPO, Rospatent, or Australian Patent Office are the ISA, consider instructing us to enter the European regional phase before 1 April 2018. This will avoid having to pay the increase in the supplementary European search fee of €190 to the EPO;
- Ensure that you provide us with any PCT and European patent specifications and related documents (such as English translations of PCT patent specifications and English translations of amendments) in the required EPO character-coded format XML/DOCX format; and
- To avail of the lower appeal filing fee, ensure any examination or opposition appeal is filed before 1 April 2018.
If you would like to discuss any aspect of law and practice before the EPO including these fee changes with us, please get in touch with any of our Hanna Moore + Curley patent attorneys.