New EPC Provisions: Payment of Renewal and Search Fees for Supplementary EU Search

By: Yann Gloaguen

Two provisions of the European Patent Convention (EPC) will come into effect on April 1st 2018. The first provision affects payment of the 3rd year renewal fee, the second provision affects the fee for the supplementary European search with some PCT applications.

1.1. European patent application renewal fees  must be paid annually to the European Patent Office (EPO) starting from the second year from the date of filing, at which time the 3rd year renewal fee is due, until the application is granted. Subsequent renewal fees are due at the national level in each validation country. Until now, each renewal fee due to the EPO could be paid in advance of the deadline, but no more than 3 months before the due date, i.e., no more than 3 months before the end of the month in which the anniversary date of filing falls. The New Rule 51 EPC changes this limit, but only with respect to the renewal fee of the 3rd year; the applicant can now honor this fee no more than 6 months before it is due, if he wishes. This amendment offers a wider window for applicants willing to avoid any increase of the 3rd renewal fee by paying this fee in advance of the increase. The new rule applies to any European patent applications for which the 3rd year renewal fee is paid on or after April 1st, 2018.

1.2. The second provision addresses another type of fee, namely the search fee, due upon entry into the European regional phase of PCT applications. The International Searching Authority (ISA) is chosen among the group consisting of: the Australian Patent Office, the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Russian Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation), the United States Patent and Trademark Office (USPTO) or the State Intellectual Property Office of the People’s Republic of China (SIPO). For these Euro-PCT applications, the search fee due for a supplementary search performed by the EPO, currently amounting to EUR 1300, would be reduced by EUR 190.

The decision of the EPO Administrative Council, rendered on December 13th, 2017, now cancels the search fee reduction. A transitory provision provides that, if within October 1st, 2018, the  fee for the supplementary European search report is paid in due time, but at a reduced rate, the search fee will be deemed to have been validly paid if the deficit (i.e., EUR 190) is paid within 2 months of an invitation from the EPO.

PCT applicants who wish to enter the European phase might want to consider choosing the EPO as the ISA when their Receiving Office gives them this option, as may be the case for U.S., Japanese or Russian applicants, or, when this is not the case, by designating their European subsidiary or branch, as co-applicant of the PCT application. In this manner, they would benefit from the quality of the search performed by the EPO as ISA, and avoid costs associated with entering the European phase, since no search fee would be due to the EPO. Also, any patentable subject-matter identified in the ISA Written Opinion issued by the EPO could be used as a basis for requesting that the application be processed under the PPH pilot programme in China, Japan, Korea, the US, Australia, Brazil, Colombia, Malaysia, the Philippines, Russia, the Eurasian Patent Office, Canada, Israel, Mexico and Singapore.