The EPO's Administrative Council has now decided on changes in official fees which will come into force on 1st April 2018. Some of these changes are relevant to PCT applications, some are relevant only to PCT applications that enter the Regional Phase at the EPO, whereas others are also applicable to direct European filings. In previous years, the EPO has simply increased its official fees in line with inflation. However, this year, the EPO is changing its official fees in an attempt to better reflect their administrative overheads at various stages of the European Regional Phase process, as well as including an emphasis on incentives intended to move towards implementing a fully digital patent process for all European patent applications. Notably, renewal fees (annuities) are not being increased.
So what will change?
For PCT applications filed using the EPO as Receiving Office and/or International Searching Authority (ISA) on or after 1st April 2018:
- A reduction of €100 will be made to international search, supplementary international search, and preliminary examination fees.
- There will be a reduction in the transmittal fee if the application is submitted in character-coded (XML/DOCX) format, once technical means required to implement XML/DOCX filings become available at the EPO*.
For PCT applications entering the European Regional Phase on or after 1st April 2018:
- If a Demand has been filed during the International Phase and an International Preliminary Examination Report has been prepared by the EPO, the reduction in the subsequent Examination fee (payable upon entry into the Regional Phase) will now be 75%, as opposed to the current 50% reduction. With the examination fee currently set at €1825, this represents a saving of €456.
- On the other hand, there will no longer be a reduction in the European search fee where the international search was performed by any of the following:
- 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)
- Australian Patent Office
For all European Patent Applications filed or pending on or after 1st April 2018:
- The filing fee will be reduced for European patent applications and divisionals filed direct at the EPO, where they are filed online in character coded (XML/DOCX) format. The filing fee will also be reduced for Euro-PCT applications where the application form, PCT specification (or translation, if required), and any amendment are all filed online in character coded (XML/DOCX) format. We understand that it may be possible to file XML/DOCX versions of PCT specifications and obtain the fee discount, even if the PCT specification was filed in PDF format. This fee discount will only be available once technical means required to implement XML/DOCX filings become available at the EPO and secondary legislation (a decision from the President of the EPO) has been issued
For applications not filed online, or applications filed online but with more than one document (e.g. specification and amendments) not in character coded (XML/DOCX) format, the filing fee will increase to EUR250.
- The grant fee will also be reduced by EUR100 where all amendments and corrections of the application, if any, and the translation of the claims are filed online in character-coded (XML/DOCX) format. Again, this is subject to the technical means becoming available and secondary legislation being issued*. Conversely, starting 1st April 2019 the fee for grant will increase by EUR100 for applications which do not qualify for the discount.
- Appeal fees will increase from €1880 to €2255 to better reflect the cost to the EP of administering the Appeal process.
What does this mean for applicants?
These changes are likely to affect you if:
- You plan to apply for a European patent application (or enter the Regional Phase at the EPO) on or after the 1st April 2018;
- You plan to file a PCT patent application using the EPO as Receiving Office on or after 1st April 2018;
- You expect to make subsequent submissions that include payment of official fees on any pending European applications on or after the 1st April 2018;
- You have a pending International (PCT) patent application that designates (or will designate) any of the following as the International Search Authority
- United States Patent and Trademark office (USPTO)
- Japanese Patent Office
- Korean Intellectual Property Office
- Chinese Intellectual Property Office
- Federal Service for Intellectual Property (Russian Federation)
- Australian Patent Office
and you intend to enter the Regional Phase at the European Patent Office;
- You expect to file an appeal (either as part of the Examination process or in response to a decision on an Opposition) on or after 1st April 2018.
What should I do?
- Once technical means required to implement XML/DOCX filings become available at the EPO*, file PCT and European patent specifications, translations of PCT applications into an EPO official language, amendments and claims translations in XML/DOCX format (for example, using the EPO's PatXML add-on to MS Word) rather than as PDFs
- If you have a PCT application pending where (a) a demand for international preliminary examination has been filed with the EPO, and (b) the 31 month deadline is 1 April 2018 or later, enter the European regional phase on or after 1 April 2018 for an additional discount to the examination fee
- For currently pending PCT applicants where the USPTO, JPO, KIPO, SIPO, Rospatent, or Australian Patent Office are the ISA, enter the European regional phase before 1 April 2018 to avoid the €190 increase in the supplementary European search fee
- If you are planning on filing an appeal (either as part of the Examination process or in response to a decision on an Opposition), consider doing it before 1st April 2018 in order to avoid the fee increase
If you’d like to discuss these changes with us, please get in touch with your usual Wynne-Jones contact, who will be happy to answer any questions you may have.
* The EPO have advised us in relation to the filing of documents in character coded (XML/DOCX) format that “The acceptable XML formats and the further conditions will be laid down in a decision of the President of the EPO under amended Article 2(3) RFees. After 1 April 2018, once the technical means required to implement DOCX filing are available, this decision of the President will enter into force accordingly”.