European patent fees to increase

With effect from 1 April 2014, many European Patent Office (EPO) official fees will increase. On the whole the increases are of the order of 4 to 5%, but some fees will increase more significantly. The fee increases apply for payments made as from 1 April, so it is the payment date rather than the fee’s due date that is key.

It is now standard EPO procedure to review its fee structure every two years, so the fact that there are fee changes is not unexpected. In addition, the level of increase for most fees, such as renewal fees, is of the same order of magnitude as in previous reviews.

However, the fee for a European search (or supplementary European search) is going up by a more significant amount, with a 10% increase from 1165 to 1285 Euros.

Notably, there is also a 50% increase in the appeal fee, with that going from 1240 to 1860 Euros.  There have been increasing backlogs for cases before the boards of appeal in recent years and therefore it might be that the EPO hopes a higher fee will put off the filing of more speculative appeals, especially those filed with the main aim of keeping a case pending.

Interestingly, on this point, the EPO has also made a decision that appeal fees will, in certain circumstances, be refundable at a 50% level where a pending appeal is withdrawn. This change in practice will take effect from 1 April 2014. At the moment appeal fees are only refunded (in full) for appeals where the grounds of appeal are not filed in time. It seems that the EPO is hoping that having a refund of the appeal fee available will make applicants more likely to withdraw appeals that are no longer of interest, therefore freeing up capacity at the boards of appeal for clearing the backlog. At the moment there is little incentive for applicants to withdraw an appeal, unless they decide they do not want an adverse decision to issue, and so many unwanted appeals continue by the applicant allowing the board of appeal to make a decision on the written papers.

The new fee schedule also includes additional fees for second and later generation divisional applications, i.e. divisional applications that are themselves divided out from a divisional application. First generation divisionals, namely divisional applications where the parent case is not itself a divisional, are unaffected.

As reported last autumn, from 1 April 2014 the EPO will revert to the rule that an applicant can file a divisional application so long as the parent application is still pending.  The new fee schedule is aimed to discourage applicants from filing divisionals from divisionals in a long chain purely for the purpose of keeping an application pending. The additional fees will be supplemental to the regular filing fee, and increase depending on how many generations of divisionals there are.  The additional fee for a second generation divisional application is 210 Euros, for a third generation is 420 Euros, for a fourth generation is 630 Euros and for a fifth (or higher) is 840 Euros.

Therefore if applicants have a case where they can currently validly file a second and/or later generation divisional application, because their two-year divisional window is still open, they should consider submitting them before 1 April to avoid the extra fees. However, many applicants will have cases where the possibility of filing divisional applications out of cases that are themselves divisionals expired some time ago, under the current harsh regime, and for them it will only be possible to file the divisionals when the law change takes effect on 1 April. Nonetheless, the fact that the extra fees are not too onerous will certainly be a relief.

Finally, it is worthwhile bearing in mind that the EPO fees are payable at the rate that applies on the date of payment, rather than the rate on the fee’s actual due date. Therefore where applicants have matters that are known to be required and that fall due on or after 1 April, e.g. new filings or exam fee deadlines, they may wish to consider ensuring that these matters are progressed early, before 1 April, so as to take advantage of the current lower fees.

In this regard, we would highlight that it is possible to validly pay renewal fees up to three months in advance. Therefore renewal fees that are due to the EPO in April, May or June can be paid before 1 April to avoid the fee increases.

Please do contact your usual Barker Brettell patent attorney for advice on suitable strategies for your European patent cases that can be used to avoid the fee increase.