Changes in the fee structure of the European Patent Office (EPO) which come into effect on April 1, 2009 may have a significant impact on the most effective way in which to prepare a patent application destined for filing in Europe. The fees apply to all new applications filed in the EPO on or after that date and to all Patent Cooperation Treaty (PCT) applications entering the European regional phase after that date.

The changes are as follows:

1) Fees per claim will be set at € 200 for the sixteenth to fiftieth claim and € 500 per claim for each claim
over 50.

2) There will be a fee payable at filing for each page of the application over thirty-five of € 12 per page; and

3) There will no longer be an individual designation fee for each country, but rather a flat designation fee of € 500 to cover all European Patent Convention (EPC) member states. Individual country fees do, however, still have to be paid with respect to any country that is not a member of the EPC to which a European patent may be extended (so-called extension countries)^[1].

Claim Fees

The original EPO claim fee structure requiring a modest excess claim fee for all claims over ten was modified with effect from April 1, 2008 to allow the eleventh to fifteenth claim for free but to impose a much higher excess claim fee for each claim over fifteen. This has been modified again from April 1, 2009 to impose a very much higher fee for each claim over fifty.

Any claim for which the fee has not been paid is deemed to be abandoned.^[2] In cases where no extra claims fees are paid, claims after claim 15 may be deemed abandoned. Where some extra claims fees are paid but are insufficient for all of the claims presented, the EPO will inquire as to the claims for which the fees are being paid. If no reply is received, the fees will be applied to the claims in the order in which they are presented.^[3]

If claims are amended during prosecution so that at grant more claims are present than have been paid for, the excess claim fee must be paid at the time of grant.^[8]

Practice note

The rule change makes it even more important than before to enter the EPO with a set of claims tailored for
European practice. European practice is strict and unforgiving if this is not done. Rule 43(2) provides that a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the subject-matter of the application involves one of the following:

(a) a plurality of inter-related products;

(b) different uses of a product or apparatus;

(c) alternative solutions to a particular problem, where it is not appropriate to
cover these alternatives by a single claim.

Furthermore, if a claim is abandoned because fees have not been paid for it, it will not be searched. As a consequence, Rule 137(4) may preclude refocusing the claims on features that were claimed in such abandoned claims unless a divisional application is filed.^[9]Amended claims
may not relate to unsearched subject matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept.

Finally, it should be noted that the EPO’s position on amendment of claims during prosecution is very strict. Amendment to the claims are permitted only to that which is “directly and unambiguously” disclosed in the original application. This has led for example to refusals to permit amendments to combine features of separate subclaims in situations where each subclaim was initially dependent on claim 1 on the basis that the original application did not disclose the particular combination of features that one now wishes to claim. Similarly there are often problems if one seeks to incorporate a feature described only in a particular example or embodiment into a broad claim. This may be refused on the basis that the feature has only been disclosed in that particular context and has not been taught to be of more general applicability. Such problems can be avoided by use of multiply dependent subclaims or by use of language in the specification that makes it clear that the features in question are generally applicable to all aspects of the invention. But this needs to be done before filing the application.

Fees for Long Applications

For European applications filed before April 1 2009 and PCT applications entering the European regional
phase before April 1, 2009 a publication fee based on the number of pages is imposed as part of the fees for
grant and paid after examination is complete.

For European applications filed on or after April 1, 2009 and PCT applications entering the European
regional phase on or after that date, an excess page fee will be incurred at the time of filing or European regional phase entry. Such fees will be imposed on every page over 35 forming part of the application other than pages forming part of a sequence listing.^[10] Rule 49 sets out the requirements for a “page”.^[11] For non-PCT
applications, the excess page fee is based on the number of pages of description, claims, drawings and one page of abstract. For PCT applications entering the European regional phase, the calculation of the number of pages is based on the international application as published, any amendment under PCT Article 19 and one page for the abstract. However, if amendments are made under PCT Article 34 or upon regional phase entry^[12], these may be taken into account as long as they are available to the EPO at the
time the fee is paid and that fee is paid within thirty-one months of the claimed priority.^[13] Where possible, any amendments being made at regional phase entry should be clearly indicated on EPO form 1200 at the point of regional phase entry. The European regional phase of a PCT application commences thirty-one months from the earliest claimed priority and so amendments may be made before that date in order to reduce the number of pages.

The fee for excess pages must be paid within one month of filing the application. Because the fee
is part of the filing fee, failure to pay it will result in the application being deemed to be withdrawn. ^[14] Should this occur, the EPO will advise
the applicant accordingly. The applicant may then either submit evidence to show that the fee was paid in time or request further processing.^[15]
Such a request must be filed within two months of the notification that the application has been deemed withdrawn^[16] and accompanied by the necessary fees.^[17]

Practice note

The reason given by the EPO for this rule change is explicitly stated as being to reduce the length of applications so as to reduce the amount of reading required by examiners.

From the applicant’s point of view, there are clearly conflicting considerations relating to specification length and number of claims. As noted above, EPO practice on amendment is strict and it is necessary to make sure that there is adequate basis in the specification for anything that one might subsequently wish to claim. Going overboard on reduction of the length of the specification may therefore be counter-productive in the long run. However, there are steps that one can take. Rigorous pruning of unnecessary language is a virtue. Which words are needed and which can be dispensed with is a matter of legal skill and judgment, but is an exercise that is well worthwhile. Repetition of definitions or descriptions in different parts of an application is a waste of words, particularly in the EPO where it is possible to cross-reference the claims in the description. Over elaborate descriptions of the prior art beyond what is necessary to understand the invention add little. Examples can often be tabulated to reduce the number of pages required to set out the necessary information. On the other hand, in view of the EPO’s practice on amendments, a couple of paragraphs setting out intermediate generalizations can sometimes be worth their weight in gold.

If using the PCT, much of this should be done before filing the PCT application. If this is not possible, it may still
be possible to make the necessary adaptations under PCT Article 34 if International Preliminary Examination has been demanded or at the regional stage entry. It must, however, be remembered that amendments at either of these stages will be regarded by the EPO as being subject to its strict rules on amendment so that any amendment that introduces anything that is not directly and unambiguously present in the original application may be refused.

Designation fee

The designation fee will now cover all EPC-member countries for a flat amount. Article 79(3) of the EPC itself , however, still permits withdrawal of a designation of a particular country or countries during prosecution should the applicant wish to do so. The designation fee continues to be payable six months after the publication of the
application. In the case of a PCT application, the PCT publication is taken as the relevant publication and the
fee is therefore due at regional phase entry. Following this change in practice therefore it is no longer necessary to decide the countries of interest at the time of filing or national phase entry and this decision may be deferred until one knows that a patent will be granted. As noted above, however this change does not apply to countries that are not members of the EPC, but to which a European patent can be extended.^[18]

Further information on practice under the European Patent Convention is available in our European Practice Guide which is accessible in the Ladas Exchange portion of our web-site. Clients who do not yet have a user name and password for access to this portion of our web-site may obtain these by contacting Irene Bauer by email.