March 2009
On 1 April 2009 the European Patent Office fee structure for filing applications and entering the European regional phase of PCT applications will change. For most applications this will result in an overall increase in fees paid.
There will now be a single designation fee of €500, irrespective of the number of states designated. This replaces the present system of a designation fee of €85 per country up to a maximum of seven countries.
The printing fee for the European patent application will no longer be payable at the grant stage. Instead, for all European patent application filings and European regional phase entries after 1 April 2009, the printing fee must be paid upon filing or entry. The printing fee will be €12 per page over thirty-five (including abstract, description, claims and drawings, but excluding any sequence listing).
For entry into the European regional phase of PCT applications, the printing fee will be based on the published PCT application.
The EPO will allow you to make “substantive” amendments to a PCT application entering the European regional phase and the printing fee will be calculated on the basis of the resulting pages. Unfortunately, the EPO has not yet given clear guidance as to what it means by a “substantive” amendment. They have made it clear that they will not allow amendment solely to avoid paying printing fees (for example changing font size or margins).
Because amendment itself costs money, it will be cost effective to enter the European regional phase before 1 April 2009, if possible if your published PCT application is substantially more than thirty-five pages long.
The excess claim fee for the fifty-first (51st) and each subsequent claim will rise from €200 to €500 per claim. Currently, excess claims fees are payable at €200 each for claims in excess of fifteen (15).
The new single designation fee is greater than the present combined designation fees for five or fewer states. Therefore, if you are looking to file a European patent application or enter the European regional phase for PCT application and wish to designate five or fewer states, then we recommend that you do so before 1 April 2009, irrespective of the length of the specification.
If you wish to designate six states, then the cost of filing the European patent application or entering the European regional phase of a PCT application will be less before 1 April 2009 if there are thirty-six or more pages. If you wish to designate six states and the application has thirty-five pages or fewer, then the cost of filing the application or entering the European regional phase will be €10 less if you file after 1 April 2009.
If you wish to designate all available states, then it will be cheaper to enter the European regional phase before 1 April 2009 if the specification contains forty-three or more pages. However, if the specification has forty-two or fewer pages, we recommend that you defer filing the European patent application or entering the European regional phase until after 1 April 2009.
If you want to defer entering the European regional phase of the PCT application until after 1 April 2009, and that application has more than thirty-five pages, we strongly recommend that you let us have your instructions, together with a copy of the specification in Word, well before the deadline. This will allow us time to review the description and recommend how we might redact the description, in a cost effective manner, to save fees.
Very few European patent applications or European regional phase applications have more than fifty claims. Therefore, the claims fee increase will rarely have any practical effect.
We recommend that you review all potential European patent application filings and European regional phase applications that you are contemplating for the foreseeable future. We recommend that you use the above guidance to estimate whether it would be cost effective to file or enter the European regional phase of the application before 1 April 2009.
Early entry into the European regional phase will not advance the European Patent prosecution (without a specific request to the European Patent Office). Therefore, early entry into the European regional phase will not automatically affect the timing of the prosecution of the application.
If you are considering filing a European patent application after 1 April 2009, we strongly recommend that you review the specification and, if it is more than thirty-five pages long, you look to reduce the length of the specification as far as possible to reduce the printing fee. However, any reduction of the specification that you contemplate must be carefully considered in the knowledge that the European Patent Office will not allow any subject matter to be added to the application after you have filed it.
As a matter of course, we review the claims of all proposed European patent applications and PCT applications for entry into the European regional phase with a view to reducing the number of claims and, therefore, claims fees, if possible. If you entrust such a filing or entry into the European regional phase to us, we will review the claims briefly and advise you if we believe that they can be reduced to save claims fees. Because the claims fees are now so substantial, any reduction in the claims fees is cost-effective because the time spent amending the claims to reduce them will cost less than the claims fees saved.
This information has been prepared for clients of Forresters. It sets out the present positions, as presently understood, on the basis of the latest information available, from various sources, but it must not be relied upon and does not constitute legal advice. No liability will be accepted for any errors or omissions. Detailed advice should always be requested with regard to specific circumstances of any particular case, or issue, in any jurisdiction.