Part IV. Fees payable on entering the European regional phase. Republication of the international application in an EPO official language

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1 IV.7.5. Republication of the international application in an EPO official language PCT publication in EPO language Art.153(3) EPC The international publication of a Euro- PCT application in an official language of the EPO shall take the place of the publication of the EP application and shall be mentioned in the European Patent Bulletin. Since in these cases the International publication takes the place of the EP publication, these applications are not subject to other publications in the European phase. Re-publication of translation Art.153(4) EPC If the Euro-PCT application is published in another language, a translation into one of the official languages shall be filed with the EPO [within 31 months of the filing date, or priority date if claimed R159(1)(a) EPC]. Art.153(4) EPC The EPO shall publish this translation. Where the International application was published in a language other than an EPO language, a translation must always be filed by the applicant at the EPO according to Art.153(4) EPC and R159.1(a) EPC. (See "IV.7 - Furnish a translation of the application"). The text of this translation is re-published by EPO after entry in the European phase. Effects on provisional protection Art.153(4) EPC Subject to Art.67(3) EPC, the provisional protection under Art.67(1) EPC and Art.67(2) EPC, shall be effective from the date of that publication. With regard to the effect of the republication of the translation on the provisional protection in the EPC, see the sections - "II Rights conferred by International publication" and - "II Steps necessary at the EPO". IV.8. IV.8.1. Fees payable on entering the European regional phase Fees - general remarks Fees due upon entry in European phase When the International application enters the regional phase before EPO the following fees become due to the EPO: - filing fee* - designation fee(s)**/*** - examination fee*** - renewal fees - supplementary search fee (if applicable) - claims fees (where applicable). Each of the fees listed above will be dealt with in detail in the following sections. * For applications entering the EP phase on or after the filing fee includes an additional fee for applications comprising more than 35 pages, ** For applications entering the EP phase on or after a single designation fee is due covering the designation of all EPC states. *** According to R39(1) EPC and R70(1) EPC respectively the designation and examination fees are due within 6 months of publication of the International search report (since this replaces the European search report - Art.153(6) EPC), however, the 31 month period under R159(1) EPC takes precedence if it expires later. If these 6 month time limits expire later than 31 months after the priority (or filing date if no priority is claimed) because the International search report was prepared and published very late, then these take precedence over the 31 month period under R159(1) EPC. Note that the amount, applicability and even the structure of fees charged by the EPO has recently changed a number of times and will probably change again in the near future (see the increased amounts of fees and expenses applicable as from , fixed by decisions of the Administrative Council - OJ 2009, 587 and OJ 2009, 593). Readers are thus advised to refer to the latest schedule of fees published by the EPO (e.g by referring to the internet site) in order to determine which fee is applicable at a certain date. New fee structure as from OJ 2009, 118 On a new fee structure entered into force at the EPO Peter Watchorn & Andrea Veronese 293

2 Essentially, the following changes were introduced: (1) A two tier system of claims fees: a 200 Euro fee is due for each claim from the 16 th up to the 50 th and a 500 Euro fee is due for the 51 st and each subsequent claim. (2) An additional fee for applications comprising more than 35 pages, as part of the filing fee. (3) A flat rate designation fee which covers the designation of all designated states. (4) A flat rate fee for grant [at the grant stage this used to include an additional fee per page, but this is now paid at the filing stage] (5) A reduction of the period for advance payment of the renewal fee from 1 year to 3 months. Further amendments / renumbering as from OJ 2009, 587 The rules relating to fees are amended with effect on In particular, the amount and numbering of the fees referred to in Rfees 2 is changed: For example, old Rfees 2.1 EPC becomes Rfees 2(1).1 EPC and Rfees 2.2 becomes Rfees 2(1).2 EPC. With this new numbering the following fees are those due for applications for which the old fee structure applies [these applications which entered the European phase before ]. Rfees2(2).3 EPC Designation fees for up to seven states Rfees2(2)3a EPC Designation fee for CH/LI Rfees2(2).7 EPC Fees for grant* Rfees2(2).15 EPC Claims fees * The grant fee for applications under the old fee structure still includes an extra payment for pages over and above 35, because this is not part of the filing fee for such applications. For applications under the new fee structure this additional fee is part of the filing fee and so is no longer payable on grant. For Euro-PCT applications the new amounts apply for payments made on or after Transitional provisions concerning new fee structure in force as of OJ 2009, 118 Transitional provisions apply concerning the changes 1-4 mentioned above, and the following three following situations may arise: 1 Applications for which the 31 month period of R159(1) EPC expires before are not subject to the new fee structure. This also applies to any claims fees paid within a period under R162(2) EPC expiring after [i.e. if the applicant pays claims fees late in the European phase under R162(2) EPC, but the 31 month period expired before ]. 2 Applications for which the 30 month period cf Art.22 PCT expires before and the 31 month period cf R159(1) EPC expires after that date are subject to the old fee structure if, before the applicant: - pays the old filing fee cf Rfees 2.1 EPC, [now Rfees 2(2).1 EPC] [warning: if the automatic debiting procedure is requested, this fee would be paid at the end of the 31 month R159(1) EPC period, i.e. too late!] - files the translation cf A.153(4) EPC. Failure to perform the aforementioned acts causes the new fee structure to apply. 3 For applications for which the 30 month period cf Art.22 PCT expires on or after , the old fee structure only applies if the applicant. - requests early processing of the application cf Art.23 PCT or Art.40 PCT before and - performs all acts prescribed in R159(1) EPC before this date. [warning: the automatic debiting should not be requested, otherwise due fees would be paid after , i.e. too late! Another means of payment should be used]. - the payment of claims fees within this date is not a requirement for entering the european phase (it is not in the list of acts of R159(1) EPC, and can be done later. For more information concerning early entry in the European regional phase, see sections IV.1.2 and for the acts necessary to achieve this see IV.2. No transitional period for renewal fees OJ 2009, 118 The three month advance period for payment the renewal fee is applicable as from , irrespective of the date on which the International applications enters the European phase. Transition and fail-safe provisions. OJ 2009, 118 Applicants must consider that the fail-safe provisions of RFees 7(3) EPC and Peter Watchorn & Andrea Veronese

3 RFees 7(4) EPC and Point 6.8 ADA apply only to the expiry of a time limit and not to the transition from the old to the new system. This means that, unless a time limit expires on , applicants may not rely on the fail-safe provisions to have a payment considered duly made before the entry in force of the new fee system. Who may pay fees to EPO Euro-PCT Guide 308 & L6/91 Fees may be validly paid to the EPO by any person. Consequently payments may be made by persons other than the applicant and his representative. Also, there are no restrictions on residence/nationality/place of business. L6/91 However, correspondence concerning particulars of payments under RFees 7 EPC [now RFees 6 EPC] may only be made with the party concerned, or with his representative. Also, refunds of fees/other sums are made to the party concerned or to the representative authorised to receive payments. Methods of payment / Currency RFees 5(1) EPC The fees due to the EPO shall be paid in Euro: - by payment or - by transfer to a bank account held by the Office. RFees 7(1) EPC The date on which the payment is considered to have been made is the date on which the amount of the payment or of the transfer is entered in a bank account held by the EPO. For fail-safe provisions concerning the date on which the payment is considered to be made see RFees 7(3) EPC, RFees 7(4) EPC and OJ Suppl. 3/2009, Point 6.8 ADA. Rfees 5(2) EPC The EPO President may allow other methods of paying fees than those specified in RFees 5(1) EPC. OJ Suppl. 3/2009 Arrangements for Deposit Accounts [ADA]: These deposit accounts are kept at the EPO headquarters in Munich. Essentially, in order to make payments, the account holder has to file a written, signed debit order [see Point 6.2 ADA] or else transmit it by facsimile (no confirmation is required) or on-line [epoline]. - The debit order must contain the particulars necessary to identify the purpose of the payment and must indicate the account number which is to be debited (see Point 6.3 ADA). - The date of payment is the date on which the debit order is received at the EPO. The account holder keeps the account in credit and asks the EPO to deduct fees from it. Payment is effected by the submission of a written debit order signed by the account holder. OJ Suppl. 3/2009 This reference contains the arrangements for automatic debiting procedure [AAD]. Essentially, the holder of a deposit account at the EPO may file a debit order requesting the automatic debiting procedure. In this case, as the proceedings progress any fee which falls due is automatically debited and treated as paid in time. The responsibility for the payment resides only with the EPO, whereas the holder only has to ensure that the account is sufficiently in credit to pay the fees on time. OJ Suppl. 3/2009 Fees may also be paid on-line using the My.epoline system. For more information concerning payments using these other means allowed by the EPO President, and in particular for the date on which the fee which is due is actually charged, reference is made to the aforementioned supplement to the Official Journal. For an analysis of these payment procedures, see Procedural law under the EPC-2000 Ed. 1, 2008, from the same authors, XXIV.21.6 and XXIV Certain older methods of payment allowed under earlier versions of RFees 5 EPC are no longer allowed, see: OJ 2007, 489 closure of EPO Giro accounts OJ 2007, 626 payment by cheque abolished OJ 1999, 81 payment by cash abolished IV.8.2. The EPO filing fee Art.22(1) PCT & Art.39(1)(a) PCT The applicant must pay the national fee (if any) to each designated or elected office In the case of the EPO, the national fee is the filing fee, see below. Requirement to pay the filing fee to EPO R159.1(c) EPC In respect of an international application under Art.153 EPC, the applicant must pay the filing fee provided for in Art.78(2) EPC within 31 months from the filing date or, if priority has been claimed, from the priority date Peter Watchorn & Andrea Veronese 295

4 Amount / Reduction Rfees 2(1).1 EPC* Amount of the national basic fee (this is equal to the filing fee for a direct European application). Rfees 2(1).1 EPC* When the Form 1200 is filed online, the national basic fee (filing fee) is reduced. * Rfees 2.1 EPC before Euro-PCT Guide 291 The official EPO form for entry into the regional phase before the EPO, (Form 1200) may be filed in electronic form using the electronic on-line filing software. Additional fee for applications having more than 35 pages (as from ) R38(2) EPC The EPO filing fee may contain a component which is a set amount per page over and above 35 pages. OJ 2009, 118 & A-VII, 1.3 For International applications entering the European phase on or after an additional fee is due under RFees 2.1a EPC [renumbered to Rfees 2(1).1a with effect from ] for each page in excess of 35 as part of the filing fee - This must be paid within the period under R159(1)(c) EPC. For transitional provisions see IV.8.1. Rfees 2(1).1a EPC* This rule specifies the amount charged for the 36 th and each additional page of a European application, or Euro- PCT application entering the European phase, where the application contains more than 35 pages (not counting any page part of biological sequence listings, if this is present in the application). * Rfees 2.1a EPC before OJ 2009, 118 The additional page fee is calculated on the basis of: - The International application as published, [but not counting any page part of a biological sequence listing] - Any amendments under Art.19 PCT - One page of abstract. Even if more than one page of bibliographic data is present, further pages are not counted. Form 1200 is also not counted. - Pages of the latest set of any amended documents [e.g. Art.34 PCT amendments or amendments filed upon entry into the regional phase] on which the European procedure is to be based [cf R159(1)(b) EPC] are also taken into account if: - they are available at EPO on the date of payment, and - the payment is before expiry of the 31 month period under R159(1) EPC. If the applicant files amended pages to replace pages of the application or of the latest set of amendments, and intends to have the replaced documents excluded from the calculation, then, the replacement pages and the pages they are meant to replace must be clearly indicated at the latest at the payment date. This can be made in Form 1200 and may result in a reduction of the number of pages for which a fee is due. In the absence of any information, the new pages are just counted as additional pages when the page fee is calculated. Pages of amendments filed after the period for paying the additional fee, and in particular during the R161 EPC period [set in a communication inviting the applicant to file amendments] are not taken into account and do not result in any reduction of the additional fee. Example of computation of additional fee PCT application of 100 pages, in English: - abstract 1 page - description 50 pages - claims 20 pages - drawings 20 pages - claims cf Art.19 PCT 9 pages On entry in the European phase within the 31 month period of R159(12) EPC for paying additional fees 10 pages of claims are filed to replace the claims on file. This replacement is clearly indicated in EPO Form Fee incurring pages: (replaced original claims) - 9 (replaced Art.19 claims) + 10 (replacing claims) - 35 (fee exempted pages) = 46 pages. Filing fee for translated applications OJ 2009, 338 This reference explains how the filing fee is calculated for Euro-PCT applications which must be translated into an EPO language when entering the European phase. (a) No amendments filed on EP entry OJ 2009, 338 Where no amendments are filed on passage into the European phase*, the filing fee is calculated on the basis of the pages of: Peter Watchorn & Andrea Veronese

5 - the application as published** - any Art.19 PCT amendments*** - any Art.34 PCT amendments**** - one page for the abstract * This means that there were no amendments under R159(1)(b) EPC. There may subsequently be amendments under R161 EPC [since these are filed after entry into the European phase]. ** This is the International application as published in the non-epo language. *** Art.19 PCT amendments must be in the language of publication [R46.3 PCT] and may or may not be published with the International application [see II.11.4]. **** Art.34 PCT amendments must be in the language in which preliminary examination was conducted [see III.6.2 and sub-sections]. (b) Claims amendments filed on EP entry OJ 2009, 338 Where the claims are amended on entry into the European phase* the applicant must file a full set of amended claims in the EPO language. The filing fee is then calculated on the basis of the pages of: - the description as published in the PCT** - the replacement pages of the claims*** * These are amendments under R159(1)(b) EPC, but not under R161 EPC [R161 EPC amendments are filed after entry into the European phase]. ** This is the International application as published in the non-epo language. *** This is the full set of claims in the EPO language filed by the applicant on entry into the regional phase. Presumably, the additional page for the abstract is also included. It appears in this case, that any amendments of claims of the International application under Art.34 PCT and Art.19 PCT are not included in the calculation. OJ 2009, 338 However, if: - there are several versions of the claims filed in the PCT* and - the applicant wishes the latest of these to be taken into account at the EPO, then the applicant must expressly indicate that he wishes this amendment to be considered as an amendment filed on entry into the European phase. * The original claims and at least one chosen from Art.19 PCT amendments and Art.34 PCT amendments (to the claims). If the applicant does this he will only be charged for the pages of the set of claims he indicates. If he does not, he will be charged for all sets of claims [original and at least one of Art.19 PCT and Art.34 PCT]. This reference does not say what happens if the applicant wishes to abandon a later set of claims filed in the PCT and revert to an earlier one. (c) Description/drawings amendments filed on EP entry OJ 2009, 338 The applicant can file amended pages of the description or a complete amended description, or amended drawings on entry into the European phase*. All must be filed in an EPO language. The filing fee is then calculated on the basis of the pages of the translations of the description or drawings as amended. If amendments to the description or drawings were made under Art.34 PCT and the applicant wishes these to be taken into account by the EPO, the applicant must either: - do both of the following: - file a translation of these amendments, and - indicate which pages are to be replaced in the translation of the application as published, or - file a complete new version of the description If the above requirements are met, the filing fee is calculated based only on the translation of the description as amended. If not, the applicant must pay based on the total number of pages filed. Note that even where the applicant provides a completely amended and translated description [i.e. a completely revised translated description is filed rather than replacement pages], the applicant is still required to file a translation of the application as originally filed [Euro-PCT Guide see IV.7.2.1]. This is so that the EPO can check that the amendments are based on the International application as originally filed [Art.123(2) EPC]. Time limit R159(1)(c) EPC The EPO filing fee must be paid to the EPO within 31 months of the priority date Peter Watchorn & Andrea Veronese 297

6 OJ 2009, 118 A-VII, 1.3 R160(1) EPC OJ 2009, 118 R160(2) EPC* OJ 2009, 118 of the International application (or filing date, where no priority is claimed). The additional page fee is also due within the same 31 month period. Sanction for failure If the filing fee is not paid in due time, the EP application is deemed to be withdrawn. The same applies where the additional fee is not paid in due time. If the EPO notes that the application is deemed to be withdrawn under R160(1) EPC, it shall communicate this to the applicant. R112(2) EPC applies mutatis mutandis. * For European applications entering the European phase before , this was numbered R160(3) EPC. The same applies where the additional fee is not paid in due time. The reference to R112(2) EPC means that the applicant may ask the EPO to review the facts and issue an appealable decision on this finding. Remedy in case of loss of rights Art.121 EPC, R135(1) EPC & Euro-PCT Guide 350 If the applicant failed to pay the filing fee in time, the loss of rights which ensues under R160(1) EPCis deemed not to have occurred if, within 2 months of notification of the loss of rights the applicant pays both the filing fee and the further processing fee. OJ 2009, 123 The same applies where the additional fee is not paid in due time. Rfees 2(1).12 EPC* The amount of the further processing fee is 50% of the filing fee. OJ 2009, 118 Where the additional fee is not paid in due time, the further processing fee of RFees 2(1).12 EPC* is computed according to the number of pages on file at expiry of the relevant period, for which the additional fee has not been paid. * Rfees 2.12 EPC before This reference appears to suggest that where the applicant has paid the basic filing fee [which would apply if the application had 35 pages or less], but has not paid the additional fee for the excess pages over 35, then the further processing fee would be 50% of the unpaid additional fee only [not 50% of the unpaid additional fee plus 50% of the basic filing fee]. R49.6 PCT Euro-PCT Guide 351 The loss of rights ensuing under R160(1) EPC for failure to pay the filing fee may also be overcome by requesting reinstatement under R49.6 PCT. RFees 2(1).13 EPC* Fee for re-establishment under R49.6 PCT. * Rfees 2.13 EPC before R49.6 PCT explicitly mentions reinstatement as remedy for loss of rights ensuing from failure to perform acts listed in Art.22 PCT (here paying the filing fee). OJ 2009, 118 which explains the new fee structure does not indicate whether reinstatement cf R49.6 PCT applies also to the failure to pay the additional fee. Since the additional fee is considered part of the filing fee, this would appear possible. Note that re-establishment under R49.6 PCT is not re-establishment under Art.122 EPC [although analogous conditions apply - same time limits, all due care etc]. This is because Art.122 EPC is not directly applicable to the loss of rights under R160(1) EPC, due to R136(3) EPC [because further processing applies, reestablishment is excluded]. For more details on the procedure according to R49.6 PCT, see IV However, re-establishment under Art.122 EPC is applicable to the period for requesting further processing. This means that, if the applicant fails to request further processing in time after a loss of rights ensued under R160(1) EPC, he may request re-establishment for failure to request further processing (E-VIII, 2.2.1). Filing fee & effects under Art.54(3) EPC Art.153(5) The Euro-PCT application is treated as an EP application and is considered as comprised in the state of the art under Art.54(3) EPC, if: - the conditions laid down in Art.153(3) EPC or Art.153(4) EPC are fulfilled [i.e. that the International application is published, and that if it is not published in an EPO language a translation in one of such languages is filed, which the EPO publishes] and - the conditions laid down in the Implementing Regulations are fulfilled [i.e. R165 EPC]. R165 EPC A Euro-PCT application is considered comprised in the state of the art under Art.54(3) EPC, if in addition to the conditions laid down in Art.153(3) EPC or Peter Watchorn & Andrea Veronese

7 IV.8.3. Art.153(4) EPC, the filing fee under R159.1(c) EPC has been paid. Since the additional page fee is part of the filing fee [R38(2) EPC], it would appear that the status of the application as prior art under Art.54(3) EPC also depends on payment of this additional fee. European designation fees Automatic designation under the PCT R4.9(a)(i) PCT The filing of the PCT request form constitutes the designation of all PCT states. R4.9(a)(iii) PCT This includes regional designations of PCT states where such a possibility exists. For more details on designations under the PCT see I.4. PCT applications and EP designations Euro-PCT Guide 78 When a PCT application is filed, by filing the request all PCT contracting states are automatically designated for both national and any applicable regional designation. The automatic designation EP covers all states for which the PCT and the EPC are in force at the filing date. Euro-PCT Guide 23 & J30/90 Where a PCT member state accedes to the EPC after the International filing date, but before the application enters the European regional phase, it is not possible to designate this state under the EPC when entering the European phase. European designations withdrawn for certain states R90bis.2(b) PCT The designation of a PCT state, via a regional designation [e.g. the EPC] can be specifically withdrawn in the International phase. R90bis.2(a) PCT The notice of withdrawal must be filed at the IB, RO or IPEA within 30 months of the filing date, or priority date, if claimed. For more details on withdrawal of designations see I.4.6. Euro-PCT Guide 353 Confirms that it is possible in the International phase to withdraw the EP designation for an EPC state. This means that it would be possible, in the International phase, to withdraw a designation (e.g. Sweden), from the regional designation of the EPO. This would then have the effect that Sweden could no longer be designated under the EPC on entry into the European phase. R90.4(d) PCT Where a document relates to a withdrawal under R90.4(e) PCT [including withdrawal of designations], the power of attorney waiver does not apply. This means that where the designation is withdrawn at an office (e.g. the RO) which applies the power of attorney waiver, the representative filing such a withdrawal will have to provide a power of attorney. For more details see V Obligation to pay designation fees to EPO R159(1)(d) EPC In respect of an international application under Art.153 EPC, the applicant must pay the designation fee within 31 months from the date of filing or, if priority has been claimed, from the priority date if the period under R39 EPC has expired earlier. By designating one or more member states of the EPC, the applicant establishes the states where he intends to obtain patent protection. Since when the International application is filed all member states of the PCT and of the EPC are validly designated [see above], any of these states may be validly designated upon entry in the regional phase before the EPO. The only exception being where the designation of a state was actively withdrawn during the international phase. The legal act validating the designation of an EPC contracting state is the payment of the corresponding designation fee. One single designation fee (entry in EP phase on or after ) RFees 2(1).3 EPC* Amount of designation fee for one or more EPC states designated [flat fee, irrespective of the number of states designated]. * Rfees 2.3 EPC before OJ 2009, 118 RFees 2.3 EPC [renumbered to Rfees 2(1).3 EPC with effect from ] applies to for applications: - filed on or after 01.Apr.2009, or - Euro-PCT applications entering the European phase on or after 01.Apr.2009, For these applications only one unitary designation fee is due for all designated EPC contracting states. These are all EPC contracting states, unless some states acceded to the EPC after the application was filed or unless designations of certain EPC states under the regional EP designation were withdrawn in the International phase (see above) Peter Watchorn & Andrea Veronese 299

8 For applications filed as of , or Euro-PCT applications entering the European phase as of this date, only one unitary designation fee is due and if not paid, the application is deemed withdrawn under R160(1) EPC. For applications subject to the new regulation the older procedures relating to ascertaining which states have been paid for no longer apply. For transitional provisions from the old to the new system, see IV.8.1. Up to 7 designation fees (entry in EP phase before ) Applications filed before , or Euro-PCT applications entering the European phase before this date are subject to the old fee system and to the old version of RFees 2.3 [given in Rfees 2(2).3]. Rfees 2(2).3 EPC* This rule sets the amount of the designation fee for each designated EPC contracting state; it also indicates that, where the applicant pays seven designation fees, then the designation fees for all EPC states are deemed paid. - This rule applies to International applications which entered the European phase before * This old version of Rfees 2.3 EPC which still applies to applications which entered the European phase before , was given this special numbering to distringuish it from the fee regulation Rfees 2(1).3 EPC which relates to applications subject to the new fee system [see OJ 2009, 587]. This numbering applies as of Under the old system, in most cases applicants validated the designation of all EPC contracting states on entry into the European regional phase, by paying seven designation fees. If the applicant paid less than seven designation fees, then he validated the designation of certain EPC states only, and he had to indicate which those states are [Rfees 6(1) EPC]. This was most conveniently done on form Indication of states in Form 1200 (only if entry in EP phase before ) EPO Form 1200 [valid until ] If no explicit indication of states is given in Form 1200, a pre-printed declaration indicates that all members of the EPC are deemed designated. If the automatic debiting procedure is requested, 7 fees are charged at the end of the prescribed period. If no automatic debiting procedure is requested the applicant may pay 7 fees to validate all designations or pay less than 7 fees to validate six or fewer specific states, in which case he has to specify for which states he is paying. If when he files Form 1200, the applicant intends to pay less than seven designation fees, he should indicate on the form, the [6 or fewer] EPC states for which he intends to pay. If this declaration is made, when the payment is made, the amount is allocated for the 6 or less states indicated. If the automatic debiting procedure is requested, the corresponding fees are charged at the end of the prescribed period. Although he has indicated his intention to pay less than 7 fees, the applicant may still validate any other designation by paying the corresponding fees within the prescribed period. If, when filing Form 1200, the applicant indicates the intention to pay for less than 7 states, he may further waive his right to be informed of the failure to pay designation fees for any other state which is not indicated in Form In such case he also renounces his right to request further processing in respect of these other states. Time limit to pay the designation fees (unchanged after ) R159(1)(d) EPC The designation fees for Euro-PCT applications entering the European phase must be paid to the EPO by the later of: - 31 months of the priority date of the International application, or filing date if no priority is claimed [time limit under R159(1) EPC] and, - 6 months from publication of the International Search Report* [regardless of whether a supplementary search report is prepared by the EPO - this is the time limit under R39(1) EPC]. * For international applications the international search report replaces the European search report under Art.153(6) EPC. This second 6 month time limit becomes applicable only in the cases where the international search report is published very late (more than 25 months after the priority). Sanction for failure on/after R160(1) EPC [in force as of ] If the designation fee is not paid on time then the application is deemed withdrawn Peter Watchorn & Andrea Veronese

9 R160(2) EPC [in force as of ] The applicant is informed of any loss of rights [deemed withdrawal of the application]. R112(2) EPC applies mutatis mutandis. Since only one designation fee is now due for all EPC states, it is no longer possible for an individual designation to lapse for failure to pay the designation fee for that state. Either all designations are validated, by payment of the unitary designation fee, or none at all by failure to pay this unitary designation fee. The reference to R112(2) EPC means that the applicant may ask the EPO to review the facts, and issue an appealable decision on this finding. Sanction for failure before R160(1) EPC [in force until ] If no designation fee is paid in time, the application is deemed withdrawn. R160(2) EPC [in force until ] If the designation fee of a particular contracting state is not paid on time, then the designation of that state is deemed withdrawn. R160(3) EPC [in force until ] The applicant is informed of any loss of rights [deemed withdrawal of the application or of a designation]. R112(2) EPC applies mutatis mutandis. This rule only applies to applications following the old fee system [which entered the European phase before ], since under the new system one single flat fee is due, and it is not possible to pay a designation fee for a particular state. Remedy in case of loss of rights Art.121 EPC, R135(1) EPC & Euro-PCT Guide 360 If the applicant failed to pay a designation fee in time, the loss of rights under R160(1) EPC is deemed not to have occurred if, within 2 months of notification of the loss of rights [under R112(1) EPC] the applicant pays both the unpaid designation fee and the further processing fee. Rfees 2(1).12 EPC* The amount of the further processing fee is 50% of the unpaid designation fee. * Rfees 2.12 EPC before For applications following the old fee system, the applicability of further processing is limited in the case indicated here below. Waiver - no notification of lost rights (before only) Euro-PCT Guide 361 & A-VII, 1.3 If in form 1200 the applicant indicated his intention to pay less than seven designation fees, and also waived his right to receive a notification under R112(1) for failure to pay the designation fees in respect of the other states not indicated on the request form, then: - he does not receive a communication informing of the loss of rights in respect of these other states, and - he has no right to request further processing for these other states. For example if the applicant indicates on Form 1200 that he intends to pay designation fees for FR, GB, DE, IT, NL and he makes use of this waiver, then the EPO will not send him a communication of loss of rights under R112(1) EPC for the failure to pay designation fees in respect of any states other than FR, GB, DE, IT, NL. Furthermore, the applicant cannot then request further processing for the other states, e.g. the designation of SE. Euro-PCT Guide 361 confirms that no further processing is applicable in the absence of a R112(1) communication. A-VII, 1.3 However, a communication under R160(3) EPC [for applications entering the EP phase before ] is sent if the applicant does not pay the designation fee for a state for which he had expressed the intention to pay. Reinstatement not applicable Euro-PCT Guide 361 The loss of rights ensuing from failure to pay designation fees may not be overcome by requesting reinstatement under R49.6 PCT, because the designation fees are not part of the national fee and therefore R49.6 PCT is not applicable. Furthermore according to R136(3) EPC, re-establishment under Art.122 EPC may not be applied to periods for which further processing is available. However, under the EPC, re-establishment is applicable to the period for requesting further processing. This means that, if the applicant fails to request further processing in time after a loss of rights ensuing under R160(1) EPC, he may request re-establishment for failure to request further processing (E-VIII, 2.2.1). Furthermore, if further processing is excluded because the applicant used the Peter Watchorn & Andrea Veronese 301

10 IV.8.4. waiver on Form 1200, he might be able to request re-establishment under Art.122 EPC, since further processing is excluded. Fees for extension States The EPO has concluded extension agreements with a number of non-epc contracting States. At the applicant's request, EP applications and patents can be extended to these "Extension States", and have the same effects as national applications and patents in their territory. However, since these States are not party to the EPC, the EPC is not directly applicable, and only the provisions of the extension agreements and the national law apply. Each extension is subject to the payment of an extension fee, to be paid within the same time limit as the designation fee/s. Terms of the extension agreements The extension agreement between the EPO and Slovenia (which later acceded to the EPC), was the first such agreement (see OJ 1994, 75). All of the later agreements where essentially based on that first agreement so that the procedure at the EPO applies to all extensions. However, the national requirements before the extension states may differ. How to extend EP application via PCT In the case of an International application, a request for extension to the states indicated below is automatic when both the EPO and the following states are designated in the same International application. This applies even if the national procedure has been started in the state in question [this is indicated in the extension agreements given for each extension state in the OJ reference below]. Which extension states A-III, 12.1, Euro-PCT Guide 362 & EPO Form 1200 The European patent application and the corresponding granted patent can be extended to those states designated in the International application which: - are not EPC contracting states, but - which had an extension agreement with the EPO in force at the time of filing the International application. Euro-PCT Guide 362 If these conditions are met, a request for extension is deemed filed when the Euro-PCT application enters the regional phase. From four extension agreements are in force: Albania OJ 1996, 82 Bosnia Herzegovina OJ 2004, 619 Serbia OJ 2004, 563 & OJ 2007, 406 Montenegro OJ 2010, 10* * Montenegro has just concluded an extension agreement with the EPO. This will apply to European and International applications filed on or after [the other three agreements have already been in force for some years]. An updated list of the EPC contracting states and the states having an extension agreement with the EPO can be found on the EPO web-site. For more details on extension of European patent applications and its relevance in the International phase, see also I.4.4. Extensions fees: when to pay A-III, 12.2 & Euro-PCT Guide 365 For the extension to take effect, the extension fee must be paid within the same period as for the designation fees*. * R159(1)(d) EPC This period is the later of: - 31 months of the filing/priority date of the International application [R159(1) EPC period] and, - 6 months from publication of the International Search Report [regardless of whether a supplementary search report is prepared by the EPO R39(1) EPC period]. How many fees A-III, 12.1 One extension fee is due for each extension state. In the case of extension fees there is no maximum number of payable fees nor is there a unitary flat fee. One fee is always to be paid for each extension state. Indication of states paid for EPO Form 1200 & Euro-PCT Guide 363 When paying extension fees, the applicant must indicate which extension states he is paying for. He may do it in Form Euro-PCT Guide 364 If the states he finally pays for do not correspond to those which were indicated in Form 1200, then the applicant will have to provide the correct indication Peter Watchorn & Andrea Veronese

11 - This part of the Guide also appears to imply that even where indications are provided on Form 1200, the applicant will still have to indicate which states he is paying for when making payment. However, since most applicants requesting extension, do so in respect of all extension states and pay the extension fees due, then it is no longer necessary to indicate which extension states have been paid for. Loss of rights and further processing Euro-PCT Guide 366 A-III, 12.2 If the extension fee for a state is not paid in time, the request for extension to that state is deemed to be withdrawn. A-III, 12.2 No separate communication is sent to notify a loss of rights resulting from the failure to pay extension fees on time [i.e. the applicant is not sent a R112(1) EPC communication indicating the deemed withdrawal of the extension]. Consequently, the applicant cannot normally request further processing for failure to pay the extension fee on time. This is subject to the exception below. A-III, 12.2 If the applicant failed to pay both of the following on time: - at least one designation fee and - at least one extension fee then he is sent a communication under R112(1) EPC informing him of both the loss of the designation [R160(1) EPC, or R160(2) EPC in force until ] and the loss of the extension [A-III, 12.2]. It is only in this situation, that the applicant may request further processing for failure to pay the extension fee (and also failure to pay the designation fee on time as well). In all other cases the deemed withdrawal of the request for extension due to the failure to pay an extension fee cannot be remedied by further processing. A-III, 12.2 For the further processing fee, Rfees 2(1).12 EPC* applies mutatis mutandis. [i.e. further processing is subject to a fee which is 50% of the late paid extension fee]. * Rfees 2.12 EPC before J14/00 & A-III, 12.2 No re-establishment of rights under Art.122 EPC and R136 EPC is possible in respect of failure to pay the extension fees. These provisions are quite harsh for the applicant, because if he has failed to pay the extension fees in time, but he has in the meantime duly paid the designation fees, the request for extension is withdrawn, and the legal remedy of further processing is not available. Grace period - as of OJ 2009, 603 The procedure indicated below applies to applications for which the basic period for payment of extension fees [see above] expires on or after OJ 2009, 603 If the applicant fails to pay the extension fee within the basic period, he can pay the fee within two months of expiry of the basic period [grace period]. This grace period used to apply to late payment of designation and extension fees under EPC_1973 (no longer necessary for designation fees since these fees are now subject to further processing). The reintroduction of the grace period for extension fees means that the explanation of aggregate time limits in L5/93 once again applies to late payment of extension fees in the grace period. This procedure for payment within a grace period exists in addition to the possibility for payment by means of further processing where a designation fee is also not paid on time [A-III, see above]. OJ 2009, 603 Payment within the grace period is subject to the payment of a 50% surcharge on the late paid extension fee. Decision under R112(2) and appeal J4/05 The applicant cannot request the EPO for a decision under R69(1) EPC, [now R112(2) EPC] with regard to the payment of extension fees. J14/00, J19/00, J9/04, J2/05 & J4/05 The applicant cannot appeal a finding of the EPO that the fee was not paid in time. Such an appeal is inadmissible. The provisions of the EPC only apply to extensions in so far as these are mentioned in the Extension Ordinance (EO). Since the EOs do not mention the possibility of a decision under R112(2) EPC, or appeal according to Art.106 EPC then neither of these procedures apply to the failure to pay the extension fee. IV.8.5. R162(1) EPC The claims fee Claims fee due for more than 15 claims If the application documents on which the EP grant procedure is to be based comprise more than 15 claims*, claims fees shall be Peter Watchorn & Andrea Veronese 303

12 paid for the 16 th and each subsequent claim as laid down in the rules relating to fees within the period under R159(1) EPC. * R162(1) EPC was modified, and the new version entered in force on Before this date claims fees were levied for the 11 th and each following claims. The prescribed amount of each claims fee was however lower. Two tier system as of With the last fee reform, a two-tier system of claims fees was introduced: a lower claims fee is due for each claim from the 16 th up to the 50 th claim and a higher claims fee is due for the 51 st and subsequent claims. This new system applies to direct European applications filed, and to Euro-PCT applications which entered the European phase on or after Rfees 2(1).15 EPC* The prescribed amount for each claims fee, is: - a fixed amount for the 16 th and each subsequent claim up to a limit of 50 - a higher fixed amount for the 51st and following claims. * Rfees 2.15 EPC before Applicants are referred to the latest updated version of the EPO fee regulations for changes in the amounts of these fees. Transitional provisions OJ 2009, 118 The new two tier system of claims fees enters into force for direct European applications filed, and for Euro-PCT applications entering the European regional phase on or after Applications filed or entering the regional phase before this date follow the old system [which imposed the payment of a set fee for the 16 th and each following claim]. Rfees 2(2).15 EPC* For applications entering the European phase before , the prescribed claims fee is 210 Euros for the 16 th claim and above. * This is the old version of Rfees 2.15 EPC which was valid for applications entering the regional phase before [OJ 2009, 587]. This new numbering will apply as of What counts for the new tier system to apply is the date on which the application is filed or the Euro-PCT application enters the regional phase, not the actual date on which the payment of the claims fees is made. Also, the payment of claims fees is not a requirement for entering the European phase. They can still validly be paid after entry in the European phase, within the period under R162(2) EPC. Thus a claims fee might be due after , but still follow the old fee system. For more information on transitional provisions, concerning the date of entry in the European regional phase, see IV.8.1. Time limit R162(1) EPC The fee must be paid within the time limit according to R159(1) EPC which is: - 31 months from the priority date of the application [or from the filing date, if no priority is claimed]. Late payment R162(2) EPC If the claims fees are not paid in due time, they may still be paid within 1 month from a communication concerning the failure to observe the time limit. - If within this period amended claims are filed, the claims fees due are computed on the basis of such amended claims. Euro-PCT Guide 405 This one month period is not extendable. Euro-PCT Guide 405 The invitation to pay claims fees under R162(2) EPC is sent together with the communication under R161 EPC informing the applicant of his right to amend the application [see also subsection below: amount payable if the claims are amended]. No surcharge is due in case of late payment. R162(3) Any claims fees paid within the period under R162(1) EPC and in excess of those due under R162(2) EPC, second sentence, is refunded. If within the additional R162(2) EPC period to pay claims fees the applicant files a new set of claims which results in the amount of claims fees already paid being in excess, the excess is refunded. See below under Amount payable if claims are amended. Sanction for failure R162(4) EPC Where a claims fee is not paid in due time, the claim concerned is deemed to be abandoned. A-III, 9 The applicant is notified if a claim is deemed abandoned Peter Watchorn & Andrea Veronese

13 Although this guideline relates to direct EP applications, it would appear equally applicable to Euro-PCT applications. J15/88, A-VII, 1.3 Euro-PCT Guide 406 Where subject matter which is present in a claim deemed abandoned according to R162(4) EPC does not appear in the description or in the drawings, it cannot be re-introduced into the application. J9/84 Abandoning a fee exempt claim [e.g. claim 2] does not transfer the fee exemption to another claim. B-III, 3.4 Where a claim is deemed abandoned for non-payment of a claims fee, [and a supplementary search is performed by the EPO], that claim is not searched. Legal remedies Art.121(1) EPC Further processing applies to any time limit not respected by the applicant [subject to certain exceptions, which do not include the payment of claims fees]. Further processing is applicable, since it is not excluded by Art.121(4) EPC or by R135(2) EPC. RFees 2(1).12 EPC* The further processing fee for non payment of the claims fees is 50% of the amount of the claims fees not paid on time. * Rfees 2.12 EPC before R136(3) EPC Re-establishment under Art.122 is ruled out for any period for which further processing is available [i.e. in this case]. E-VIII, However, if the applicant fails to request further processing in due time, he may request re-establishment in respect of the time limit for requesting further processing. Procedure in case of insufficient payment A-III, 9 If the amount paid [under R45 EPC*] is insufficient to cover all claims from 16 onward, and the applicant has not indicated which claims he wants to keep, he is asked which ones he wants to keep. * R45 EPC refers to claims fees paid in respect of direct European applications; the principles should, however, be equally applicable to claims fees due for international applications entering the European phase. Accordingly, the applicant would be well advised to clearly indicate which claims he is paying for and do so within the time limit for late payment according to R162(2) EPC (one month from the notice of failure to pay). If he fails to indicate this, the EPO may apply Rfees 6(2) EPC and find that the claims fees are deemed not paid, because the purpose of the payment is not indicated. Amount payable if claims are amended R161 EPC After entry into the European phase, the applicant is invited to amend the application within a non-extendable period of one month from the invitation. R162(2) EPC If the applicant amends the claims in the grace period for payment of claims fees under R162(2) EPC, the amount of the claims fees is calculated on the basis of the amended set of claims. Euro-PCT Guide 327, 405 The communication inviting late payment of the claims fees [R162(2) EPC] and the filing of amendments to the application [R161 EPC] is one in the same. Consequently these two invitations both have the same time limit - one month and non-extendable in both cases and both starting and expiring on the same day. Euro-PCT Guide 328, 405 Where the applicant amends the claims within this period, this new set of claims is then used to calculate the claims fees. If the applicant files amended claims in this period, the claims fees to be paid within this same period are then those due for the amended claims which he files, minus any claims fees which he has already paid. For example: - International application enters European phase all acts completed, except payment of claims fees. - Application has 20 claims on entry into the European phase [5 claims fees due - R162(1) EPC] month period expires [R159(1) EPC] No claims fees paid yet EPO sends invitation to the applicant to pay claims fees late [R162(2) EPC] and, if applicant so wishes, to amend the application (R161 EPC) Applicant files a new set of 19 claims and pays 4 claims fees. This is within the one month time limit which, taking into account the 10 days for notification [R126(2) EPC] would expire on It may also happen that the applicant pays all claims fees due in the 31 month period and then files amended claims, with more claims that the original set, for example: Peter Watchorn & Andrea Veronese 305

14 - International application enters European phase all acts completed, except payment of claims fees. - Application has 17 claims on entry into the European phase [2 claims fees due under R162(1) EPC] Applicant pays 2 claims fees month period expires (R159(1) EPC) EPO sends invitation to the applicant to amend the application (R161 EPC) Applicant files a new set of 20 claims. In such case he must also pay 3 additional claims fees within the one month time limit (since 5 claims fees are due, but he only paid 2 on entry into the European phase). One R162(2) EPC communication only Euro-PCT Guide 405 If additional claims fees become due as a result of amendments filed in response to the R161 EPC / R162(2) EPC communication, no further communication under R162(2) EPC is sent. Thus, in these cases the applicant must pay any due claims fee within the time set in the R161 EPC / R162(2) EPC communication. For example: Application has 20 claims on entry into the European phase. No claims fees are paid within the 31 month period to enter the European phase R161(2) EPC / R162 EPC communication sent inviting late payment of claims fees (based on the current set of claims, 5 such fees are due) and inviting the applicant to file amendments Applicant files a new set of 25 claims (i.e. 10 claims fees become due in total - 5 more than previously due). He must pay 10 claims fees before the end of the one month time limit set in the above communication. He does not get another communication under R162(2) EPC to pay the extra 5 claims which have became due as a result of his amendment. Mandatory reply to R161 EPC communication For applications where all of the following conditions apply: - the EPO prepared the WO-ISA or IPER - the EPO was the ISA - the EPO-WO-ISA or -IPER was negative - the R161 EPC communication was not yet sent on then the EPO will require the applicant to reply to the WO-ISA, or, if prepared by the EPO, the IPER. For more details see IV.6.1. For applications where the EPO was the SIS-ISA, then R161(1) EPC requires the applicant to reply to the comments accompanying the SIS-search report under R45bis.7(e) PCT [where negative] and to do so within the time lmit under R161(1) EPC. Refund of excess claims fees R162(3) EPC Any claims fees paid within the period under R162(1) EPC and in excess of those due under R162(2) EPC, second sentence, is refunded. Euro-PCT Guide 329 Where the applicant amends the claims after entry into the European phase according to R161 EPC [during the R162(2) EPC grace period] and this new set of claims contains fewer claims than the original set, then any excess already paid is refunded. Example: - the applicant entered the European phase with 20 claims from the International phase and paid 5 claims fees within 31 months of the priority, - EPO sent R161 EPC communication inviting him to file amendments, - the applicant filed within one month of this invitation, an amended set of 17 claims. In this case, the EPO will refund 3 claims fees. Multiple sets of claims L3/85 & A-III, 9 With multiple sets of claims according to R138 EPC, claims fees are due in respect of the set with the most claims [if this has 16 or more claims]. Under certain limited circumstances it is possible to have different sets of claims for different EPC contracting states. This is where, for example, prior rights exist in respect of a part of the claimed subject matter for certain EPC states and not for others [for more information on this topic see the book Procedural law under the EPC-2000 Ed. 1, 2008, from the same authors, XI and sub-sections]. Enumerated embodiments J5/87 Enumerated embodiments annexed to the description and acting as a possible subject of examination, and appearing as claims according to Art.84 EPC and R29 EPC Peter Watchorn & Andrea Veronese

15 [now R43 EPC], are to be charged as claims. However, the following decisions followed a different approach: J15/88 & J16/88, J29/88, J25/89, J26/89, J27/89, J28/89, J34/89 & T490/90 Enumerated embodiments, where these are not referred to as claims, and where claims are already present in the application which are referred to as such, are not subject to the payment of a claims fee. Enumerated embodiments have often been used in the past as a ruse to avoid the payment of claims fees. To combat this problem the EPO has often applied R86(4) EPC [now R137(4) EPC, as of , this will be renumbered to R137(5) EPC]. This rule makes it difficult for the applicant to introduce the subject matter from these embodiments, originally part of the description, into new or amended claims filed during the examination procedure. IV.8.6. IV.8.7. IV.8.8. Fee for the supplementary European search For the details on this, see "IV Supplementary search fee / Time limit". The examination fee For the details on this, see IV The examination fee" and relevant subsections. The renewal fee Renewal fees are charged by EPO for the third and subsequent years calculated from the date of filing of the European patent application. This also applies to Euro-PCT applications. The procedure for payment is laid down here below. Which due date is applicable R159(1)(g) EPC When an International application enters the regional phase before the EPO, the renewal fee under Art.86(1) EPC for the third year must be paid by the later of the following dates: - the "due date" under R51(1) EPC - 31 months from the priority date, or filing date if no priority is claimed, under R159(1)(g) EPC. The first or the second due date become applicable depending on whether a priority has been claimed, and to what extent the priority year has been used. In most cases, since a priority is claimed using the entire priority year, the first time limit applies (see the following sections). Amount of third year renewal fee Rfees 2(1).4 EPC* This rule sets the amount of EPO renewal fees. * Before Rfees 2.4 EPC. IV Due date under R51(1) EPC Due date and time limit for payment when R51(1) EPC applies Art.86(1) EPC Renewal fees are due to the EPO in respect of the third year and each subsequent year calculated from the date of filing of the application. They must be paid to the EPO according to the rules [i.e. R51 EPC]. R51(1) EPC The renewal fee in respect of the coming year shall be due on the last day of the month having the anniversary of the filing date. Accordingly, where R51(1) EPC applies, the renewal fee for the third year is due on the last day of the month holding the second anniversary of the filing date (and must be paid by this date). For an application filed on , the first renewal fee is due See also A- XI, & A-XI, EPO closed on due date J4/91 Here the filing date applies, not the priority date. If the due date according to R37 EPC [now R51 EPC] falls on a day when one or more of the EPO filing offices is closed, payment may be made without surcharge on the next working day where all filing offices are open. Pre-payment period (As from ) R51(1) EPC Renewal fees may not be paid more than three months before they fall due. OJ 2009, 118 As of the period for advance payment of renewal fees is reduced from one year to 3 months before the due date. OJ 2009, 118 The new, shorter period for advance payment applies to all applications, irrespective of the date of filing date of direct European patent applications or the date of entry into the European regional phase of Euro-PCT applications. A-XI, Renewal fees received shortly before the start of the advanced payment period will be retained by the Office, but the payment will not take effect until the first day of the pre-payment period Peter Watchorn & Andrea Veronese 307

16 OJ 2009, 118 This reference indicates that shortly before means up to one month before the start of the 3 month pre-payment period. A-XI, However, where the EPO elects to keep the payment, payment will only be deemed to have occurred on the first date of the pre-payment period. This means that if the amount of the renewal fee increases between the date of actual payment [up to one month before the three month pre-payment period] and the date when the payment is considered to have been made [three months before the due date the date when the payment is legally made], there will be a shortfall, because the amount which must be paid is that due when the payment is legally made [A-XI, 5.1.2]. Example where R51(1) EPC applies (Tu) Priority date (Th) International filing date (Tu) End of 31 month period from priority under R159(1) EPC (We) Last day of the month holding the second anniversary of the filing date: this is the R51(1) EPC due date, and is the last date for normal payment. Since here the R159(1)(g) EPC period expires before the due date under R51 EPC, the due date under R51 EPC is then the applicable date for normal payment without surcharge. If any of the EPO filing offices were to be closed on this day, the fee could be paid on the first following day when all filing offices are open [J4/91]. With the entry in force of new R51(1) EPC (on ) this fee may further not be paid more than three months before IV Thirty-one month period under R159(1) EPC R159(1)(g) EPC The Renewal fees can be paid up to 31 months from the filing date [or from the priority date if priority is claimed] where this is later than the due date under R51(1) EPC. In practice, the time limit under R159(1) EPC becomes applicable only if no priority is claimed, or where it is claimed but using only part of the priority year. Pre-payment period Under R51(1)EPC and OJ 2009, 118, as of , the renewal fee can be paid up to three months before it falls due. The comments made above in IV are applicable also here. Example where R159(1) EPC applies: (Fr) Priority date (relevant event triggering the thirty-one month period) (Fr) Filing date (Mo) Due date under R51(1) EPC (Fr) End of 31 month period under R159(1) EPC, which in this case is the last date for normal payment, since it is expires later than the R51 EPC due date. L5/93 Here the "last day of the month" rule of R51(1) EPC does not apply. The due date falls on the date that the 31 month period under R159(1) EPC expires. Extension of period under R134(1) EPC L5/93 When the expiry of the 31 month time falls on a holiday, extension of the time limit to the next working day under R134(1) EPC is applicable if the 31 month date according to R159(1) EPC becomes the relevant due date under R159(1)(g) EPC. L5/93 refers to R104b(1) EPC and R104b(1)(e) EPC, which are the old versions of R159 EPC and to R85(1) EPC, now R134(1) EPC. Example: (Tu) Priority date [triggers 31 mon period] (Fr) International filing date (Mo) Due date under R51(1) EPC (Su) EPO filing offices closed (Mo) End 31 month period under R159(1) EPC* * This period is extended under R134(1) EPC. Its expiry constitutes the last date for payment without surcharge. IV Late payment plus surcharge R51(2) EPC Where the applicant fails to pay the renewal fee by the due date, he can pay it within six months of this date plus a surcharge. Rfees 2(1).5 EPC* The surcharge is 50% of the late paid renewal fee. * Rfees 2.5 EPC before The six month time limit for late payment plus surcharge is calculated differently, depending on whether the due date under R51(1) EPC applies or the time limit under R159(1) EPC. See below: Peter Watchorn & Andrea Veronese

17 Period for payment with surcharge when due date under R51(1) EPC applies J4/91 The six month period for late payment of the renewal fee [now under R51(2) EPC] expires on the last day of the sixth month after the due date. Here the last day for payment is always the last day of the month, irrespective of whether this month has more or less days than the one which held the second anniversary of the filing date. EPO closed on R51(1) EPC due date J4/91 If the due date according to R37 EPC [now R51 EPC] falls on a day when one or more of the EPO filing offices is closed, payment may be made without surcharge on the next working day where all filing offices are open. However, the due date does not move to a later date, it remains calculated as above and the six month period of grace is still calculated from the R51 EPC due date, even though it fell on a holiday. Example (Mo) Priority date (Tu) International filing date (Mo) End of 31 month period from priority according to R159(1) EPC, extended from (Sa & Su EPO closed) (Su) Last day of the month holding the second anniversary of the filing date (R51(1) EPC due date). This is the due date, even though the EPO is closed (Su) (Mo) Last day for payment without surcharge according to R51(1) EPC; payment date is extended under R134 EPC from [however, the due date remains J4/91] (Tu) End of the 6 month period for late payment plus surcharge* calculated according to J4/91 [last day of the sixth month calculated from the due date ]. * If this six month period had been calculated as a normal 6 month period according to R131(4) EPC it would have expired on (Mo), (extended from (Sa). Example 2 The example below shows that J4/91 also applies where the sixth month after the due date has fewer days than the month which held the second anniversary of the filing date. The last day of the month is the relevant day also in this case (Tu) Priority date (Th) International filing date (Tu) End of 31 month period from priority according to R159(1) EPC (We) Last day of the month holding the second anniversary of the filing date [R51(1) EPC due date]. Last day for payment without surcharge, applicable here since it expires later than the 31 month time limit (Th) End of the 6 month period for late payment plus surcharge*. * The 6 month period for late payment is not carried over into the seventh month, but remains the last day of the sixth month after the due date. Time limit for payment with surcharge when R159(1) EPC applies L5/93 & OJ 1993, 229 If the 31 month time limit of R159(1)(g) EPC expires later than the one under R51(1) EPC then the 6 month time limit for late payment plus surcharge: - starts from expiry of this 31 month time limit [possibly extended under R134 EPC] and - ends on the corresponding day of the month 6 months later [also possibly being extended under R134 EPC]. This means that here the "last day of the month" rule of J4/91 is not applicable and that extensions under R134 EPC are applicable to calculate both the end of the 31 month time limit and the start of the 6 month additional period. In this case the second time limit is computed starting the day after the expiry of the first one (possibly extended under R134 EPC). This is an example of what is commonly referred to as an "aggregate time limit" [see OJ 1993, 229, which is still referred to in OJ 2009, 129]. L5/93 refers to R104b(1) EPC & R104b(1)(e) EPC, which are old versions of R159 EPC-2000 and to R85 which is an old version of R134 EPC Example (Mo) Priority date (relevant event for the start of the thirty-one month period) (Mo) International filing date (Mo) Last day of the month holding the second anniversary of the filing date [R51(1) EPC due date] Peter Watchorn & Andrea Veronese 309

18 (Mo) End of 31 month period from priority according to R159(1) EPC, extended from (Sa), under R134(1) EPC. Time limit for payment without surcharge, is the 31 month period under R159(1) EPC since it expires later than the due date under R37(1) EPC (Mo) End of the 6 month period for late payment plus surcharge under R51(2) EPC, calculated according to L5/93; extended from (Su, EPO closed). IV Failure to pay a renewal fee - loss and re-establishment of rights Art.86(1) EPC If a renewal fee is not paid in due time the European application is deemed withdrawn. Date on which loss of rights occurs J4/92 If the application is deemed withdrawn under Art.86(3) EPC [now Art.86(1) EPC], then the loss of rights takes effect after expiry of the 6 month period under R51(2) EPC. If on the last day of the 6 month period the EPO is closed, the renewal fee can still be paid with surcharge on the first day on which the Office is open again under R134(1) EPC. On this day the application is still pending. Consequently, it appears that the deemed withdrawal takes effect the day after, regardless of whether the EPO is open on this date. Further processing is not applicable R135(2) EPC Further processing is not applicable for failure to meet the time limit for paying the renewal fees. Re-establishment is applicable Art.122(4) EPC & R136(3) EPC & Euro-PCT Guide 400 Re-establishment for non payment of renewal fees is not excluded by Art.122 EPC. This means that the applicant may request re-establishment for failure to pay the renewal fees in time. Under EPC-2000, reestablishment can be requested within the normal time limits of R136(1) EPC, i.e. the earlier of: - 2 months from removal of the cause of non-compliance, and - 1 year from expiry of the unobserved time limit calculated as an aggregate time limit starting from the day after the unobserved end of the 6 month R51(2) EPC period for payment with surcharge [possibly extended under R134(1) EPC, if on the last day the EPO is closed]. Rfees 2(1).13 EPC* Fee for re-establishment of rights. * Rfees 2.13 EPC before Changes under the EPC-2000 Under the previous version of the EPC [Art.122(2)EPC_1973 in force until ] the six month period for late payment of renewal fees was deducted from the maximum one year period for requesting re-establishment of rights [then called restitutio in integrum ]. This meant that the maximum one year period only ran for one year from the due date and not from the loss of rights which occurred at the end of the six month period for late payment with surcharge. This no longer applies, this provision was deleted from Art.122 EPC and now the maximum period of one year starts with the loss of rights at the end of the six month period for late payment with surcharge under R51(2) EPC. All due care for payment of renewal fee J12/84 Re-establishment under Art.122 EPC for non payment of renewal fees cannot be based on the omission of a notification from the EPO that the fee was not paid within the due date [the omission of this notification is not evidence that the applicant exercised all due care in the sense of Art.122 EPC]. J31/89 The applicant cannot base a request for reestablishment on an incorrect interpretation of the EPC for the calculation of the time limit for late payment of renewal fee plus surcharge which led to the Art.86(2) EPC [now R51(2) EPC] time limit being missed. If the applicant has interpreted the EPC incorrectly, this is evidence that he did not apply all due care. Incorrect information from the EPO J1/89 However, if the applicant is misled by an EPO communication into paying the renewal fees late, they are treated as if paid in time. J14/94 If the applicant fails to pay a renewal fee and the EPO leads the public to believe that no loss of rights has taken place, plus the EPO accepts later renewal fees, and continues the examination procedure for several years without informing the applicant of any loss of rights, the fee is deemed paid in time Peter Watchorn & Andrea Veronese

19 Re-establishment as auxiliary request J23/96 The applicant in this case was found by the EPO not to have paid the renewal fee within the six month period under Art.86(2) EPC [now R51(2) EPC]. He was sent a communication under R69(1) EPC [now R112(1) EPC] indicating that the application was deemed to be withdrawn under Art.86(3) EPC [now Art.86(1) EPC]. The applicant then made a main (MR) and auxiliary request (AR): MR The applicant disputed the finding that he had not paid in time and asked for a decision that the payment was in time under R69(2) EPC [now R112(2) EPC] AR In the event of denial of the main request, the applicant requested re-establishment under Art.122 EPC for the failure to pay the renewal fee on time. Before issuing an adverse decision, the EPO should have considered both requests, not just the first one. Failure to consider the auxiliary request constituted a substantial procedural violation. Art.122 EPC & renewal fee agencies J27/90 The applicant in this case contracted out the payment of renewal fees to a renewal fee agency, which failed to pay the fee on time. However, the responsibility for non payment of the renewal fee was still that of the representative. The removal of the cause of non-compliance with the six month period for late payment*, was the date that the representative was notified of the loss of rights, not the agency. * This triggers the start of the two month period for requesting re-establishment [then Art.122(2) EPC now R136(1) EPC]. More information concerning the procedure for requesting re-establishment can be found in IV IV.9. IV.9.1. IV The supplementary search All PCT applications are subject to an international search which is carried out by an International Searching Authority (ISA). In the case of Euro-PCT applications, the International search report prepared by the ISA takes the place of the EP search report [Art.153(6) EPC]. In addition, and subject to some exceptions, [i.e. where the International search was performed by the EPO as ISA or where the EPO performs a SIS-search], all Euro-PCT applications entering the regional phase before the EPO are subject to a supplementary search report [Art.153(7) EPC]. This is drawn up by a search division of the EPO, which also prepares a European search opinion [ESOP] on whether the application appears to meet the requirements of the EPC [R62 EPC]. The search report, together with the ESOP make up the so called extended European search report [EESR]. A search fee is due for all Euro-PCT applications subject to a supplementary search [R159(1)(e) EPC]. Supplementary search report and search opinion The supplementary search report International SR counts as EP SR Art.153(6) EPC The international search report drawn up in respect of a Euro-PCT application or the declaration replacing it, and their international publication, shall take the place of the EP search report and the mention of its publication in the EP Patent Bulletin. Supplementary search required Art.153(7) EPC A supplementary EP search report shall be drawn up in respect of any Euro-PCT application under Art.153(5) EPC. The reference in the first paragraph to Art.153(5) EPC means that the international applications must have entered the European regional phase before the EPO. This is subject to the dispensations indicated below. Dispensation from supplementary search Art.153(7) EPC The Administrative Council [the governing body of the EPO, which has regulatory powers] may decide that the supplementary search report is to be Peter Watchorn & Andrea Veronese 311