Fees due to the EPO
Annual fees must be paid from the third year (A86 (1) EPC). Indeed, it is considered that the first two taxes are paid in the filing fee.
These taxes must be paid at the beginning of the year in question, on the last day of the anniversary month of the deposit (R51 (1) EPC).
In practice, it is appropriate to add two years to the filing date and to consider the last day of the month.
Anyone can pay these taxes (AX 1 Guidelines).
This question is legitimate because the payment of annual fees is not subject to a deadline: they must simply be paid before a certain deadline fixed by the texts.
The answer of the case law is Yes. Indeed, in a decision J4 / 91, the legal division states:
There is general agreement that Rule 85 (1) EPC is applicable by analogy in such a case, which is indeed correct, although, if strictly adhered to, it can not play occurrence: a "deadline" can not constitute a "deadline" likely to be "extended"
So, if an application was filed on 03/03/07, then:
- the annual fee for the fifth year may be paid until 31/03/11 (Thursday), and
- the annual fee for the sixth year may be paid until 31/03/12 (but the time limit is extended under the R134 (1) EPC until 02/04/12because March 31 is a Saturday).
Attention nevertheless: the fact to use the R134 (1) EPC (and therefore pay without surcharge a little later) does not mean that the deadline is changed
In the case of the payment period of 6 months with surcharge, the situation is not quite the same since the R134 (1) EPC explicitly provides for extension.
It is possible to pay this tax in advance, however this payment can not be validly made more than 3 months in advance (R51 (1) EPC).
If the payment is made shortly before these 3 months (in practice 1 month before these 3 months), the EPO may decide not to refund the tax and to consider the payment made on the first day of these 3 months (AX 5.2.4 Guidelines).
This delay is calculated ultimo-ultimo (AX 5.2.4 Guidelines).
There is an exception for the third annuity that can be paid 6 months in advance (R51 (1) EPC).
This delay is calculated ultimo-ultimo (AX 5.2.4 Guidelines).
Late payment with surcharge
If the payment is not made on time, it remains possible to make the payment within a 6 months, subject to the payment of a surcharge (R51 (2) EPC).
It is not necessary to pay the tax and surcharge at the same time.
The applicant is notified but can not rely on a failure to notify (AX 5.2.4 Guidelines).
On the other hand, it is possible to rely on a notification received but not containing the correct date (J1 / 89).
Expiration of the period of 6 months
The principle of this extension of 6 months is the principle ultimo-ultimo : the deadline for 6 months expires on the last day of the 6th month after the expiry (J4 / 91).
Thus, if the annual fee and the surcharge can be paid up to 29/02/12 (without extension), the additional period of 6 months expires on August 31, 2012 (and not the 29/08 as one would have thought).
Starting point of the 6 month deadline
The starting point for this deadline is the last day of the month of the anniversary date of the filing of the European patent application WITHOUT take into account the R134 EPC (ie this is not a composite period: the expiry date of the earlier period does not constitute not the starting point of the new deadline).
So, we have the following situation:
[... if] this additional period does not begin to run "on the last day" of the month, [...] the additional period no longer expires at the end of the sixth month: its expiry is postponed to the seventh month, and one could then fall into the error of applying the principle of the last day again to this seventh month.
The amount of the renewal fees is progressive and is provided for atA2 (1) .4 RRT :
- for the third year: 470 €
- for the fourth year: 585 €
- for the fifth year: 820 €
- for the sixth year: 1050 €
- for the seventh year: 1165 €
- for the eighth year: 1280 €
- for the ninth year: 1395 €
- for the tenth year and each of the following years: 1575 €
The annual fee paid is refunded if:
- the application is not pending on the day of payment or if the application is no longer pending at the tax due date (AX 10.1.1 Guidelines, payment without cause);
- the payment is made more than 3 months before the deadline (see above on tolerance, AX 5.2.4 Guidelines).
If the fee is not paid (or the tax and surcharge if applicable) within the time limit, the application is deemed withdrawn (A86 (1) EPC, the important date for the "deemed withdrawn" is the expiry of the 6 months, J4 / 86, but this was called into question by the decision T1402 / 13 who considers that the important date is the date of the annuity without the grace period).
The loss of rights shall be notified only after the expiry of the 6 months.
Before, the EPO sends a simple notification that payment can still be made 6 months.
Restitutio in integrum
TheA122 EPC is applicable to the extension period of 6 monthsbut can not be requested before (eg to avoid paying the surcharge), because the deadline is not a deadline.
If the agent sends several registered letters to his client (he has little knowledge of the law EP), unfortunately to a wrong address, restitutio may be requested (J5 / 13).
End of payment of annual fees to the EPO
Years can be counted from anniversary date to anniversary date of application (eg July 25 to July 24, see " Notice concerning the payment of renewal fees for European patent applications and for European patents », OG 1984, 272).
National Offices are competent from the mention of the grant of the patent (A141 (1) EPC).
If annual fees are due in 2 months from the date on which the mention of the grant of the patent has been published in the European Patent Bulletin, such renewal fees shall be deemed to have been validly paid if they have been valid within that period. 2 months (A141 (2) EPC).
Reinstatement of rights under A122 EPC
It may happen that a deadline has not been paid during a period of time when the EPO considered that a loss of rights had occurred.
Of course, the notification of the recovery decision is a notification and therefore the provisions of the R126 (2) EPC.
In the case of R51 (4) (a) EPC where the due date occurs before the notification of reinstatement of duty, the tax is due on the day of the notification (whether this day is a holiday or not), but can simply be paid without surcharge during 4 months. These deadlines do not necessarily expire at the end of the month.
This provision only applies to patent applications. In case of re on a patent, it is necessary to look at the national law of the countries to know how to pay the annual taxes in these (if it is possible ...).
Reinstatement of rights following a review
The principle is quite similar to the one exposed for theA122 EPC above:
The same remarks can be made as before (see above).
Interruption of proceedings
Thus, this case can be summarized as follows:
In the second case presented in the figure, payment may be made without surcharge on the first day of the resumption of the procedure (J902 / 87 = "Decision of the Legal Board of Appeal, dated 17 August 1987 J ../87 », OJ 1988, 323)
Of course, unless otherwise indicated, all the provisions presented above are applicable to these particular cases.
- all annual taxes due on the date of filing of the divisional for the parent application;
- optional, to the annual fee which would expire within a 4 months from the division.
The important date is the deposit date of the parent demand (Guidelines A-IV 1.4.3), since it is from this date that the annual fees of the daughter application will be calculated.
These taxes are due to the depositbut can be paid without surcharge in a delay of 4 months from the division (R51 (3) EPC).
In addition, this payment may be made within a 6 months with surcharge (R51 (2) EPC) from the due date, ie:
- the date of filing of the divisional for the annual taxes due on the filing date of the divisional, or
- the true expiry date for the annual fee that would expire within a 4 months from the division.
The maturity X, X + 6months, X + 1, X + 1 + 6month does not necessarily arrive at the end of the month (Guidelines A-IV 1.4.3).
Case of an application filed after an unauthorized person
For cases of a new application filed as part of a stolen invention "(Ie previous application filed by an unauthorized person), the new application benefits from the date of the previous application (A61 (1) EPC together A76 (1) EPC).
However, unlike the divisional applications, the annual fees already due for the previous application are not due (R51 (6) EPC).
Case of the 3rd annual fee for EuroPCT requests
The annual fee due for the third year must be paid within the 31 months from the priority (R159 (1) (g) EPC) if this deadline has come to an end.
So, any tax is not due:
- if the international application is a priority application;
- whether the time difference between the filing of the priority application and the filing of the international application is greater than 7 months.
Case of early phase entry
In case of early entry, one may ask whether the annual fee must be paid within the actual "deadline" (ie 2 years) or within the 31-month period.
Simply put, it is the 31-month time limit that will be the maximum: the EPO will not consider a phase entry application to be valid until the annual fee has been paid (AX 5.2.4 Guidelines).
Surcharge in case of delay
If the third installment is not paid on time, it may still be paid with surcharge within a period of 6 months (R51 (2) EPC).
In the event that the payment deadline for the third installment has expired, the 31 months delay the payment with surcharge (by extending the deadline for 31 months if it falls on a closing day for one of the EPO offices, because it is a compound delay J1 / 89 and AX 5.2.4 Guidelines).
In the event that the deadline for payment of the third installment has not yet expired, the calculation of the 6 months is done as usual, that is to say using the "ultimo-ultimo" principle described above.
Only theA122 EPC is applicable to the period of 6 months.