Chapter 1. European demand
Section 1.1. Fees due from the EPO and 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, the last day of the anniversary month of the deposit (R51 (1) EPC).
In practice, it is advisable to add two years to the filing date and to consider the last day of the month.
N & #8217, anyone who can pay these taxes (AX 1 Guidelines).
Section 1.2. Prorogation
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:
According to the general opinion, Rule 85 (1) EPC is applicable by analogy in such a case, which is indeed correct, although, if it is strictly in the letter, it can not be applied in this way. occurrence: a #8220; expiration & #8221; can not constitute a #8220; delay & #8221; likely to be #8217; be extended to #8221;
So, if an application was filed on 03/03/07, then:
- the annual fee for the fifth year can be paid up to #8217; 31/03/11 (Thursday), and
- the annual fee for the sixth year may be paid up to #8217, as at 31/03/12 (but the deadline is extended under R134 (1) EPC #8217 & up; the 02/04/12because March 31 is a Saturday).
Attention nonetheless: the fact of #8217; R134 (1) EPC (and therefore pay without surcharge a bit 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 exactly identical since the R134 (1) EPC explicitly provides for extension.
Section 1.3. Early payment
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), 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).
1.3.2. Case of the third annuity
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).
Section 1.4. 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 take advantage of a notification received but not containing the correct date (J1 / 89).
1.4.2. Expiry 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 expiration date (J4 / 91).
Thus, if the annual fee and the surcharge can be paid up to #8217; 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).
1.4.3. Point of departure of the 6 month period
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 n & #8217; not a composite period: the date of expiry of the previous period does not constitute not the starting point of the new deadline).
So, we have the following situation:
[... if] this additional time does not start running & #8220; the last day & #8221; 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 then it may fall into the error to reapply to that seventh month the principle of the last day.
Section 1.5. Amount
The amount of the renewal fees is progressive and is provided for in 1 & T38217;A2 (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 €
Section 1.6. Refund
The annual fee paid is refunded if:
- the request is not pending at the date of payment or if the request is no longer pending at the tax due date (#8217;AX 10.1.1 Guidelines, payment without cause);
- the payment is made more than 3 months before the expiry date (see above on tolerance, AX 5.2.4 Guidelines).
Section 1.7. Sanction
If the fee is not paid (or the tax and surcharge if applicable) in due time, the request is deemed withdrawn (A86 (1) EPC, the important date for the #8220, deemed withdrawn & #8221; is the expiration date 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 payment without the grace period).
The loss of rights is notified to #8217, after the expiry of the 6 months.
Before, the EPO sends a simple notification that payment can still be made 6 months.
1.7.2. Restitutio in integrum
TheA122 EPC is applicable to the extension period of 6 months, but can not be requested before (eg to avoid paying the surcharge), because the time limit is not a delay.
If the agent sends several registered letters to his client (this one has no knowledge of EP law), unfortunately to a wrong address, restitutio can be requested (J5 / 13).
Section 1.8. End of the payment of the annual fees with the EPO and the EPO
The years can be counted from the date of the anniversary of the date of filing of the application (eg from July 25 to July 24, see & #8220;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 as from the date on which the mention of the grant of the patent has been published in the European Patent Bulletin, those annual fees shall be deemed to have been validly paid if they have been within that period of time. 2 months (A141 (2) EPC).
Section 1.9. Special cases
1.9.1. Restoration of rights under A122 EPC
It may happen that a due date has not been paid during a period of time when the EPO considered that a loss of rights was occurring.
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 expiry occurs before the notification of reinstatement of duty, the tax is due on the day of the notification (whether that day is a holiday or not), but can simply be paid without surcharge during 4 months. These delays 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 ...).
1.9.2. Restoration of rights following a review
The principle is quite similar to that stated for #8217;A122 EPC above:
The same remarks can be made as before (see above).
1.9.3. Interruption of proceedings
Thus, this case can be summarized as follows:
In the second case presented in the figure, the payment can be made without surcharge on the first day of the resumption of the procedure (J902 / 87 = & #8221;Decision of the Legal Board of Appeal, dated 17 August 1987 J ../87” , OJ 1988, 323)
Chapter 2. Special requests
Of course, unless otherwise indicated, all the provisions presented above are applicable to these particular cases.
Section 2.1. Case of #8217; a divisional application
- 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 c & #8217; 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 date of the due date for the annual fee that would expire within a 4 months from the division.
L & #8217, maturity X, X + 6months, X + 1, X + 1 + 6months n & #8217; does not necessarily arrive at the end of months (Guidelines A-IV 1.4.3).
Section 2.2. Case of an application filed after an unauthorized person
For the cases of #8217; a new application filed in the framework of #8217; a & #8220;stolen invention& #8221; (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).
Section 2.3. Case of the 3rd annual fee for EuroPCT applications
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.
2.3.2. Case of l & #8217; early entry
In the case of early entry, the question arises whether the annual fee should be paid in the #8220; true (ie 2 years) or within 31 months.
Simply put, this is the 31-month delay which will be the maximum delay: EPO will not consider an application for a phase entry as valid until the annual fee has been paid (1).AX 5.2.4 Guidelines).
2.3.3. 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, using the principle of 1 TU38220; ultimo-ultimo & #8221; described above.
Only theA122 EPC is applicable to the period of 6 months.