Changes to European Patent Office (EPO) fees come into effect on 1st April 2009. These changes penalise long specifications and applications with large numbers of claims. In the short term, the penalties can be avoided by filing cases before the changes come into effect. This article outlines the changes and suggests strategies to minimise the fees payable after the changes have come into effect.
Which applications are affected?
The new fee regime applies to European patent applications which are filed, or PCT applications which enter the European Regional Phase, on or after 1st April 2009.
What are the fee changes?
- An increase in claims fees
- Excess pages fees will become payable on filing
- A change in the designation fees regime
Claims fees
Currently a claim fee of €200 applies for the 16th and each subsequent claim. From 1st April 2009 there will be a claim fee of €200 for each of Claims 16 to 50 and a claim fee of €500 for the 51st and each subsequent claim. It is therefore advisable to reduce the number of claims in European patent applications where possible. Strategies to consider include:
- using multi-dependencies
- including alternatives in a single claim
- avoiding multiple independent claims in the same category (as typically only one independent claim per category will be allowed)
- avoiding claims which relate to excluded subject matter (as they will have to be deleted anyway)
When making such amendments, the very strict approach of the EPO to the issue of added subject matter must be borne in mind.
Excess page fees
The excess page fee will remain €12 per page over 35 pages (not including sequence listings), but will be payable with the filing fee and not the grant fee. For a PCT application entering the European Regional Phase, the excess page fees will be calculated based on the text at the time of Regional Phase entry, and it will not be possible to reduce excess page fees by amendment shortly after entry as can be done for claims fees. The effect of the excess page fees change will in most cases be much less significant than the increase in claims fees. However, you may wish to reduce the number of pages in European patent applications. Strategies to consider include:
- removing repeated content or embodiments that are not patentable or not desirable
- changing formatting to increase the amount of text on each page. The minimum margins required for European patent applications are 2.5 cm for the left margin and 2 cm for the other margins, and the minimum text size is text with capital letters at least 0.21 cm high. 11 point type is acceptable.
Designation fees
A single designation fee of €500 for all states will be introduced. For applicants designating all states this will give a reduction of €60 in designation fees. However, it will no longer be possible to pay separate designation fees for fewer than 7 countries. For applicants who currently designate 6 states or fewer, there will be an increase in designation fees.
Conclusion
In view of these changes, you should consider filing European patent applications or entering the European Regional Phase of PCT applications by 31st March 2009 where possible. As explained above, this is particularly important for long applications or applications with large numbers of claims.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.