Instead of its customary biennial fee increase to reflect inflation, on 1 April 2018 the EPO will make selected changes to its fees. As explained below, these changes could potentially impact on your patent strategy.
Fees during the International (PCT) stage
The following changes will apply to PCT applications filed on or after 1 April 2018:
- The international search fee, any supplementary international search fee, and the preliminary examination fee levied by the EPO will all be reduced by €100.
- The EPO has also announced that various fee incentives and penalties will be introduced depending on whether all relevant documents are submitted in character-coded (XML)/DOCX format (see below).
Fees for PCT applications entering the European Regional Phase
The following changes will apply to PCT applications entering the European Regional Phase on or after 1st April 2018:
- The European supplementary search fee reduction of €190 for applications where the International Search Report (ISR) was drawn up by the US, Japanese, Korean, Chinese, Russian or Australian patent office will no longer be available.
- If a Demand has been filed during the International Phase with the EPO as the International Preliminary Examination Authority (IPEA), the European Examination fee will be reduced by 75% (the current reduction is 50%).
- The window in which a third year renewal fee can be paid will be expanded from three to six months. Thus, it will be possible to pay the third year renewal fee up to six months before it falls due. This will allow more applicants to pay the third year renewal fee upon European regional phase entry, if desired.
Fees for all European applications
- The appeal fee will increase from €1880 to €2255, except for SMEs.
- The EPO has also announced that various fee incentives and penalties will be introduced depending on whether all relevant documents are submitted in character-coded (XML)/DOCX format. However, this change will only come into effect once the EPO has finalised the required software, which is still undergoing tests. We are closely monitoring developments in this regard.
- The filing of direct European applications, and the European Regional Phase entry of pending International Applications, could be brought forward to be completed before 1 April 2018 to benefit from the reduced supplementary search fee, if applicable.
- If the window for filing an appeal includes 1 April 2018, the appeal could be filed before that date to beat the fee increase.
- In light of the changes relating to examination fees, you may wish to consider whether your business may benefit from making increased use of the EPO to draw up the ISR and/or from filing a Demand with the EPO as the IPEA. However, although this could result in some significant fee reductions, the potential cost savings must be weighed up against other strategic objectives that may favour a different approach.
If you wish to discuss how any of these changes may impact on your business, please do not hesitate to contact us.