News Alert: Significant European Patent Office Fee Changes
WHAT: The European Patent Office (EPO) is the latest of a number of patent offices worldwide taking steps reduce the backlog of patent applications awaiting examination. Following last year’s substantial increases in fees, additional claims fees and excess pages surcharges will be payable on many European patent applications (including PCT applications that enter the regional phase at the EPO after the date on which the fee increases take effect).
The rule changes in brief are:
Excess Claims Fees:
Under the existing rules, a fee of EUR200 is charged for each claim in excess of 15. From 1 April 2009, each claim in excess of 50 will attract an additional fee of EUR500.
Length of Patent Specifications:
A new fee of EUR12 for each page of a patent specification exceeding 35 pages will come into effect from 1 April 2009.
Designation Fees:
Under the current rules, a designation fee of EUR85 is payable per country designated in a European patent application, up to a maximum of seven (eg, the maximum designation fee is €595).. From 1 April 2009, individual per-country designation fees will be replaced with a flat designation fee of EUR500, payable at filing (or regional phase entry). This will represent a modest saving of €95 for most applications, since it is relatively rare that applicants designate fewer than seven countries when filing in Europe.
WHY: The EPO has announced fee increases to discourage the filing of large patent applications, and the presentation of large numbers of claims. These factors are (according to the EPO at least) key drivers of increased patent waiting times at the EPO.
WHEN: This second round of EPO fee changes will go into effect on 1 April 2009.
IMPLICATIONS: inovia, the largest processor of foreign patent filings worldwide, has IP experts who discuss the impact of the fee changes to patent owners below:
inovia’s Founder & Executive Director, Justin Simpson, notes: “Patent examination backlogs are a major source of friction in the global patent system. Whilst it is yet to be seen whether these fee changes will have a serious long-term impact on the examination backlog, the EPO is certainly tackling this issue head-on. They believe their changes will simplify the application process without undermining the fundamental incentive associated with a patent grant. Currently the regional phase is entered in Europe by around 55% of all US applicants."
inovia’s Head of Professional Services Jeff Sweetman, notes: “PCT applicants that have large numbers of claims and plan to enter the regional phase after 1 April 2009 may wish to consider reducing the number of claims at regional phase entry. Unlike the corresponding US situation, claims with multiple dependencies are allowed in Europe without surcharge and may help to reduce the number of claims necessary to secure a given scope of protection. Alternatively, it may also be possible to enter the regional phase at the EPO early (i.e., ahead of the 31 month deadline) to avoid the latest round of fee increases”
To speak with Justin or Jeff, please contact them at jeff.sweetman@inoviaip.com or justin.simpson@inoviaip.com
