Official Fees and Fee Reductions at the EPO

Official fees upon filing

The process at the EPO is initiated by filing of the application. The filing fee and search fee must be paid within one month of filing (Art. 78(2), R. 38 EPC). As of 1st April 2020, the search fee equals EUR 1350 (Rfees 2(1)2). There is not much leeway to reduce this cost. However, the filing fee depends on the filing format. The cheapest option is to file online, which costs EUR 125. Any other form of filing, such as by hand, post or fax, incurs the highest filing fee of EUR 260.

The EPO has implemented incentives to keep a patent application relatively short with a reasonable number of claims. An application exceeding 35 pages causes an increase in the filing fee of EUR 16 per page above 35 (R. 38(2) EPC, Rfees 2(1)1a). As for the claims, the 15 first claims are included in the filing fee (R. 45(1) EPC). The 16th to 50th claim costs an additional EUR 245 per claim (Rfees 2(1)15). The 51st claim and above costs an additional EUR 610 per claim (Rfees 2(1)15).

Reducing the number of claims to 15 can be done using different methods. One method is to encompass different embodiments in one claim by writing an OR-claim. For ranges or narrowing embodiments, a method is to use “preferably”, “such as”, “for example” or other expressions to specify within the claim the more preferred embodiments. The subsequent features will be regarded as optional features that do not limit the scope of the claim. This can significantly reduce the number of claims in certain situations.

Language can affect the official fees

The EP application may be based on a priority application or written in a language other than English, French and German. An applicant being resident or having a place of business within a Contracting State or being a national of that state and resident abroad, can obtain a 30% filing fee reduction (Art. 14(4), R. 6(3) EPC, Rfees 14(1)). The application must be filed in an official language of that Contracting State not being English, French or German. For instance, a Norwegian resident filing an application in Norwegian can obtain this reduction. Furthermore, the translation into English, French or German cannot be filed any earlier than simultaneously with the application in the original language. Please note that this fee reduction is only available for small and medium enterprises, natural persons, non-profit organisations, universities or public research organisations (R. 6(4)).

Other fees prior to grant

The filing and search fees are not the only fees due during prosecution. Within 6 months of mention of publication of the search report in the European Patent Bulletin, a designation fee and an examination fee (Art. 79(2), Art. 94(1), R. 39(1), R. 70(1) EPC) must be paid in order for the application to proceed further through the application process. The application will otherwise be deemed to be withdrawn. The designation fee equals EUR 610 and maintains the validity of designation of all the EPC Contracting States in the application (Rfees 2(1)3). Payment of the EUR 1700 examination fee is one of the conditions of Art. 94(1) EPC for requesting examination (Rfees 2(1)6).

Reduction of search and examination fees

As for the filing fee, the examination fee can be reduced by 30% (R. 6(3) EPC, Rfees 14(1)). This option is available for an applicant being resident or having a place of business within a Contracting State or by being a national of that state and resident abroad. The Contracting State must have an official language not being English, French or German (Art. 14(4), R. 6(3) EPC). The official language is considered to be a admissible non-EPO language. The request for examination must be filed in that admissible non-EPO language in order to obtain the fee reduction. The Request for Grant form facilitates the written request for examination. Examination should be requested in the correct admissible non-EPO language in this form. The EPO provides examples for how to request examination in the admissible non-EPO languages here.

This reduction is dependent on the same provison as the filing fee reduction. It is only available for small and medium enterprises, natural persons, non-profit organisations, universities or public research organisations (R. 6(4) EPC).

The search and examination fees can be reduced under certain circumstances when the EP application is a regional phase entry application filed under the PCT. No payment of the search fee is required if the EPO was the (S)ISA. The examination fee is EUR 1900 in this instance (Rfees 2(1)6), but the overall cost is lower compared to that of direct EP application. The fee is reduced to EUR 200 if the Austrian, Finnish, Spanish, Swedish or Turkish patent authority or the Nordic or Visegrad Patent Institute was (S)ISA. Moreover, the examination fee is reduced by 75% if EPO was the IPEA (Rfees 14(2)).

A30 of the Official Journal 2020 provides a useful overview of these scenarios.

Refund of search and examination fees

The search fee can be partially or fully refunded if the search report can be based on an earlier search report prepared by the EPO. The earlier search report must be for a priority application, divisional application or a new application filed by an entitled person (Rfees 9(2)). The definition of a full refund is a refund of between 70% and 100% of the search fee. A partial refund equals to a refund of between 17.5% and 25% of the search fee (Dec. Pres. OJ 2019 A4).

The search fee will be fully refunded if the application is withdrawn, refused or deemed to be withdrawn prior to the Search Division starting to draw up the search report (Rfees 9(1)).

The EPO will refund the examination fee in full if the application is withdrawn, refused or deemed to be withdrawn before the start of substantive examination (Rfees 11(a)). If substantive examination has started, refund of the examination fee can only be obtained by proactively abandoning the application by writing to the EPO and requesting withdrawal. If the withdrawal is received by the EPO prior to the time limit for responding to the first Art. 94(3) communication or the R. 71(3) communication if there was no Art. 94(3) communication (Rfees 11(b)), 50% of the examination fee will be refunded.

Renewal fees

Renewal fees become due at the beginning of the third patent year and each subsequent year as calculated from the date of filing, not the priority date (Art. 86(1) EPC). The renewal fee is due on the last day of the month containing the filing date anniversary (R. 51(1) EPC). The renewal fee for the 3rd year equals EUR 490 and increases each year until EUR 1640 for the 10th and each subsequent year (Rfees 2(1)4)). The annual increase is to encourage the applicant to abandon the application if there is no longer any need for the application.

The cost of grant

The fee for grant and publishing is EUR 960 (Art. 97(1), R. 71(3) EPC, Rfees 2(1)7) plus any excess claims fee if the number of claims is higher than what has previously been paid for at the beginning of prosecution. However, the cost for validating the patent in the Contracting States varies on a case-by-case basis. A granted EP patent does not automatically cover all the Contracting States. The responsibility of managing the now patent is shifted from the EPO to the different national authorities. Some national authorities offer automatic validation, such as the UK Intellectual Property Office. Some authorities, such as the Norwegian Industrial Property Office, require payment of a fee and a translation of the patent claims and/or description. The London Agreement regulates national requirements for translation of the patent. Table IV of the National Law relating to EPC provides information as to which Contracting States have acceded to the London Agreement and the national requirements for the translation. Depending on which countries the applicant chooses, the cost of national fees and translation expenses vary. Furthermore, the renewal fees are now due to the national authorities and bound by the national renewal fee systems.

Filing and prosecuting a patent application until grant requires payment of a plurality of fees. As illustrated above, there are different means to obtain fee reductions or refunds. Each fee is intended for a specific service and is generally due prior to the EPO providing the service. It is advisable to perform necessary acts within their prescribed time limit in order to keep the application pending, unless means of redress are to be applied.

Written by Live Marie Hansen