Reducing Excess Claims Fees at the EPO: What You Need To Know
Foreign agents and overseas applicants often provide a reduced set of claims when instructing entry into the European regional phase of a PCT application, aiming to minimize excess claims fees (currently €275 per claim above 15). While this cost-saving approach is often recommended, it’s important to recognize that providing an amended claim set without context or explanation can lead to additional analysis and correspondence. This often results in charges that offset, or even exceed, the savings from reducing the number of claims, often contrary to the applicant’s original intent to reduce costs.
The EPO’s Legal Requirement
Whenever claims are amended during or after entry into the European phase, the European Patent Office (EPO) requires a clear indication of the basis for those amendments in the application as originally filed (typically the PCT publication), in accordance with Rule 137(4) EPC.
If this requirement is overlooked, the EPO will issue a formal communication. The European representative must then analyze the amendments to confirm compliance with Article 123(2) EPC and prepare the corresponding legal and technical justification. While this task may be delegated to the foreign agent/applicant, the result is inevitably additional work – and increased costs.
At Bryn Aarflot, we strongly recommend that foreign associates provide the following information as part of their filing instructions. This allows us to ensure procedural compliance while keeping the overall costs and processing time to a minimum.
1. Explicit Confirmation of Intent
State clearly whether the enclosed claim set is:
- Meant to replace the originally filed claims;
- Derived from Article 19 or 34 PCT amendments; or
- A new voluntary amendment solely for fee reduction purposes.
2. Clean and Marked-up Versions of the Claims
Provide:
- A clean copy of the new claim set.
- A marked-up version showing differences from the PCT claims.
Since submitting a clean claims set alone typically requires the European representative to invest additional time clarifying changes, providing a marked-up version is strongly recommended to streamline processing and comply with the EPO’s requirement for amendment identification.
3. Detailed Basis for Each Amended Claim
Create a simple table that:
- Lists each amended, added or deleted claim;
- Identifies where in the PCT application (description, original claims, drawings) the basis is found.
- Provides quote excerpts or references to relevant paragraphs/pages/lines.
Example Table:
When preparing the claims comparison table, it is recommended to ensure that the basis for the amendments refers to the English translation of the originally filed application. Rather than referring back to the original language version, aligning the claim language and supporting references with the English translation makes it significantly easier to verify compliance with Article 123(2) EPC - both for the EPO and the European representative.
When our collaborating agents provide clear information on the basis for claim amendments upon entry into the European phase, several important benefits follow. As the European representative, we can process the application more efficiently and avoid performing time-consuming legal analysis to reconstruct the reasoning behind the amendments. Providing this information also helps prevent formalities objections from the EPO, reducing the risk of delays and ensuring a smoother and faster progression to search and examination. In short, it supports both procedural efficiency and cost-effectiveness, which are key priorities for many clients.
At Bryn Aarflot, we take a proactive approach in providing our clients and international partners with strategic administrative guidance tailored to the EPO’s procedural framework. For more information or assistance with either European direct or regional phase entries, feel free to reach out to our Patent Administration team.
This article is written by Petter Andrésen
Petter leads the patent administration department at Bryn Aarflot, bringing over 25 years of experience in intellectual property. He is particularly focused on efficient, customer-oriented case management at the European Patent Office (EPO). In 2022, he was among the first to pass the newly introduced European Patent Administration Certification (EPAC).
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