From April 1, 2024, the new simplified fee system of the European Patent Office (EPO) is in force. In addition to introducing the traditional increase in most fees to compensate for inflation, the main objective of the recent changes is to provide stronger support for small entities, which will now be able to benefit from a 30% reduction in most fees related to proceedings before the EPO. This solution is intended to complement the already existing support measures, being addressed to a similar group of applicants (i.e., measures related in particular to the requirement of conducting the proceedings in the official language of the EPO when it is different from the official language of the state-party to the Convention that the applicant comes from).

The basis for the introduction of the new fee system is the decision of the Administrative Council of the European Patent Organization of December 14, 2023 (CA/D 16/23). The Decision amends the Implementing Regulations of the Convention on the Grant of European Patents (amending Rule 6 and adding Rules 7a and 7b), as well as the Rules relating to Fees (Article 14).

 

Does this mean the abolishment of the already existing support measures that Polish applicants benefited from?

 

First of all, the question may arise as to how the introduction of an additional reduction affects the existence of the existing support measures. It should therefore be clearly emphasized that the relief provided for applicants who have the place of residence/the seat/citizenship of a country whose official language is other than one of the official languages of the EPO is still available. The support measure resulting from the now-repealed rule 6(3) has been moved to the new rule 7a(1). Pursuant to the new provision of the Implementing Regulations, if a person from one of such countries files a European patent application or a request for examination in a language admitted in that provision, the filing fee or examination fee shall be reduced in accordance with the Rules relating to Fees.

 

Who can benefit from the extra reduction

 

The new Rule 7a(1) 3 added to the Implementing Regulations specifies that the following entities may benefit from additional fee reductions:

(a) microenterprises;

(b) natural persons;

(c) non-profit organisations, universities or public research organisations.

It is worth noting that the scope of entities entitled to benefit from this reduction scheme has been defined slightly differently than in the case of the so-called language-related reduction scheme. Regarding the latter, there is an additional category of entities, i.e., small and medium-sized enterprises, for which the new reduction will not be available, but at the same time there is an additional requirement regarding the place of residence or seat in Europe of the entity applying for the support measure.

 

Definitions of eligible entities

 

Regarding the interpretation of the term “microenterprises”, EPO makes a reference to Commission Recommendation 2003/361/EC of 6 May 2003. Thus, we are dealing with a microenterprise if the given entity employs fewer than 10 employees and has a balance sheet total or turnover below EUR 2 million.

As for non-profit organisation, in the Notice from the European Patent Office dated 25 January 2024 we can read that those are organisations which, by virtue of their legal form or statutes, are not permitted under the relevant law to be a source of income, profit or other financial gain for their owners, or, where they are permitted to make a profit, there is a legal or statutory obligation to reinvest the profits made in the interest of the organisation.

The Notice also explains that the term “university” shall be understood as encompassing, i.e., higher education and research institutions as defined by the relevant legislation. However, also comparable institutions, such as secondary or higher education establishments, would fall within the scope of this term.

Finally, according to the Notice, public research organisations are entities such as universities or research institutes that are organised under public law and which, irrespective of the way they are financed, have as their primary goal the conduct of fundamental research, industrial research or experimental development and the dissemination of the results by way of teaching, publication or technology transfer. All profits must be reinvested in carrying out these activities, in the dissemination of the results or in teaching.

 

The fees concerned and the reduction amount

 

 The amount of the reduction that the eligible entities can benefit from concerns the following fees listed in Rule 7a(3) of the Implementing Regulations:

1. the filing fee, including any additional fees part of the filing fee;
2. the fee for a European search or the fee for a supplementary European search in the case of a Euro-PCT application searched by an International Searching Authority (ISA) other than the EPO;
3. the examination fee, and in addition, if applicable, the previously paid international search fee where the EPO acted as ISA;
4. the designation fee;
5. the fee for grant;
6. the renewal fees for the European patent application.

The amount of the reduction is laid down in Art. 14 of the Rules relating to Fees. In principle, it shall be 30% of the relevant fee. In a special case, where the EPO has drawn up an international preliminary examination report, the examination fee shall be reduced by 75% (however, if the report was established only on certain parts of the international application and the subject-matter to be examined has not been covered by the report, the reduction is not available). It is necessary to add that it is possible to combine this reduction-scheme with the already existing language-related reduction.

 

Declaration requirement

 

Pursuant to Rule 7b, in order to benefit from the additional reduction of fees, it is necessary that the applicant submits a proper declaration at the latest at the moment of making the first payment of a reduced fee. The declaration is intended to confirm the applicant’s status as a person entitled to a reduction (i.e., indicate its belonging to one of the following categories: microenterprise, natural person, non-profit organization, university or public research organisation).

It is worth noting that in cases where we have more than one applicant, the reduction will apply if each co-applicant meets the eligibility criteria.

The applicant shall notify the EPO regarding any change in the status affecting their eligibility, no later than at the moment of the payment of a given fee. We should be aware of the fact that, when reviewing applications, the EPO will conduct random checks regarding the status of applicants; if such a check raises justified doubts as to the credibility of the declaration, it will be able to request evidence.

Where a declaration is incorrect, an application for which an unduly reduced fee has been paid, will be deemed withdrawn. In such a case, it is possible to resort to legal remedies provided under Art. 121 (further processing of the European patent application) and Art. 122 (re-establishment of rights) of the EPC; the applicant may otherwise request a decision under Rule 112(2) EPC. As for the renewal fees for European patent application, the six-month grace period in which the applicant can still pay a fee in a proper amount applies (same if no declaration has been submitted at all).

 

The cap on eligible applications for additional reduction

 

The additional reduction will not be available where the same person has filed five or more European patent applications or Euro-PCT applications within a period of five years preceding:

• the date of filing of the European patent application concerned or
• the date of entry into the European phase of the Euro-PCT application concerned.

The Administrative Council decision specifies that the relevant date for previous applications shall be the date of filing in the case of a European patent application or the date of entry into the European phase in the case of a Euro-PCT application (Rule 7a(4)).

The cap will apply regardless of whether the person has already benefited from a reduction.