EPO Fee Changes from 1 April 2018

PCT (International) Applications Entering the European National Phase, Non-European ISA:

There is currently a €190 reduction in the European search fee where the international search report was drawn up by:

• United States Patent and Trademark Office (USPTO),
• Japanese Patent Office (JPO),
• Korean Intellectual Property Office (KIPO),
• Chinese Intellectual Property Office (SIPO),
• Federal Service for Intellectual Property (Russian Federation) (Rospatent),
• Australian Patent Office.

This reduction will no longer apply from 1 April 2018, so for relevant applications the cost of entering the European national phase will increase.  All applicants who select non-European International Searching Authorities (ISA) will pay the same fee as of 1 April 2018.

You may therefore wish to enter the European national phase of any pending international applications before 1 April 2018.  Please note that the EPO and our offices are closed for the Easter holidays from 30 March 2018 until 3 April 2018.

Increase in the Appeal Fees at the EPO:

The EPO appeal fees are increasing from 1 April 2018 from €1,880 to €2,255.  If you are considering filing an appeal on a case, then where possible you should do so before the 1 April 2018 deadline to save on appeal fees.

A reduced appeal fee is available from the 1 April 2018 for appeals filed by natural persons, small or medium-sized enterprises, non-profit organisations, universities and public research organisations. If you are unsure whether you are eligible for the reduced appeal fee then please do not hesitate to contact your Venner Shipley representative for clarification.

Reduction in Fees for PCT (International) Applications where the EPO is the ISA or IPEA:

The fee reductions proposed by the EPO can offer significant cost savings to applicants entering the European national phase where the ISA and IPEA for the International application was the EPO. From 1 April 2018 the following reductions will apply:

• The International Search fees will be reduced by €100, from €1,875 to €1,775;
• The International Preliminary Examination fees will be reduced by €100, from €1,930 to €1,830;
• The reduction in the examination fee payable on entry to the European phase when the EPO carries out the international preliminary examination is currently set at 50%, from 1 April 2018 this will increase to a reduction of 75%.

Fee Incentives for the Implementation of Character-Coded Format (DOCX/XML):

To promote the use of filing applications or submissions in character-coded format (DOCX/XML) the EPO are offering incentives in the form of fee reductions for those who qualify from 1 April 2018.

To qualify for the fee reduction, all documents which are the basis for proceedings before the EPO are to be filed online in this format. For example for a reduction of the filing fee the description, claims, drawings and abstract must be filed online in character-coded format. Reductions will also be available for the grant fee and transmittal fee if the EPO acts as receiving office.

However, the system has not yet been fully rolled out by the EPO, and it is not currently possible to file applications in character-coded format.

If you have any questions about your IP strategy in light of the above information or if you would like to discuss the EPO fee changes in more detail then please contact your usual Venner Shipley representative.