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Notice supplementing the notice from the European Patent Office dated 26 January 2009 concerning the 2009 fee structure

OJ EPO 2009, 338

This notice contains additional information which supplements point 3.2 of the notice from the European Patent Office dated 26 January 2009 concerning the 2009 fee structure. Point 3.2 concerns the additional fee as part of the filing fee for PCT applications entering the European phase. The present notice deals with cases where the international application has not been published in an official language of the EPO.

Upon entry into the European phase, the applicant must file a translation of the international application as published by WIPO (Art. 153(4) and Rule 159(1)(a) EPC) into an EPO official language. This translation (and any subsequent amendments) must comply with the general obligation to file documents in accordance with the formal requirements of Rule 49 EPC. It will form the basis of the publication of the Euro-PCT application under Article 153(4) EPC.

For international applications entering the European phase on or after 1 April 2009, the additional fee for pages in excess of 35 is payable as part of the filing fee within the 31-month period under Rule 159(1) EPC.

This additional fee is calculated as follows:

No amendments filed on entry into the European phase

The additional fee is calculated on the basis of the international application as published, any amendments filed under Articles 19 or 34 PCT and one page for the abstract.

Amendment of the claims on entry into the European phase

If an amended set of claims is filed when the application enters the European phase, pages containing the new set of claims should be indicated clearly as pages replacing the previous set(s) of claims published by WIPO. These replacement pages must be filed in an official language of the EPO. It is not acceptable to replace only some of the claims; where an amendment is made, the entire set of claims must be submitted in an EPO official language. The replacement pages will form the basis for calculating the additional fee, i.e. the additional fee will be calculated on the basis of the number of pages of the description belonging to the international application as published by WIPO and the replacement pages containing the amended set of claims in an EPO official language.

Amendment of the description on entry into the European phase

The applicant may file a (partially) amended description to replace pages of the published international application. Such replacement pages must be submitted in an EPO official language.

The description may be amended:

  • by indicating clearly which page(s) are to be replaced in the translation of the international application as published by WIPO; or
  • by filing a complete, new version of the description as amended.

In this case, the calculation of the additional fee must be based on the translation of the description as amended.

In case of amendments of the drawings, the calculation of the additional fee is done as for the description.

Amendments filed under Articles 19 or 34 PCT

If the international application contained several sets of claims (initial set of claims, amended claims under Article 19 PCT and amended claims under Article 34 PCT), and the applicant wishes the last set of claims to be considered as an amendment filed on entry into the European phase, he must state this expressly. In that case, only the pages of the last set of claims are counted, i.e. either those filed under Article 19 PCT or those filed under Article 34 PCT in a non-official language of the EPO during the international procedure.

If the applicant has made amendments to the description (or to the drawings) under Article 34 PCT and wishes these to be taken into account in the European phase, he must file a translation of these amendments into an official language of the EPO and clearly indicate which page(s) are to be replaced in the translation of the international publication as published by WIPO. Alternatively, a complete, new version of the description as amended can be filed. In this case, the calculation of the additional fee is based on the translation of the description as amended.

In the absence of any such indication by the applicant, the additional fee is calculated on the basis of the total number of pages filed.

The calculation of the additional page fee cannot be based on pages of the description or of the claims drafted partly in an official language of the EPO and partly in another language.

Finally, applicants' attention is drawn to the fact that pages of amendments filed after the date of payment of the additional fee, and in particular during the one-month period under Rule 161 EPC, are not taken into account in the calculation. Consequently, if amendments are filed at this stage which reduce the number of pages already paid for, there will be no refund of the corresponding part of the additional fee.