Notice of the European Patent Office dated 19 July 2022 concerning revision of the Arrangements for deposit accounts and their annexes
Since 2019, when the Arrangements for deposit accounts (ADA) and their annexes were last published in full,[ 1 ] several of their provisions have been amended by separate decisions of the President of the European Patent Office. It is now necessary to make further amendments to reflect the full deployment of Central Fee Payment (CFP) and the decommissioning of Online Fee Payment (OFP) on 10 September 2022.[ 2 ]
The first section of this notice deals with the amendments to the ADA that will enter into force on 10 September 2022, the main changes being new provisions to implement a process of direct clearing of debit orders and introduce a safety net for replenishments of deposit accounts. The need to make these amendments has also been taken as an opportunity to rearrange and split up a number of existing ADA provisions to improve readability, without, however, substantially changing their content.
The second section focuses on the revision of the provisions governing the automatic debiting procedure. In particular, the texts of Annexes A.1 (Arrangements for the automatic debiting procedure (AAD)) and A.2 (Information from the EPO concerning the automatic debiting procedure (AAD)) to the ADA have been revised to reflect the full deployment of CFP and the changes this will entail for managing automatic debit orders.
The third section gives an overview of the main provisions amended by the various decisions of the President since 2019. These amended provisions are now included in a new, consolidated version of the ADA and their annexes.
Given the varied nature of the changes, users are advised to read the revised and consolidated texts carefully in full.
1. Direct clearing of debit orders
Until now, debit orders filed throughout a given day were all processed by the EPO at a single point in time during the night, together with any automatic debit orders due for that specific day. Responding to a long-standing wish from users, the EPO has now implemented a direct clearing process for debit orders.
New point 7.2.1 ADA therefore states that, as a rule, the EPO will process debit orders immediately upon their receipt, provided that there are sufficient funds in the deposit account to cover all fees included in them. Automatic debit orders, on the other hand, will continue to be processed in one batch at the end of the day marking the decisive payment date. This ensures that users can continue to submit automatic debit orders which are effective as of the date of their submission and revoke them with effect from the date of the notice of revocation.
It is therefore essential that account holders ensure that, even after deduction of all debit orders filed and processed immediately throughout the day, their deposit account will still contain sufficient funds at the end of the day to cover all automatic debit orders due on that date.
Please note that the time taken to process debit orders might vary slightly depending on the service used to submit them. While any debit orders submitted in CFP are booked immediately and displayed as booked transactions in the Transactions tab,[ 3 ] debit orders submitted via ePCT, EPO Online Filing and Online Filing 2.0 are transferred to CFP only once an hour and only then booked and displayed as booked transactions.
However, irrespective of whether debit orders are submitted via ePCT, EPO Online Filing, Online Filing 2.0 or CFP and irrespective of when they are booked, the date the EPO receives the debit order will continue to be considered the date on which the payment is made, provided there are sufficient funds in the deposit account on that date (see point 10 ADA).
Although debit orders will now be booked immediately, they can still be revoked in whole or in part on their date of receipt in accordance with the existing procedure (point 13 ADA). Provided that the notice of revocation is submitted in time and in the correct form, the fees booked immediately upon receipt of the debit order will be refunded to the relevant deposit account.
Debit orders with deferred payment dates can be revoked using the functionality for this in CFP[ 4 ] but, because debit orders with deferred payment dates are booked at the beginning of their specified execution date, this will be possible only until the end of the day preceding that execution date (see point 13.2 ADA). As an additional service, however, it will still be possible to revoke them on the execution date by submitting a signed written notice of revocation in accordance with point 13.1 ADA.
2. Clarification of the order of processing debit orders
The implementation of direct clearing of debit orders has been taken as an opportunity to clarify the order of priority in which debit orders are processed (see points 7.3 and 7.4 ADA). However, the existing prioritisation rules have not changed as a result.
Where debit orders are filed for multiple applications and fees (either by including them in the cart in CFP or by uploading a batch file), the payments are processed in ascending order of application number ("PCT" before "EP"). For Euro-PCT applications, the EP number is the relevant number. When booking the individual fees, the appeal fee and the opposition fee are given priority in view of their procedural importance and the lack of any means of legal redress if the time limit for paying them is missed. All other fees are booked in ascending order of their fee codes.[ 5 ]
This order of processing is applied for as long as there are sufficient funds in the deposit account. If the account does not contain sufficient funds to cover all the fees indicated for an application (shortfall), no other debit order will be booked. All pending debit orders are accumulated and not cleared until the account has been adequately replenished. In this case, debit orders are first prioritised according to their decisive payment date, their date of receipt or their deferred payment date. Secondly, automatic debit orders are booked before any other debit orders. Subject to this order, the orders are booked in ascending order of application number ("PCT" before "EP") and with a prioritisation of the fees as indicated above. Outstanding payments continue to be considered to have been made on the date on which the deposit account is adequately replenished.
The same rules are applied for the processing of automatic debit orders at the end of the day of each decisive payment date (see below for the changes to Annex A.1 to the ADA).
3. New safety-net provision for the replenishment of deposit accounts
A new safety-net provision has been introduced in point 7.5 for cases where arrangements were made to adequately replenish the deposit account before expiry of a time limit for making a payment but the replenishment did not reach the EPO bank account in time.
The new safety-net provision takes into account the developments made in the banking sector for transferring money, in particular the times taken to process credit transfers within the Single European Payment Area (SEPA).
In view of these developments, a new point 7.5.1 has been inserted which stipulates that, if there is a shortfall, a period for paying a fee will still be considered to have been observed if it can be shown that an adequate replenishment of the deposit account was ordered either in the form of a SEPA Credit Transfer one day before expiry of the payment period or in the form of a SEPA Instant Credit Transfer on the last day of the period.
For users from EPC contracting states not participating in the SEPA,[ 6 ] the safety-net provision allows them to submit evidence showing that they gave a banking establishment in one of these states an order to adequately replenish their deposit account at least three days before expiry of the period for paying the fee.
4. Changes resulting from the full deployment of CFP
The notice from the European Patent Office dated 2 March 2022 concerning the extension of the functionalities of Central Fee Payment (OJ EPO 2022, A25)[ 7 ] informed users about the improvements made for managing deposit accounts in CFP. These included easy access to the form for adding another deposit account, changing the account details or closing a deposit account (points 2.1 and 2.2 ADA), the option to create individual account statements and monitor the account balance (point 6.2 ADA) and access to a history of fee payments rejected by the validation function in CFP (point 9 ADA).
As OFP will be decommissioned with effect from 10 September 2022, all references to it have been deleted from the ADA and, wherever applicable, replaced by CFP.
5. Batch automatic debit orders
Point 7.1.1 ADA has been revised to reflect the new option available in CFP to submit automatic debit orders as a batch file.
6. Other editorial changes
To improve readability, former point 3 ADA, which contained provisions on replenishments, repayments of deposit account balances and transfers between deposit accounts, has been split up into separate provisions on each of these topics.
Although the EPO will continue the courtesy service of informing users when they submit debit orders or refund instructions in an invalid format, the express reference to this courtesy service has been removed from the ADA.
To reflect the decommissioning of the EPO's filing service new online filing (CMS) with effect from 1 January 2022,[ 8 ] all references to CMS have been removed from the ADA and their annexes.
II. Annexes A.1 and A.2 to the ADA concerning the automatic debiting procedure
The option of submitting automatic debit orders for multiple applications has now been reflected in Annex A.1 to the ADA (point 1.1 AAD) and Annex A.2 to the ADA (Re point 2 AAD).
CFP has been added as a means of submitting and revoking automatic debit orders in points 1.2 and 10.1 AAD and point I. of Annex A.2. Meanwhile, all references to OFP, CMS and PCT-SAFE have been removed.
A new point (l) has been added under point 3.2 to exclude from the automatic debiting procedure further search fees for a European search pursuant to Rule 56a(8) EPC[ 9 ] and any further processing fee payable if the such further search fee is paid late.
The improvements made to the CFP functions for managing deposit accounts (see above), including the possibility of viewing active automatic debit orders, are likewise reflected in Annex A.1 (point 4.1 AAD).
Unlike the processing of normal debit orders, the processing of automatic debit orders has in essence remained unchanged. Automatic debit orders will continue to be processed at the end of the day marking the decisive payment date and this has now been specified in a new point 4.4 AAD. At the same time, the existing order of priority for the processing of automatic debit orders in cases where multiple fees for multiple applications are due to be debited automatically has been set out in a new point 4.5 AAD. Shortfalls in funds and their consequences for the order of priority in which automatic debit orders are processed are governed in amended points 6 and 7 AAD.
III. Consolidated version with all changes since October 2019
The ADA and their annexes have been consolidated to include all provisions separately amended by the following decisions of the President in 2020 and 2021.
The decision of the President dated 4 June 2020 (OJ EPO 2020, A77)[ 10 ] amended points 10.3 AAD and "Re point 10 AAD" in Annex A.2 to allow for ex officio revocation of all pending automatic debit orders when a deposit account is closed, exclude the additional search fee under Rule 40bis PCT in conjunction with Rule 20.5bis PCT in the event of correction of an erroneous filing from the automatic debiting procedure (point (k) in point 3.2 AAD) and reflect the abolition of the option to waive the right to a further communication under Rule 71(3) EPC.
The decision of the President dated 18 March 2021 (OJ EPO 2021, A26), amended the ADA and their Annex A.1 to reflect the implementation of Online Filing 2.0.
Lastly, the decision of the President dated 13 July 2021 (OJ EPO 2021, A60), amended the ADA to reflect the implementation of CFP.[ 11 ]
For more information on these changes, please refer to the relevant decision as published in the Official Journal.
IV. Entry into force
The revised and consolidated texts enter into force on 10 September 2022 and supersede those dated 1 October 2019 (Supplementary publication 4 – OJ EPO 2019) as amended by the decisions of the President of the European Patent Office dated 4 June 2020 (OJ EPO 2020, A77), 18 March 2021 (OJ EPO 2021, A26) and 13 July 2021 (OJ EPO 2021, A60).
[ 1 ] Supplementary publication 4, Official Journal 2019, Arrangements for deposit accounts (ADA) and their annexes (valid as from 1 October 2019).
[ 2 ] See notice from the European Patent Office dated 19 July 2022 concerning Central Fee Payment.
[ 3 ] See notice from the European Patent Office dated 19 July 2022 concerning Central Fee Payment, point 6.
[ 4 ] Loc cit, point 21.
[ 5 ] See the description of fee codes published in the Schedule of fees and expenses applicable as from 1 April 2022 (OJ EPO 2022, Supplementary publication 2). Since the additional fee for a European patent application comprising more than 35 pages (fee codes 501 and 520) forms part of the filing fee, it is booked together with the filing fee.
[ 6 ] As at entry into force of the revised ADA: Albania, Serbia and Turkey.
[ 7 ] All information in this notice which is still relevant for users has been included in the notice from the European Patent Office dated 19 July 2022 concerning Central Fee Payment.
[ 8 ] See notice from the European Patent Office dated 14 May 2021 concerning the decommissioning of the EPO's filing service new online filing (CMS) (OJ EPO 2021, A43).
[ 9 ] See decision of the Administrative Council of 14 December 2021 inserting a new Rule 56a and amending Rules 56 and 135 of the Implementing Regulations to the European Patent Convention and amending Article 2 of the Rules relating to Fees (CA/D 2/21) (OJ EPO 2022, A3).
[ 10 ] See notice from the European Patent Office dated 4 June 2020 concerning changes to fee payment via the automatic debiting procedure (OJ EPO 2020, A78).
[ 11 ] See notice from the European Patent Office dated 13 July 2021 concerning Central Fee Payment (OJ EPO 2021, A61), which is now superseded by notice from the European Patent Office dated 19 July 2022 concerning Central Fee Payment.