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FAQ - applying for a patent

FAQ - applying for a patent

Questions

The procedure

Fees and costs

Your application

Patentability of computer programs

Practical advice

Answers

The procedure


How long does a granted patent stay valid?

The maximum term of a European patent is 20 years from its filing date. The patent may lapse earlier if the annual renewal fees are not paid or if the patent is revoked by the patentee or after opposition proceedings. In certain cases (medical or plant protection product patents) it is possible to extend the period of protection.


Is it possible to object to a particular application, either before or after it has been granted?

Yes, in two ways:

  1. In proceedings before the European Patent Office, following publication of a European patent application, any person may submit observations concerning the patentability of the invention to which that application or the granted patent relates. These observations must be filed in writing in English, French or German and must include a statement of the grounds on which they are based. There are no fees for presenting such observations. We advise using the official EPO web-based filing form, which has been designed to help you to formulate your observations in a structured and concise manner. It is available free of charge from the EPO website. Filing observations does not make you a party to any official proceedings the EPO undertakes, and you will not be informed by the EPO about the further outcome of the patent grant proceedings. However, it is important to note that submissions filed as third-party observations will be placed in the public part of the file of the patent application or patent and will thus be accessible to the public. The observations are communicated to the patent applicant/proprietor, who may comment on them.

    For further details see:

  2. Up to nine months after publication of the mention that a European patent has been granted, any person (with the exception of the patent proprietor themselves) may file notice of opposition to the patent with the EPO. The notice of opposition must be filed in a written reasoned statement. That means that the opponent must state at least one ground for opposition under Article 100 EPC and indicate the facts, evidence and arguments presented in support of the ground(s). Otherwise the notice of opposition will be rejected as inadmissible.

    We advise using the official EPO opposition form (2300), which can be downloaded free of charge from the EPO website. EPO Form 2300 can also be filed using Web-Form Filing, Online filing or New Online Filing (CMS). Notice of opposition is not deemed to have been filed until the opposition fee of EUR 815 has been paid.

    For further details of the opposition procedure see the European Patent Guide, point 5.5 ff.


What do I have to do to apply for a European patent?

Requests for the grant of a European patent must be filed on the form prescribed by the European Patent Office (EPO Form 1001). This should be accompanied (where applicable - i.e. where the applicant is not the inventor or is not the sole inventor) by a "Designation of the inventor" form (EPO Form 1002). An "Authorisation" (EPO Form 1003) may also be required (see "Representation" below).

European patent applications must contain:

  • a request for the grant of a European patent (EPO Form 1001)
  • a description of the invention
  • one or more claims
  • any drawings referred to in the description or the claims
  • an abstract.

 

Representation

If you do not have either a residence or a place of business within the territory of an EPC contracting state ("non-resident applicants") you must be represented by a professional representative and act through them in all proceedings, other than in filing the European patent application. You can find a professional representative in the database of professional representatives.

 

Cost of a European patent application

The following fees are payable upon filing a European patent application.

  • Filing fee: EUR 260 (for paper filings - fee code 001) or EUR 125 (for online filings - fee code 001); additional fee for the 36th and each subsequent page, if applicable: EUR 16 (fee code 501)
  • Search fee: EUR 1 350 (fee code 002).
  • Claims fees: EUR 245 (fee code 015) for the 16th and each subsequent claim up to 50, and EUR 610 for the 51st and each subsequent claim.

For divisional applications filed in respect of any earlier application which is itself a divisional application (Rule 38(4) EPC):

  • fee for a divisional application of the second generation EUR 220 (fee code 552)
  • fee for a divisional application of the third generation EUR 440 (fee code 553)
  • fee for a divisional application of the fourth generation EUR 660 (fee code 554)
  • fee for a divisional application of the fifth or any subsequent generation EUR 885 (fee code 555).

The above fees are due within one month of filing the European patent application.

Further fees are due if you decide that you wish to pursue the application after receiving the European search report.

 

Where to file

Our filing offices are located in Munich, Berlin and The Hague. You may also file by fax or online, using one of the EPO online filing tools.

The EPO's postal addresses and fax numbers can be found on the Contact page.

For further information on how to file a European patent application and on the European patent grant procedure, see The European Patent Guide - How to get a European patent, as well as Notes on EPO Form 1001 and the current Schedule of fees and expenses.


How long does the grant procedure take?

The European patent grant procedure takes about three to five years from the date your application is filed. It is made up of two main stages. The first comprises a formalities examination, the preparation of the search report and the preliminary opinion on whether the claimed invention and the application meet the requirements of the EPC. The second involves substantive examination.


Should I file a national, European or international application?

When seeking patent protection in one or more EPO member states, you can choose either to follow the national procedure in each state or to take the European route, which confers protection in all the contracting states in a single procedure.

If you want to patent your invention in one particular country only, it is advisable to file your application at the national patent office of the country concerned.

If you decide that you want a European patent, you have the choice between the direct European route and the Euro-PCT route. With the direct European route, the entire procedure is governed by the EPC alone. With the Euro-PCT route, the first phase of the grant procedure (the international phase) is subject to the PCT (Patent Cooperation Treaty), while the regional phase before the EPO as designated or elected Office is governed primarily by the EPC.

For further details see the European Patent Guide and the Euro-PCT Guide.


I have filed an international (PCT) application and want to enter the European phase. What should I do?

In order to initiate the European phase you must fulfil a number of requirements within 31 months of the filing date or, if priority has been claimed, the earliest priority date. More details can be found in the Euro-PCT Guide, point 5.2 ff.


Can I use the priority of my national patent application when filing a European application?

Yes. If you or your predecessor in title have filed an application for either a patent or the registration of a utility model or a utility certificate in or for any state party to the Paris Convention for the Protection of Industrial Property or any member of the World Trade Organization, you may claim priority when filing a European patent application in respect of the same invention. You must do so within 12 months of the date of filing of the first application.

If the previous application was filed in an EPC contracting state, you can also designate that state in the European application. The previous application whose priority you claim may also be a European or international (PCT) application.

For further details see the European Patent Guide, point 4.1.017 ff.


Do I have to appoint a professional representative?

If you have either a residence or a place of business within the territory of an EPC contracting state you are not obliged to be represented by a professional representative (European patent attorney). If you do not have either a residence or a place of business within the territory of an EPC contracting ("non-resident"), you may file a European patent application but must appoint a professional representative and act through them  afterwards. Fees may be paid by anybody.

Patent grant procedures are highly complex, so if you are not experienced in patent matters, we strongly recommend consulting a professional representative.

Representation may also be undertaken by any legal practitioner qualified in one of the EPC contracting states and having their place of business within that state, to the extent that they are entitled in that state to act as a professional representative in patent matters.

Further details can be found in the European Patent Guide, point 4.1.023 ff.


Fees and costs


How much does a European patent cost?

Fees are charged for filing (including, if applicable, an additional fee for the 36th and each subsequent page), search, designation of contracting states, claims (if more than fifteen), examination and grant and printing. Renewal fees are also payable for the third year and each subsequent year after the date of filing until a European patent is granted or until the proceedings have otherwise been closed.

The filing and search fees due at the beginning of the procedure currently amount to about EUR 1 610 (or EUR 1 475 if the application is filed online). The remaining fees are payable later. That gives applicants the opportunity to decide at each stage of the procedure whether or not to continue with their application. As a rough guide, it currently costs on average EUR 6 100 (or EUR 5 875 if the application is filed online) to take a patent application through to the grant stage.

At the post-grant stage, competence is transferred to the contracting states designated in the European patent. In some contracting states, costs may be incurred for validation of the European patent there. In order to maintain the patent, renewal fees must be paid in each designated state in which the European patent has been validated. The amount of the renewal fee varies from state to state.

The overall cost of obtaining a European patent may also include fees for the services of a patent attorney. Further details of these costs can be obtained from any patent attorney authorised to act as a professional representative before the EPO (see the searchable database of professional representatives on this website).


Can I get financial help from the EPO for patenting my invention?

No, the EPO does not provide any assistance with licensing, funding, or finding venture-capital partners. Helpful websites can be found in our useful links collection.

  • Useful links
  • Inventors' handbook

Which methods of fee payment does the EPO accept?

Fees due to the EPO may be paid by debiting your deposit account held with the EPO, by bank transfer to the EPO’s bank account or by credit card. For more information see the “Fee payments and refunds” on this website.


I have received an invoice requesting the payment of fees. How can I tell if the invoice is really from the EPO?

Beware of fake invoices from firms and individuals requesting the payment of fees for the registration or publication of a patent application. Check the payment subject and bank account number on the invoice and compare it against the EPO’s bank account on our Fee payments and refunds page and list of fees and expenses.

Visit www.epo.org/warning for further information and examples and who to contact if you have any doubts about the legitimacy of an invitation or invoice.


Your application


When can I expect to get my search report?

Enquiries about the progress of a file must be made online using EPO Form 1012, which can be downloaded free of charge from the EPO website.

For further information see:

 


How long will it take for my European patent application to be published?

Your application will be published 18 months after the filing date or the earliest priority date. You may, however, request that it be published earlier.

For further details see the European Patent Guide, point 5.3 ff.


My address has changed. How can I inform the EPO?

Requests to register a change of address for the applicant or patent proprietor must be submitted to the EPO in writing, quoting the application or patent number(s) concerned. Where appropriate, you can indicate that the change of address affects all the applications/patents belonging to the applicant/patent proprietor. In that case, you do not have to submit a list of the individual applications/patents concerned. The request must simply state that the change of address relates to all the applications/patents owned by the applicant/proprietor.

We recommend that you use EPO Form F5051.

There is no fee payable.

A change of address can be registered in the European Patent Register as long as proceedings are pending before the EPO, and until expiry of the opposition period (see Article 99(1) EPC).

For further information see:


Can I delete an inventor from, or add a further inventor to, a European patent application that has already been filed?

European patent applications have to designate the inventor. If the applicant is not the inventor or is not the sole inventor, the designation must contain a statement indicating the origin of the right to the European patent. Unless they waive this right before completion of the preparations for the publication of the European patent application, the inventor will be mentioned in the published European patent application, the European patent specification, the European Patent Register and the European Patent Bulletin.

Incorrect designations may be rectified provided that a request to this effect is received, accompanied by the consent of the wrongly designated person and the consent of the applicant for or proprietor of the patent where the request is not filed by that party. If an additional inventor is designated, the consent of the inventor(s) previously designated is not necessary. You can request rectification after the proceedings before the EPO are terminated.

Where an incorrect designation has been rectified after publication, the rectification or cancellation will also be published in the European Patent Register or European Patent Bulletin. The national patent offices will be informed accordingly. However, a new patent certificate/specification will not be issued by the EPO since the inventor was not known at the date of grant.

Note: Requests to register a change of address of the inventor can be made in writing at any time. You do not have to pay a fee or use a special form.

The Legal Division has sole responsibility for rectifying the designation of an inventor pursuant to Rule 21 EPC once an adverse decision seems likely (see Decision of the President of the EPO dated 21 November 2013 concerning the responsibilities of the Legal Division, OJ EPO 2013, 600).

For further information see:


I would like to register a licence for a European patent application. What do I have to do?

Licences in respect of European patent applications are recorded in the European Patent Register upon request of an interested party, for example the licensee or licensor. There is no prescribed form for registering a licence. Requests must, however, be filed in writing with supporting evidence, for example a copy of the contractual agreement signed by both parties, an extract thereof or some other official document. A declaration signed by both parties is also sufficient. Documentary evidence may be filed in any language. The EPO may, however, require a translation into one of its official languages to be filed. The request must be signed by an entitled party.

An administrative fee is payable for each application concerned (see Schedule of fees and expenses of the EPO, fee code 023).

The document filed in support of the request must contain the following information:

  • The name and address of the licensee and licensor.
  • The application number(s) of the application(s) concerned. Where the application to which the licence applies is a divisional application, the request must include the application number of the divisional application.
  • A list of the designated states to which the licence applies (or an indication that the request relates to all the designated states).
  • The signature of both parties. Where a party is a legal person, the signature of a natural person entitled to represent the legal entity is required, together with their name and position within the legal entity, which should be clearly printed.

Exclusive licences may also be recorded pursuant to Rule 24(a) EPC. In such cases, the registration must be requested by both parties.

Sub-licences may also be recorded, provided that the main licence has been registered (Rule 24(b) EPC).

The licence is recorded in the European Patent Register with the date on which the above-mentioned requirements are met. On that date, it becomes effective before the EPO, irrespective of the date on which it became effective between the parties.

Note

  • Registration of a licence cannot be requested before the publication of the European patent application.
  • The last day on which a licence can be recorded with the EPO is the day before the date on which the grant of the European patent is mentioned in the European Patent Bulletin. Where the patent has been granted but no request has been filed in due time, licences must be recorded with the competent national office(s), in accordance with the relevant national provisions.

The same applies to the registration of other rights, such as security rights.

For the provisions governing the cancellation of registered licences and other rights, see Rule 23(2) EPC.

The Legal Division has sole responsibility for the registration and cancellation of licences and other rights pursuant to Rules 23 and 24 EPC (see Decision of the President of the EPO dated 21 November 2013 concerning the responsibilities of the Legal Division, OJ EPO 2013, 600).

For further information see:

 


I would like to register a transfer of rights (change of ownership) for a European patent application. What do I have to do?

Registrations of transfers (assignments) of European patent applications or patents are recorded in the European Patent Register at the request of an interested party and on production of documents satisfying the EPO that the transfer has taken place. Any kind of suitable written evidence is admissible, for example a copy of or extract from an official document, or a declaration signed by both parties. We recommend that you use EPO Form F5055.

The document filed in support of the request must contain the following information:

  • The name and address of the parties (assignor and assignee).
  • The application number(s) of the application(s)/patent(s) concerned. Where the application concerned is a divisional application, the request must include the application number of the divisional application.
  • If a contractual agreement is involved, it must be signed by both parties. Where a party is a legal person, the signature of a natural person entitled to represent the legal entity is required, together with their name and position within the legal entity which should be clearly printed.

Please note that the EPO does not accept electronic signatures on documents submitted as evidence in support of a request for registration of a transfer of rights.

Documents may be filed in any language. The EPO may, however, require a translation into one of its official languages.

There is no prescribed form for such requests. They must, however, be filed in writing with the EPO, quoting the application number(s) concerned. We recommend using EPO Form F5050. The request must be signed by an entitled person, i.e. the applicant /proprietor or their representative.

An administrative fee is payable per application/patent concerned (see Schedule of fees and expenses of the EPO, fee code 022).

You should also inform the EPO if the transfer of the application/patent affects the authorisation of the representative.

The transfer becomes effective before the EPO on the date on which the above-mentioned requirements are met. The newly registered applicant/proprietor is entitled to exercise the right to the European patent application/patent before the EPO as of this date.

Note

  • During the international phase for a PCT application, the recordal of transfers must be requested with the International Bureau of the World International Property Organisation (WIPO).
  • Registration of the transfer of a European patent application can be requested at any time. The transfer will not, however, be entered in the European Patent Register before the publication of the European patent application (Article 127 EPC).

This also applies to the registration of transfers of European patents. It is important to note, however, that after grant, transfers can only be registered in the European Patent Register during the opposition period or during opposition proceedings (Rule 85 EPC). Transfers occurring during limitation proceedings will not be entered into the Register. The name of the new proprietor will, however, be mentioned as the person or entity requesting the limitation of the patent.

The Legal Division has sole responsibility for the registration of transfers pursuant to Rules 22 and 85 EPC once an adverse decision seems likely (see Decision of the President of the EPO dated 21 November 2013 concerning the responsibilities of the Legal Division, OJ EPO 2013, 600).

Further information:


I would like to register a change in the name of the applicant/proprietor. What do I have to do?

Requests for registration of a change of name in the European Patent Register must be made in writing. We recommend using EPO Form F5051.

Where multiple applications/patents are concerned, you can indicate that the change of name applies to all the applications/patents belonging to the applicant/proprietor. In that case, you do not have to submit a list of the individual applications/patents concerned. The request must simply state that it relates to all the applications/patents owned by the applicant/proprietor.

There is no fee payable. Formal documentary proof of the change of name, e.g. a certificate of marriage, an extract from the commercial register (showing the old and new names) or any other official document (which must be certified by a notary public) must, however, be submitted.

A change of name of the applicant/proprietor can be registered in the European Patent Register as long as proceedings are pending before the EPO, and until expiry of the opposition period (see Article 99(1) EPC.)

As far as legal persons (e.g. companies) are concerned, the change of name must not involve a change of legal entity. In other words the legal entity must be the same before and after the change of name.

The Legal Division has sole responsibility for registering changes of name once an adverse decision seems likely (see Decision of the President of the EPO dated 21 November 2013 concerning the responsibilities of the Legal Division, OJ EPO 2013, 600).

Further information:


Patentability of computer programs


Where can I find information on the patentability of programs for computers?

For information on the patentability of programs for computers go to Digital technologies: Hardware and software.


Practical advice


There are a number of different ways of expediting the European grant procedure. What are the differences between them?

PACE request for accelerated prosecution

PACE requests are available to applicants wishing to accelerate the search and/or examination procedures. You can make a PACE request once in each of these two procedures. PACE requests must be filed online using EPO Form 1005. They are subject to a number of requirements. In particular, the applicant must ensure that the procedure is not delayed, e.g. by requesting an extension of a time limit, failing to pay a renewal fee within the basic time limit (Rule 51(1) EPC) or causing a loss of rights, even if it can be remedied. In such cases, the EPO will remove the file from the PACE programme and a second PACE request will not be processed.

Request for early processing (Article 23(2) or 40(2) PCT) (Euro-PCT applications)

If you are interested in shortening the international phase of your PCT application, you can file a request for early processing under Articles 23(2) or 40(2) PCT. An effective request for early processing enables the EPO to start acting as designated or elected Office before expiry of the 31-month time limit (Rule 159(1) EPC). For further details, see “How can I request early processing of a Euro-PCT application and when will my request take effect?” below.

Waiver of the right to the communication under Rules 161 and 162 EPC (Euro-PCT applications)

You can waive your right to receive the communication under Rules 161 and 162 EPC. This will shorten the period until search or substantive examination starts by at least six months. The waiver is only valid if the requirements under Rule 161(1) EPC (mandatory reply to the written opinion of the International Searching Authority, if applicable) and Rule 162 EPC (payment of any claims fees) have been complied with on entry into the European phase. Otherwise, the communication under Rules 161 and 162 EPC will be issued and the application will be processed only after expiry of the six-month period under Rules 161(1) and 162(2) EPC, even if a PACE request has been filed.

Waiver of the right to the communication under Rule 70(2) EPC (EP-direct and Euro-PCT applications)

You can also waive your right to receive the communication under Rule 70(2) EPC (confirmation to proceed further to examination), provided that the request for examination was validly made, by payment of the examination fee, before issuance of the European (supplementary) search report. Instead of waiting for a period of approximately six months from receipt of the European (supplementary) search report, the file proceeds directly to examination. Please note, however, that waiving your right to the communication under Rule 70(2) EPC means that you unconditionally agree to maintain the European patent application, irrespective of the results of the European (supplementary) search.

Requests for early processing and waivers can be made in EPO Form 1200, by ticking sections 12.1 or 12.2.

The waiver to receive the communication under Rule 70(2) EPC can be made in EPO Form 1001, by ticking section 5.1. Requests for early processing and waivers of the Rule 161/162 communication are not relevant to EP-direct applications.


How can I request early processing of a Euro-PCT application and when will my request take effect?

Euro-PCT applications for which a request to enter the European phase has been filed are, as a rule, not processed before expiry of the 31-month time limit under Rule 159(1) EPC.

However, you can ask the EPO as designated or elected Office to start processing your application earlier. To do this you should file an express request for early processing under Article 23(2) PCT or, where applicable, Article 40(2) PCT. You can file such a request at any time before expiry of the 31-month time limit, even if the international application has not yet been published. The easiest way is to tick the checkbox in section 12.1 “Early processing” in EPO Form 1200. For the request to take effect, you must fulfil the requirements for entry into the European phase as if the 31-month time limit mentioned above expired on the date of your request. For more information about the (minimum) requirements and for some examples, see points II.6, 7 and V. of the Notice from the EPO dated 21 February 2013 (OJ EPO 2013, 156) (see link below).

Provided that all the necessary requirements are met, your request for early processing will take effect on the day the EPO receives it. From then on the application will be processed in the same way as any “regular” Euro-PCT application (i.e. one without a request for early processing) that has entered the European phase. It will then also be possible to file a divisional application deriving from your Euro-PCT application (see J 18/09).

More detailed information, including the legal consequences of filing an effective request for early processing, can be found in the Notice from the EPO dated 21 February 2013 concerning the request for early processing (OJ EPO 2013, 156).

 


If I file a request for early processing of a Euro-PCT application, can I use the automatic debiting procedure to pay the fees?

If you file a request for early processing and you wish to pay your fees via automatic debit order, you should bear in mind that automatic debiting can only be performed if the EPO can establish whether or not a page fee needs to be included as part of the filing fee. This is only possible if the EPO has access to the documents referred to in Article 20 PCT, i.e. if

  • the international application has already been published at the time the request for early processing is received,
  • the EPO is the receiving Office, or
  • the EPO acts as (S)ISA or IPEA.

If these requirements are not met, you should choose another means of payment. If you nevertheless wish to use automatic debiting, the fees due will be debited on the date of receipt of the documents referred to in Article 20 PCT from the International Bureau under Rule 47.4 PCT. In this case, the date on which the request for early processing takes effect will be postponed to that date.


I want to “enter early” into the European phase and use automatic debiting to pay any fees falling due. What do I have to bear in mind?

The following examples illustrate the different situations which can arise, depending on when the request for early processing is filed. They supplement the information given in the notice from the EPO dated 27 September 2017 concerning revision of the Arrangements for deposit accounts and their annexes.

A. The documents referred to in Article 20 PCT are available to the EPO

Example 1: The international application is published in Japanese. The international application and the international search report (ISR) are published on 09.11.2017. On 15.11.2017 the applicant files a request for early processing and indicates automatic debiting as method of payment. On the day the request is filed, the deposit account contains sufficient funds to cover the fees falling due under Rule 159(1) EPC.[1] However, the applicant fails to file the translation of the international application under Rule 159(1)(a) EPC. As a result, the request for early processing will only take effect, and the fees be debited, when the EPO as designated or elected Office receives the translation.

Example 2: The applicant in the above example files the translation on 21.12.2017. As from that date the international phase is terminated in respect of the EPO as designated Office, and the Euro-PCT application is processed in the European phase. As a consequence, the examination and designation fees will be debited automatically in accordance with points 5.1 and 6 of the Arrangements for the automatic debiting procedure (AAD) on 09.05.2018, i.e. six months from the publication date of the ISR (Rules 70(1) and 39(1) EPC). Similarly, the third-year renewal fee will be debited on the last day of the month containing the third anniversary of the date of filing (Rule 51(1) EPC).

B. The documents referred to in Article 20 PCT are not yet available to the EPO

Example 3: A request for early processing under Article 23(2) PCT is filed together with a request for automatic debiting on 14.11.2017. The documents referred to in Article 20 PCT are not yet available to the EPO. The EPO issues a communication (EPO Form 1231) informing the applicant that the fees due must be paid by another means of payment; otherwise, the fees due under Rule 159(1) EPC will be automatically debited on the date the documents referred to in Article 20 PCT are received from the IB, and the request for early processing will then take effect on that date. On 22.11.2017 the applicant pays the filing fee, the additional fee and the search fee by bank transfer. On receipt of the documents referred to in Article 20 PCT, the EPO will verify that the additional fee paid was correct. If it was too low, the request for early processing will take effect when the shortfall is made good. If the additional fee (and all other fees due) are correctly paid, the effective date of early entry is the date on which the payment is received on the EPO bank account. Any further fees under Rule 159(1) EPC falling due at a later date will be debited automatically in accordance with points 5.1 and 6 AAD.

Example 4: The applicant of example 3 does not pay separately the fees due. The documents referred to in Article 20 PCT are transmitted from the IB to the EPO under Rule 47.4 PCT on 11.12.2017. The fees due are debited automatically on that date, which is then the effective date of early entry.

Example 5: A request for early processing under Article 23(2) PCT is filed on 14.11.2017, together with a request for automatic debiting. The documents referred to in Article 20 PCT are not yet available to the EPO. Also on 14.11.2017, the applicant submits a valid debit order for the fees due under Rule 159(1) EPC. The deposit account contains sufficient funds, and the fees are debited on 14.11.2017. On receipt of the documents referred to in Article 20 PCT, the EPO will verify that the additional fee paid was correct. If it was too low, the EPO will debit any shortfall from the applicant’s deposit account, applying the principles of decision T 152/82. Provided the deposit account contains sufficient funds, the request for early processing then takes effect on 14.11.2017. Any further fees under Rule 159(1) EPC falling due at a later date will be debited automatically in accordance with points 5.1 and 6 AAD.

For further details, please see the Arrangements for deposit accounts and their annexes.

[1] For the fees payable on filing of the request for early processing, see the notice from the European Patent Office dated 21 February 2013 concerning the request for early processing (OJ EPO 2013, 156, points II.6 and 7).


I have just received an invitation to file a translation of the previous application (Rule 53(3) EPC) from the examining division. It says that if the required translation(s) is (are) not filed within the given time limit, I will lose the right of priority I am claiming for my European patent application on the basis of the previous application(s). If I do not meet the time limit for filing the translation of the priority application, will I immediately lose my priority or is there any means of redress to overcome the deficiency?

You will be sent EPO Form 2532G "Noting of loss of rights pursuant to Rule 112(1) EPC".

This loss of rights can be remedied during examination proceedings by filing either a request for further processing under Article 121 and Rule 135 EPC or a request for decision under Rule 112(2) EPC.

Please note that where translations of more than one priority document are requested and not provided in time, a further processing fee is due for each of the priorities concerned.


Why is it important for me to check the text communicated under Rule 71(3) EPC?

If you pay the fees under Rule 71(3)-(4) EPC and file the translations under Rule 71(3) EPC you are deemed to have approved the text communicated to you under Rule 71(3) EPC and to have verified the bibliographic data in that communication.

Once you have approved it, the text forms the basis for the decision to grant a European patent, and will be published in this form. That is why it is important that you should check it first.

According to decision G 1/10 of the Enlarged Board of Appeal, where an applicant does not, where necessary, request reasoned amendments or corrections to the communicated text before it is approved, the responsibility for any errors remaining in that text after grant are his alone (G 1/10 of the Enlarged Board of Appeal of 23 July 2012 (OJ EPO 2013, 194, point 11 of the reasons).


What can I do if the text of the patent specification as published is not the one I approved?

If a decision to grant contains an error made after the text has been approved by the patent proprietor (e.g. if the examining division erroneously changes the wording of a claim), such that the text as granted is not that approved by the proprietor, then the patent proprietor is adversely affected by that decision and is entitled to appeal (G 1/10, point 12 of the reasons).

Such errors must be distinguished from printing errors/errors in publication. Printing errors are errors that occur in the publication process. If such errors occur, the content of the printed specification will differ from that of the documents (Druckexemplar) transmitted to the applicant with the communication under Rule 71(3) (EPO Form 2004) and approved by him.

Printing errors/errors in publication can be corrected at any time.


I have been told that a European patent application may be filed in any language. Since I am a Danish citizen, can I file my application in Danish? Do you need a translation? Will I have to file any other translations later on?

Yes, a European patent application may indeed be filed in any language. However, if the language is not one of the EPO’s official languages (English, French or German) you need to file a translation in one of the official languages within two months of filing the application. If the translation is not filed in due time, the EPO will invite you to correct this deficiency within two months. The official language into which the application is translated constitutes the language of the proceedings and cannot be changed at a later stage. If you fail to file the translation in due time in reply to the EPO’s invitation, the application will be deemed withdrawn. In such a case you may request re-establishment of rights under Article 122 EPC.

If the examining division is of the opinion that the application and the invention to which it relates meet the requirements of the European Patent Convention, it will proceed to the grant of the European patent. At this point the applicant is invited to pay the fee for grant and publishing and to file translations of the claims in the two other official languages.

Finally, after the grant of the European patent, a validation procedure - often including translation of the patent specification and/or claims - may have to be undertaken in order to validate the patent in the designated states. More information on the validation procedure and the language requirements of the contracting states can be found in the brochure “National Law relating to the EPC”.


I want to enter into the European phase. The international application was published in Japanese. Which text is the basis for calculating the page fee: the international application as published or its translation into one of the EPO languages?

Application not amended

The page fee is based on the international application as published, regardless of the language of publication. The pages of the description, claims and drawings are counted, and one extra page is added to account for any pages with bibliographic data and the abstract.

Amended application

If amendments are filed on entry into the European phase, the page fee depends on the language in which the international application was published, i.e. one of the EPO languages or another language such as Japanese.

1. International publication in an official EPO language

If the description has been amended, the page fee is based on the description as published. In this case, the amended pages replace the respective pages of the description as published.

If the claims have been amended, you must submit the entire set even if the amendment concerns only some of them.

2. International publication not in an official EPO language

A description drafted partly in an EPO language and partly in another language such as Japanese cannot be taken as a basis for calculating the page fee. Therefore, if amendments are filed, the page fee is based on the translation of the international application which must be submitted on entry into the European phase (Article 153(4) EPC, Rule 159(1)(a) EPC).

If the description has been amended, the page fee is based on the entire translation of the description no matter what the extent of the changes. In this case, the amended pages replace the original ones.

If only the claims are amended, the page fee is based on the description as published in Japanese plus the translation of the entire set of claims as amended.

Any amendments under Article 19 PCT and/or Article 34 PCT are also considered part of the international publication and must be taken into account for the page fee unless you have indicated that the procedure in the European phase is not to be based on them. The indications you make in section 6 of EPO Form 1200 should be clear, so the EPO can readily identify the pages for which the page fee is payable. It is also advisable to complete the table on the last page of EPO Form 1200 as it will help you to calculate the correct page fee.

Example:

International application published in Japanese totalling 100 pages:

Description 80 pages
Claims 15 pages
Drawings 4 pages
Abstract 1 page

On entry into the European phase, an English translation of the international application is filed.

Case 1

No amendments are filed.

The page fee is calculated for the 100 pages (minus 35 fee-exempt pages) of the international application as published (i.e. in Japanese).

Case 2

The claim set has been amended. It replaces the original claims and any claims amended under Article 19 PCT and/or Article 34 PCT. The amended claim set consists of 20 pages.

The page fee is calculated as follows:

Description      80 pages (in Japanese)
Claims            20 pages (in English, as amended)
Drawings         4 pages
Abstract          1 page
105 pages (minus 35 fee-exempt pages)

Case 3

The claim set and description (pages 5 and 8) have been amended. The new wording replaces the original claims and pages 5 and 8 of the English translation of the original description, as well as any amendments under Article 19 PCT and/or Article 34 PCT. The amended claim set consists of 20 pages. The English translation of the description (including the replacement pages) consists of 100 pages.

The page fee is calculated as follows:

Description      100 pages (pages 1-4, 6-7 and 9-100 of the English translation, amended pages 5 and 8)
Claims            20 pages (in English, as amended)
Drawings         4 pages
Abstract          1 page
125 pages (minus 35 fee-exempt pages)


I have just received a communication under Rule 71(3) EPC and have identified some spelling mistakes I wish to correct. I have been told that I can now expressly waive my right to receive a further communication under Rule 71(3) EPC. How can I file the waiver and the request for minor amendments? Does waiving my right to the communication under Rule 71(3) EPC have any impact on the payment of the fee for grant and publication that I should be aware of (I use the automatic debiting procedure)?

Applicants may indeed indicate, in response to a communication under Rule 71(3) EPC, that they wish to waive their right to receive a further Rule 71(3) communication as provided for in Rule 71(6) EPC. This option is possible for amendments or corrections to the text proposed by the examining division which do not require resumption of the substantive examination proceedings.

Provided that the necessary formal requirements specified in the Notice from the EPO dated 8 June 2015 are fulfilled and the examining division has no objections to the amendments or corrections, the examining division is deemed to have consented to the waiver. In this case no further communication under Rule 71(3) will be sent to the applicant. Instead, “Information under Rule 71(3) EPC” (Form 2004W) will be published in the European Patent Register, with the aim of informing the applicant and the public of the text in which the examining division intends to grant the patent and the related bibliographic data, as approved by the applicant.

The waiver must be expressly indicated. No special form is needed.

With regard to the physical requirements applying to the filing of amendments, the amendments or corrections must be identified and, where applicable, their basis in the application as filed must be indicated (Rule 137(4) EPC). The relevant pages of the Druckexemplar containing the amendments or corrections must be filed.

The submitted replacement pages of the Druckexemplar must be typed, in strict compliance with Rule 50 (1) in conjunction with Rule 49(8) EPC.

By virtue of Rule 50(2) EPC, amendments and the basis for them may be indicated in handwritten form. However, if this is done, a clean copy complying with the requirements of Rule 49(8) EPC must be filed in addition.

In respect of the payment of fees, the fee for grant and publication, and any additional claims fees due under Rule 71(4) EPC, will not be debited automatically. These fees must be paid separately by another means of payment allowed under the Rules relating to Fees.

If the designation fee and a renewal fee become due after the communication under Rule 71a(3) and (4) EPC they should also be paid separately by another permitted method of payment in order not to delay the publication of the mention of the grant. The same applies to the payment of any extension or validation fees.

Additional details of the Rule 71(3) waiver can be found in the Notice from the European Patent Office dated 8 June 2015 concerning the possibility to waive the right to a further communication under Rule 71(3) EPC (OJ EPO 2015, A52).

See also the Guidelines for Examination in the European Patent Office, C-V, 4.11.


I intend to enter the European phase with an amended set of claims. My international application comprised 25 claims. Upon entry, I will delete claims 21-25 and pay five claims fees, for claims 16-20. Will the subject-matter of claims 21-25 be deemed to be abandoned under Rule 162(4) EPC?

No. Claims fees are due only for claims which are still in the application documents on which the European grant procedure is to be based (Rule 162(1) EPC). They must be paid for the 16th and each subsequent claim within the 31-month period (Rules 162(1) and 159(1) EPC). If they are not paid in due time, i.e. within the 31-month period, they may still be paid within an additional period of six months set in the communication under Rule 162(2) EPC. If they are still not paid in due time, i.e. within the additional six-month period, these claims will be deemed to be abandoned under Rule 162(4) EPC. Rule 162 EPC thus uses the term “due time” twice, in paragraphs 2 and 4, to refer to two different periods. Deemed abandonment occurs only if claims fees are not paid within the additional six-month period.

This is illustrated by the following examples:

(A) The international application comprised 25 claims. Before expiry of the 31-month period, claims 21-25 are deleted (i.e. an amended set of 20 claims is filed within the 31-month period) and five claims fees (for claims 16-20) are paid.

(B) The international application comprised 25 claims. After expiry of the 31-month period, but before expiry of the six-month period set in the communication under Rule 162(2) EPC, claims 21-25 are deleted (i.e. an amended set of 20 claims is filed) and five claims fees (for claims 16-20) are paid.

In both examples (A) and (B), claims 21-25 will not be deemed to be abandoned under Rule 162(4) EPC. They were deleted before expiry of the additional six-month period, and claims fees were paid for claims 16-20. Thus, on expiry of the additional six-month period the application documents on which the European grant procedure is to be based contained no claims for which claims fees due had not been paid.

In the following situations, on the other hand, claims will be deemed to be abandoned under Rule 162(4) EPC:

(C) The international application comprised 25 claims. Before expiry of the six-month period set in the communication under Rule 162(2) EPC, no amendments are made and five claims fees (for claims 16-20) are paid. Claims 21-25, for which no claims fees have been paid within the period under Rule 162(2) EPC, are deemed to be abandoned under Rule 162(4) EPC.

(D) The international application comprised 25 claims. Before expiry of the six-month period set in the communication under Rule 162(2) EPC, an amended set of 22 claims is filed and five claims fees (for claims 16-20) are paid. Claims 21 and 22, for which no claims fees have been paid within the period under Rule 162(2) EPC, are deemed to be abandoned under Rule 162(4) EPC.

Features of a claim deemed abandoned under Rule 162(4) EPC which are not otherwise to be found in the description or drawings cannot subsequently be reintroduced into the application, in particular the claims. “Deemed to be abandoned” means that the application is processed as if it had never contained the claims for which the applicant did not pay claims fees.


I am a patent proprietor. I have received a communication pursuant to Rule 79(1) EPC inviting me to file observations within a period of four months in reply to the opposition that has been filed against my patent. I would like to request an extension of the time limit to six months but I understand that this would not be granted “automatically”. Is there any way that I can get an extension of the time limit?

You are right that, since the introduction of the streamlined opposition procedure on 1 July 2016, requests for extensions of time limits to six months are no longer granted “automatically”. The streamlined procedure was introduced with the aim of bringing about a speedy resolution to opposition proceedings, and thus to enhance legal certainty about patent rights. The procedure also ensures your right to be heard and gives you more time to prepare for oral proceedings.

A request for extension of a time limit can be granted in exceptional, duly substantiated cases only. The reasons for the request must be sufficient to show convincingly that more time is required for the reply. This may apply when experiments or tests are needed, multiple opponents are involved or the case requires the taking of evidence.

For further information on the streamlined opposition procedure, see the