Will some applications be left with no Rule 6 EPC applicable following its amendment?
Following my previous blog entry on the amended Rule 6 EPC, I have been made aware of a curiosity in the transitional provisions of the new Rule 6 EPC. Namely, the transitional provisions may, in principle, be interpreted as implying that no Rule 6 EPC will be applying to a certain category of European patent applications.
Particularly, the two available wordings of the transitional provision reads (author’s emphasis):
1) Rule 6 EPC and Article 14(1) of the Rules relating to Fees as amended under Article 1 and Article 2 of this decision shall apply to European patent applications filed on or after 1 April 2014, as well as to international applications entering the European phase on or after that date.
(2) Rule 6 EPC and Article 14(1) of the Rules relating to Fees as amended under Article 1 and Article 2 of this decision shall apply to oppositions, appeals, petitions for review or requests for limitation or revocation filed on or after 1 April 2014. [1].
and
3. This amendment will enter into force on 1 April 2014. It will apply to European patent applications filed on or after that date, and to international applications entering the European phase on or after that date. Amended Rule 6 EPC and Article 14(1) RFees will apply to oppositions, appeals, petitions for review and requests for limitation or revocation filed on or after 1 April 2014. [2].
This, it would seem, implies that for direct European applications filed before 1 April 2014, but in which the examination fee is paid after 1 April 2014, the new Rule 6 EPC does not apply and the 30 % discount on the examination fee will not be available.
Furthermore, as the old Rule 6 EPC ceased to have effect on 1 April 2014, it would further seem to imply that no Rule 6 EPC will be applying to these applications and if so that no fee reduction would be available altogether.
However, it seems fair to assume that matters are not as bad as that, as surely the latter implication is not the intention of the EPO, and thus that old Rule 6 EPC will continue to apply for direct European applications filed before 1 April 2014, but in which the examination fee is paid after 1 April 2014, such that the old 20 % examination fee reduction will still be available.
This assumption would also seem to be confirmed by the EPOLine® online filing system, which asks for the filing date of the application and then, for these applications, guides the user to the possibilities of a 30 % or a 20 % examination fee reduction, no reduction not being an option.
Nevertheless, the transitional provision opens for a trap which may result in applicants inadvertently paying the wrong amount in examination fee and thus in applications being deemed withdrawn.
And what if one actually gets caught in this trap? Well fortunately the release is near and simple! Whether under the old or new Rule 6 EPC and irrespective of the specific reason for the application being deemed withdrawn, further processing is available to reinstate the application.
Furthermore, there is a chance that an erroneously paid fee is never discovered by the EPO, as the EPO will only do random checks of whether the applicant is in fact entitled to the fee reduction of Rule 6 EPC. Consequently, the patent can be granted anyway. A similar situation in the US can lead to fatal consequences since claiming small entity status without being entitled to it can be considered a fraud against the USPTO, which can lead to invalidation of the US patent. In Europe, you need not worry once your patent is granted, as an insufficient fee payment is not a ground for revoking an EP patent neither in opposition proceedings before the EPO nor in national revocation proceedings (Articles 100 and 138 EPC).
Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent
Åsa Hagström, Patent Attorney
References:
[2] Notice of the EPO dated 10 January 2014