Introduction of fee reductions for small entities before the EPO

In Insights, Uncategorized

15 May, 2014

Effective 1 April 2014 the Administrative Council (AC) of the EPO has changed the rules for obtaining reduction on certain fees charged in relation to the procedure before the EPO [1].

The requirement that the applicant must be a resident of or have principal place of business is in an EPC contracting state with an official language other than English, French or German or be a national of such a state who is resident abroad has not been changed.

However, the reduction obtainable has been increased from 20 % to 30 %. Now, who wouldn’t want to obtain such a reduction? Everybody, obviously! However, not everybody is eligible for fee reductions. Thus, to find out whether you are eligible for a fee reduction, read on.

According to the new Rule 6 EPC the applicant must also be a small and medium-sized enterprise (SMEs), a natural person or a non-profit organisation, university or public research organisation.

These types of applicant are defined in the EU Commission’s recommendation of 6 May 2003 [2], and outlined in a somewhat simplified manner in the Official Journal of the EPO [3].

As regards natural persons, non-profit organisations, universities and public research organisations, these types of entities are straight forward to identify.

Natural persons and non-profit organisations are considered self-explanatory. Universities are institutions of higher education and research under the relevant law. Public research organisations are institutes organized under public law with the primary purpose of conduction research and development and of disseminating the results by teaching, publication or technology transfer and which must reinvest all profits in carrying out such activities.

As regards SMEs to qualify as such three conditions must be fulfilled, namely:

a) employ fewer than 250 persons;

b) have an annual turnover not exceeding EUR 50 million and/or an annual balance sheet total not exceeding EUR 43 million; and

c) no more than 25% of the capital may be held directly or indirectly by another company that is not an SME.

When calculating these numbers for a given enterprise, any mother and daughter enterprises must be included subject to the somewhat complex rules of calculation given in [2].

If the applicant is an enterprise failing to fulfill just one of the above-mentioned criteria, no fee reductions are available any longer.

Furthermore, the new reduction of 30 % applies only to the filing fee and the fee for examination. Hence, fee reductions are no longer available for the fees for opposition, appeal, petition for review and limitation/revocation.

To obtain the reduction a declaration stating the applicant’s status must be filed with the EPO when paying the relevant fee. This may be done simply by ticking a box added to the relevant accompanying form.

And what if the applicant changes status during the pendency of an application, you may ask. Fortunately, changes in the status of the applicant occuring after the declaration is filed have no retroactive effect, and so the status of the applicant at the time the fee falls due applies.

It is also worth mentioning the EPO will perform random checks of the declarations filed. If a declaration is incorrect, the associated application will be deemed withdrawn. Fortunately, in this case further processing is available to reinstate the application.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

[1] Decision of 13 December 2013 (CA/D 19/13) the Administrative Council of the European Patent Organisation: Link
[2] Recommendation of the EU Commission dated 6 May 2003: Link
[3] Official Journal of the EPO, 2/2014, A23: Link

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