We recently blogged about how the EPO has introduced the concept of small entities for obtaining fee reductions in procedures before the EPO. The new procedure can create a peculiar error that at least I did not foresee. The EPO Form 1001E for request for grant of a European patent contains a field, Item 5, where typically Danish, Swedish and Dutch applicants would request examination in their own languages. Before the new Rule 6(4) EPC this would give the applicant a 20% reduction of the examination fee. Now, however, the request form also contains an Item 14.1, “The/Each applicant hereby declares that he is an entity or a natural person under Rule 6(4) EPC”, that must also be checked in order to obtain the current 30% fee reduction.
If Item 14.1 is not checked when the examination is requested in an admissible non-EPO language the EPO cannot process the application any further. The same is likely also relevant if Item 14.1 is checked but examination not requested in the admissible non-EPO language. Such exception errors seem not defined in the Guidelines and will currently result in a phone call from a friendly (but probably somewhat annoyed) formalities officer suggesting how to rectify the error so that the EPO can start the search of the invention. The solution to the error can be to submit a statement to the EPO that either the request in the admissible non-EPO language is withdrawn or that the applicant is a small entity. A statement withdrawing the request for examination in the admissible non-EPO language will be registered as a request pursuant to Rule 139 EPC that the EPO can decide to allow.
Even though payment of the examination fee can be postponed to about two years after filing the application and that examination is requested after a search report has been issued, the request for examination made in an admissible non-EPO language on filing the application must be made together with checking Item 14.1.
It is not clear what will happen if no statement is sent to the EPO. Maybe this can be used as a simple and low risk way to postpone prosecution?
Anders Heebøll-Nielsen, European Patent Attorney & Certified Danish Patent Agent
