The EPO has recently announced, among other fee changes, new Rules enabling specific types of small companies to claim a discount of 30% on all main EPO official fees in the patent grant procedure. As will be appreciated, this could represent an important and exciting change for micro-entities, such as start-ups, looking to break into the world of European patents.
The existing language-related EPO fee reductions, only available to entities of a certain size and domiciled in certain EPC contracting states, have not changed. These new Rules provide much broader fee reductions not limited in geographical scope. The new fee reductions are available to so-called micro-entities (including microenterprises, natural persons, non-profit organisations, universities or public research organisations) irrespective of their nationality or domicile, and where applicable can even be combined with the existing reductions. Larger SMEs however do miss out on the new reductions as these are clearly targeted at smaller (or non-profit) organisations.
The changes are effective for fees paid on or after 1 April 2024, irrespective of the filing date of the European patent application or date of entry into the European regional phase for Euro-PCT applications.
Specifically, the requirements for qualifying for these new fee reductions are as follows:
- The applicant must be a microenterprise, natural person, non-profit organisation, university or public research organisation;
- The applicant must have filed fewer than five European patent applications or Euro-PCT applications within a period of five years preceding either the date of filing the European patent application or the date of entry into the European regional phase of the Euro-PCT application concerned; and
- Where there are multiple applicants for the patent application, all of the applicants must fulfil the requirements (1) and (2).
It should be noted that the “cap” on the number of applications in point (2) applies irrespective of whether the previous applications were also subject to a fee reduction and irrespective of their current status (i.e. pending, withdrawn, deemed withdrawn, refused or patent granted).
To benefit from the reductions, a suitable declaration must be submitted at the latest when the first reduced payment is made. This will be possible via a simple tick-box on the official form(s). However, the EPO may request supporting evidence if it has reasonable doubts as to the veracity of the declaration.
According to the new Rule 7a(3) EPC, effective from 1 April 2024, “where a microenterprise, natural person, non-profit organisation, university or public research organisation files a European patent application or, in respect of an international application, [enters the European regional phase], the following fees shall be reduced [by 30%]:
- filing fee;
- fee for a European or supplementary European search;
- examination fee, and in addition the previously paid international search fee where the European Patent Office acted as International Searching Authority;
- designation fee;
- fee for grant;
- renewal fees for the European patent application.
Accordingly, this can result in a significant reduction in the total costs for obtaining a European patent for qualifying applicants.
These fee reductions could therefore be very important to those innovative entities needing financial support to access the European patent system, i.e. microenterprises, natural persons, non-profit organisations, universities and public research organisations, and in particular start-ups new to the world of European patents. We look forward to seeing whether this opens the door to support innovation originating from these areas.
Further questions and possible scenarios are as follows:
What is a microenterprise?
This is defined in Article 2 of Commission Recommendation 2003/361/EC of 6 May 2003 as published in the European Union’s Official Journal (L 124 of 20 May 2003, p. 36). That is, a microenterprise is defined as an enterprise which employs fewer than 10 persons and whose annual turnover and/or annual balance sheet total does not exceed EUR 2 million.
What if the declaration concerning the applicant’s status is incorrect (i.e. it is incorrect that the applicant qualifies for the fee reduction)?
An unduly reduced fee will be deemed not to have been validly paid and the application will be deemed withdrawn under Articles 78(2), 86(1) and 94(2) EPC and Rules 39(2) and 71(7) EPC. However, for renewal fees for European patent applications, the usual six-month grace period under Rule 51(2) EPC applies so that the missing amount, including the additional fee, can still be paid within this period. The same applies where no declaration has been filed but the applicant has paid a reduced fee. This loss of rights can be remedied by, for example, Further Processing, if available.
What if the five application “cap” is exceeded but the reduced fee still paid?
The applicant will be invited to pay the missing amount within a period of two months from the date of the invitation. However, for renewal fees for European patent applications, the usual six-month grace period under Rule 51(2) EPC applies.
Is it possible to combine the existing language- and micro-entity-related fee reduction schemes?
It is possible to combine the various fee reduction schemes offered by the EPO. For example, an applicant may be eligible for fee reductions under both schemes together, with the discounts being applied consecutively. In other words, for a qualifying applicant a 51% (i.e. 30% followed by a further 30%) reduction of the filing and examination fees may be available.
What if an application is transferred?
Where an application is transferred, it will be deemed to belong to the new applicant for the purposes of both future payments and the calculation of the “cap”. This may affect the eligibility of the applicants’ other pending applications from the date of legal effect of registration of the transfer in the European Patent Register. The transfer does not affect payments made before the date of legal effect of registration of the transfer, i.e. there is no obligation to pay “top-up” fees if the new application does not qualify for the fee reductions. If the new applicant is a micro-entity, a declaration is required for micro-entity support.
What if the applicant changes entity status after payment of the reduced fees (i.e. the applicant no longer qualifies for the reductions)?
Changes in the status of an entity which occur after the filing of the declaration will take effect only for the future and will not affect any reduced fees already paid. Any change in the status of an entity under the new Rules which has requested a reduction of fees must be notified to the EPO.
For more details, please see here, here and here. If you think you may qualify for the newly announced fee reductions and/or have any questions, then please do reach out to me, boult@boult.com or your usual contact at Boult Wade Tennant LLP.
