The European Patent Office has now published an updated Fee Schedule applicable from 1 April 2014. The fixed term for filing Divisional Applications will be abolished as of this date, and additional fees are being introduced under the new fee structure for Divisional Applications. There will be a general increase in fees, with a significant increase in the Appeal Fee from €1240 to €1860. There is a new provision in Rule 103 EPC for reimbursement of 50% of the Appeal Fee under certain conditions.
Currently the EPO allows a fixed two year term for filing voluntary divisional applications starting from when the first examination report is communicated to the applicant. This time-limit on the filing of divisional applications was introduced only four years ago, but it has not been effective in achieving the EPO’s aims and has instead led to a flurry of precautionary divisional applications being filed. Thus the EPO has made further changes to the regime.
Under the new Rule 36(1) EPC, effective from 1 April 2014, the filing of divisional applications will be allowed at any time as long as the earlier EP application is pending. Thus, the current two year period limiting the filing of divisional applications will be abolished. Changes to Rule 38 EPC, which enter into force on the same date, allow for an additional filing fee in respect of any divisional application which itself is filed from an earlier divisional application. Thus, the cost of filing “granddaughter” or later generation divisional applications will be increased.
The EPO have now published the new fee structure, in which Article 2 of the Rules relating to Fees states that the additional fee in respect of a divisional application filed from an application which is itself a divisional application will be €210 for a second generation divisional, €420 for a third generation divisional application, €630 for a fourth generation divisional application and €840 for a divisional application of fifth or subsequent generation.
Filing Strategies for new Divisional Applications
The new rules and fees will apply to divisional applications filed on or after 1 April 2014. For any application where the two year period has already expired, this will open up a new opportunity for filing divisional applications as long as the application is still pending on this date. For any such application which has reached the allowance stage at the EPO, various strategies might be used to delay proceedings at the EPO with the aim of delaying grant until after the new regulations come into force so that a divisional application can be filed.
Since there is no additional fee for first generation divisional applications, in most cases the filing strategy should aim to file any and all divisional applications from the original EP application in order to keep down costs. If a later generation divisional application is planned, consideration should be given to filing this before the new fee structure is introduced, and/or dividing from the earliest generation divisional application available.
For important cases, it will once again be possible to file precautionary divisional applications before receiving a possibly adverse EPO decision, albeit sometimes at an increased cost.
It should be borne in mind that the additional costs in respect of second and subsequent generation divisional applications are relatively small compared with the back renewal fees that are likely to be incurred in respect of a divisional application.
Reimbursement of the Appeal Fee
Currently the EPO allows reimbursement of the Appeal Fee (in full) where an Appeal is withdrawn before the filing of a statement of Grounds of Appeal and before the expiry of the period for filing the Grounds of Appeal. Alternatively, the Appeal Fee can be reimbursed in the event of interlocutory revision or where the Board of Appeal considers that an Appeal is allowable, and if this would be equitable because of a substantial procedural violation.
Under the new Rule 103 EPC, which enters into force on 1 April 2014, the existing provisions for full reimbursement of the Appeal Fee remain unchanged, but a new subsection (2) has been added which sets out the conditions under which 50% of the Appeal Fee should be reimbursed.
According to new Rule 103(2) EPC, 50% of the Appeal Fee shall be reimbursed where the Appeal is withdrawn after the Grounds of Appeal have been filed and after the expiry of the period for filing the Grounds of Appeal, provided that the withdrawal occurs:
- at least 4 weeks before Oral Proceedings, where a date for Oral Proceedings has been set;
- before the expiry of the period during which the Appellant may file observations in response to an invitation from the Board of Appeal, if no date for Oral Proceedings has been set;
- in all other cases, before the Decision is issued.
Previous Rule 103(2) EPC, dealing with whether the reimbursement is decided by the relevant Department or by the Board of Appeal, has been renumbered as Rule 103(3) EPC but is unchanged in substance.
New Rule 103 EPC will apply to Appeals that are pending on 1 April 2014, and to Appeals filed after this date.
The possibility of recovering 50% of the Appeal Fee provides an incentive for Appellants to withdraw their Appeal at a later stage in proceedings, for example if the initial indication of the Board of Appeal’s position is not promising. In the majority of cases this will represent only a small proportion of the total cost of preparing and filing the Appeal, however.
In view of the general increase in fees being brought in on 1 April 2014, it may be worth paying fees before 1 April 2014 where possible, in order to minimise costs. If you would like to have more detailed advice on the matters arising from this note, or on any other matter, please contact us.