Article 157(3) - OJ 2005, 577

Notice from the European Patent Office dated 28 October 2005 concerning search and examination fees

- OJ 2005, 577 -

In response to queries from European patent system users, and in the light of the Administrative Council's decision of 27 October 2005 clarifying Article 2 of the decision of 10 June 2005 (CA/D 3/05, OJ EPO 2005, 422),¹ the EPO here provides a detailed account of the legal situation with regard to the fees for European and supplementary European searches and for examination.

The diagrams annexed to this Notice give an overview of standard cases.

1. Extended European search report for applications filed on or after 1 July 2005

Under Article 3(2) of the Administrative Council's decision of 9 December 2004 (OJ EPO 2005, 5), new Rule 44a EPC² applies to European applications and international applications entering the European phase that are filed on or after 1 July 2005. For such applications, the European or supplementary European search report is accompanied by an opinion on whether the application and the invention to which it relates seem to meet the requirements of the EPC.³

The procedure established by Rule 44a EPC specifically applies to:

- European patent applications filed on or after 1 July 2005, including

- divisional applications under Article 76 EPC filed on or after 1 July 2005 (even if the earlier application has a filing date prior to 1 July 2005), and

- international applications filed on or after 1 July 2005 and subsequently entering the European phase.

Such applications are subject to the following fees (see Article 3(3) of the Council's decision of 9 December 2004, OJ EPO 2005, 5):⁴

- The search fee for the European or supplementary European search is EUR 960 (but pursuant to Council decisions taken under Article 157(3) EPC the fee for the supplementary European search is in certain cases not payable or is reduced, see point 3 below).

- The examination fee is EUR 1 280, or EUR 1 430 in the cases referred to in point 3(a) below.

2. Applications filed before 1 July 2005

Extended European search reports are not drawn up for European patent applications filed before 1 July 2005. The same applies to international applications filed before 1 July 2005, even if they enter the European phase on or after 1 July 2005.

The search fee for the European or supplementary European search is EUR 690 (but pursuant to Council decisions taken under Article 157(3) EPC the fee for the supplementary European search is in certain cases not payable or is reduced, see point 3 below).

The examination fee is EUR 1 430.

3. Supplementary European search report dispensed with or fee reduced

Under Article 157(2) EPC, a supplementary European search report is drawn up in respect of international applications entering the European-phase, and the search fee must be paid in respect of that report at the time of European phase entry. Under Article 157(3) EPC, however, the Council may decide that the supplementary European search report is to be dispensed with or that the fee is to be reduced. The situation under the Council decisions now in force pursuant to Article 157(3) EPC is as follows:

(a) No supplementary European search report is drawn up in respect of an international application for which the EPO was the International Searching Authority.⁵

Hence no search fee pursuant to Article 157(2)(b) EPC is payable.

The examination fee is EUR 1 430.⁶

(b) No supplementary European search report is drawn up in respect of an international application

- which was filed before 1 July 2005

- and for which

the Austrian Patent Office,

the Spanish Patent and Trademark Office or

the Swedish Patent and Registration Office

was the International Searching Authority.

Hence no search fee pursuant to Article 157(2)(b) EPC is payable.⁷

The examination fee is EUR 1 430.⁸

(c) A supplementary European search report including an opinion pursuant to Rule 44a EPC is drawn up in respect of an international application

- which is filed from 1 July 2005 up to and including 30 June 2008

- and for which

the Austrian Patent Office,

the National Board of Patents and Registration of Finland,

the Spanish Patent and Trademark Office or

the Swedish Patent and Registration Office

was the International Searching Authority.

The fee for the supplementary search is reduced by EUR 810⁹ and thus amounts to EUR 150.

The examination fee is EUR 1 280.

(d) A supplementary European search report without an opinion pursuant to Rule 44a EPC is drawn up in respect of an international application which was filed from 1 April 2005 up to and including 30 June 2005 and for which the National Board of Patents and Registration of Finland was the International Searching Authority.

No fee is payable for the supplementary European search.¹⁰

The examination fee is EUR 1 430.¹¹

(e) The fee for the supplementary European search is reduced if the United States Patent and Trademark Office (USPTO), the Japan Patent Office, the Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation), the Australian Patent Office, the State Intellectual Property Office of the People's Republic of China (SIPO) or the Korean Intellectual Property Office was the International Searching Authority.

- If the international application was filed before 1 July 2005, the fee for the supplementary European search is reduced by 20%¹² and thus amounts to 80% of EUR 690, ie EUR 552. The examination fee is EUR 1 430.

- If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is reduced by EUR 190¹³ and thus amounts to EUR 960 minus EUR 190, ie EUR 770. The examination fee is EUR 1 280.

(f) At present there is no Council decision reducing the fee for the supplementary European search if the Canadian Intellectual Property Office was the International Searching Authority.

- If the international application was filed before 1 July 2005, the fee for the supplementary European search is EUR 690. The examination fee is EUR 1 430.

- If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is EUR 960. The examination fee is EUR 1 280.

4. Reduction of the examination fee under Rule 107(2) EPC

Under Rule 107(2) EPC and Article 12(2), first sentence, RFees the examination fee is reduced by 50% if the EPO has drawn up an international preliminary examination report (IPER) pursuant to Rule 70 PCT.¹⁴ If the IPER was established on certain parts of the international application in accordance with Article 34(3)(c) PCT, the reduction will be allowed only if the examination is to be performed on the subject-matter covered by the IPER.

The examination fee payable under Rule 107(1)(f) EPC is as follows:

- for international applications filed before 1 July 2005, 50% of EUR 1 430, ie EUR 715

- for international applications filed on or after 1 July 2005, 50% of EUR 1 280, ie EUR 640 (see point 3(c) above), or 50% of EUR 1 430, ie EUR 715 (see point 3(a) above).

5. Lack of unity

In the cases referred to in Rules 46 and 112 EPC, the amount of the search fee for each further invention is

- EUR 690 if the application was filed before 1 July 2005

- EUR 960 if the application was filed on or after 1 July 2005.

Annex to the Notice from the European Patent Office dated 28 October 2005 concerning search and examination fees

The diagrams on the following pages provide an overview of standard cases for the payment of search and examination fees. They are for use in conjunction with the detailed explanations given in the Notice, to which reference is made in the footnotes to the diagrams (see below).

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