In good news for individuals and smaller businesses with little experience of the European patent system, the European Patent Office will shortly be introducing additional discounts on some of its fees for certain applicants. However, there are strict and complex requirements on eligibility and caution should be used in deciding whether or not to take advantage of these.
We recently reported the EPO fee changes coming into force on 1 April 2024. From the same date, discounts of 30% on a range of fees will be available to so-called "micro-entities".
The fees that may be discounted are:
A micro-entity is set out in new Rule 7a(3) EPC as "a microenterprise, natural person, non-profit organisation, university or public research organisation". A Notice accompanying the announcement of the new Rules sets out definitions of "non-profit organisations", "universities", and "public research organisations" and refers to Article 2 of the Annex to Commission Recommendation 2003/361/EC of 6 May 2003 for the definition of microenterprise.
The EPO already provides a fee reduction regime in respect of the filing and examination fees for micro-entities (plus SMEs). However, this is open only to eligible entities having their residence or principal place of business within an EPO Contracting State having a language other than English, French or German, and to nationals of such a State that are resident abroad. This fee reduction regime will remain and is set out in new Rules 7a(1) and 7a(2).
The new fee reduction regime of new Rule 7a(3) provides micro-entities with a reduction on a greater number of fees and, importantly, does not have the nationality/domicile restrictions of the language-reduction set out in Rules 7a(1) and 7a(2). As highlighted in the notice:
"the new fee reduction scheme under Rule 7a(3) EPC applies ... irrespective of their nationality or domicile"
Both the existing and new fee reduction schemes provide a 30% reduction of the relevant fee. Furthermore, some applicants may be eligible for both types of reduction, in which case the 30% reduction is applied sequentially to the relevant fee. This new fee reduction therefore can result in significant cost savings in certain circumstances.
However, care must be taken. The new fee reduction only applies (in the case of joint applicants) where all of the applicants meet the relevant criteria (new Rule 7a(5)) and the applicant(s) must be eligible at the date of payment of the fee (new Rule 7a(6)).
In order to claim the fee reduction, applicants must expressly declare their status (new Rule 7b(1)). This can be done by ticking the appropriate box in the request for grant form or can be filed separately, but must in any event be done before paying a reduced fee. Any change in entity status must be notified to the EPO (new Rule 7b(2)). The EPO will request appropriate evidence of entity status if it has reasonable doubts as to the veracity of a Declaration (new Rule 7b(3)).
If claiming the micro-entity fee reduction it will be important for an applicant to be sure it is so-entitled. Where an applicant has incorrectly declared itself to be entitled to the fee reduction for a given application, that application will be deemed to be withdrawn (new Rule 7b(4)). However, it may be possible, depending on the circumstances, to rectify the situation using the legal remedies of Further Processing or Re-establishment of Rights.
The EPO has introduced an additional hurdle for micro-entities wishing to take advantage of the new fee reduction scheme. It will not be available on any application where the applicant has filed five or more European or Euro-PCT applications within the five years immediately preceding the date of filing the European application or the date of European regional phase entry of a PCT application as applicable (new Rule 7a(4)). The status of the previous applications and whether or not fee reductions were applied in those cases are irrelevant. The EPO will check whether this cap on earlier applications has been exceeded when eligibility for fee reductions is claimed.
Therefore, not only is the new fee reduction scheme only for very small or non-profit/research organisations, the organisations must also be light users of the European patent system. This is by design, to ensure that it is applicants with little or no experience of the system that benefit from these new support measures.
These new fee reductions for micro-entities are to be welcomed, but it remains to be seen whether they will translate into increased filings from the entities for which they are designed.
This article should not to be taken as legal advice but is intended to provide general information only.Please contact us if you would like to discuss further whether claiming these fee reductions would be suitable for you so that we can provide specific advice on a case-by-case basis.
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