Changes to European Divisional Applications—Removal of Two-Year Deadlines and Introduction of Divisional Fees

In a turnaround confirmed last year, the European Patent Office (EPO) has decided to remove the two-year deadline currently specified under Rule 36 EPC for filing divisionals on European patent applications. Therefore, instead of having to file a divisional application within two years of a lack of unity objection or the first Examination Report, divisional applications can now be filed at any time up to grant or refusal (including the end of the appeal period (G1/09) of a European patent application). This will take effect from April 1, 2014, and, in a further new development, will entail a divisional fee for second generation divisionals (‘granddaughters’ and beyond) additional to the standard filing fees for a European patent application.

The first divisional application will entail no fee. For subsequent divisionals, the fees are as follows:

• 210 Euro for a second generation divisional application
• 420 Euro for a third generation divisional application
• 630 Euro for a fourth generation divisional application
• 840 Euro for a fifth and each subsequent generation divisional application

Accordingly, should parties wish to file more than one divisional application (or one or more divisional applications on a currently pending divisional application) without additional fees (and still satisfy the strict requirements of Rule 36 EPC, namely still within the two-year limit and while the original parent application is still pending), then this should be done before April 1, 2014. After this date, however, there will be more flexibility on when parties can file divisional applications in Europe.

The EPO clearly wishes to discourage applicants from filing long chains of divisionals, but compared to renewal fees and other fees due on filing European patent applications, the divisional fees are not particularly high.

Other EPO Fee Changes

Effective April 1, 2014, many EPO official fees will increase. On the whole, the increases (including renewal fees) are of the order of 4 to 5%, but some fees will increase more significantly. The most notable changes include the following:

1. 50% Increase in Appeal Fee
The official fee for appealing a decision of the EPO Examination Division or Opposition Division is set to increase from 1240 Euro to 1860 Euro in what appears to be an attempt by the EPO to decrease the number of appeals being filed. However, compared to patent attorney fees and other related costs in the working of an appeal, this difference is comparatively perhaps not so onerous.

2. Refund of 50% of Appeal Fee After Grounds of Appeal Have Been Filed
Previously, an appeal fee could only be refunded where Grounds of Appeal are not filed (in due time). The EPO has now provided an incentive to appellants to withdraw appeals even after paying the appeal fee. There will be a change to Rule 103 EPC such that appeals can be withdrawn up to four weeks before scheduled Oral Proceedings and 50% of the appeal fee will be refunded.

However, the difference between the current situation, where an appeal fee of 1240 Euro would be irreversibly spent, or in a situation after April 1, 2014, where 50% of the new appeal fee (i.e. 930 Euro) would be refunded if the appeal was withdrawn after the Grounds for Appeal have been filed, is still comparatively small (a savings of 310 Euro).

3. 10% Increase in Search Fee
The fee for a European search (or supplementary European search) will increase from 1165 to 1285 Euro.

While for a single application this may not appear to be a significant change, for a large number of applications to be filed it could add up to a high cost saving if these filings are made before April 1, 2014.

4. Limit Imposed on Fee Reductions to Applicants Filing in a Non-EPO Language
Rule 6 EPC pertaining to filing translations from a non-EPO language (i.e. an official language of an EPC contracting member state which is not English, French, or German) into an EPO official language (i.e. English, French, or German) will also be amended from April 1, 2014. This will restrict the reduction to only filing and examination fees. Oppositions and appeals will no longer benefit. Perhaps most significantly, the amendment limits availability of the fee reductions to SMEs (enterprises that employ fewer than 250 people and have either an annual turnover not exceeding 50 million Euro or an annual balance sheet not exceeding 43 million Euro), natural persons, and non-profit organizations. In addition, the percentage of the fee reduction will be raised from 20 to 30%.