Fee changes for PCT applications and fees applicable on entry to the European phase where the EPO was ISA or IPEA

• There will no longer be a reduction in the fee for supplementary search on entry to the European phase where the international search is carried out by any of the USPTO, JPO, SIPO, KIPO, IP Australia or Rospatent. Thus the supplementary search fee will be the same for all cases where the EPO is not the ISA.
• The international search fee and the international preliminary examination fee will both be reduced by EUR 100. The new international search fee will be EUR 1,875 and the new international preliminary examination fee will be EUR 1,775.
• The reduction in the examination fee payable on entry to the European phase when the EPO carries out the international preliminary examination will increase from its current level of 50% reduction to 75% reduction, thereby providing applicants who select the EPO as IPEA with a greater cost saving when entering the European phase.

These fee changes provide some significant discounts for applicants who follow the Chapter II path in the international phase with the EPO as IPEA and then enter the European phase.

Applicants may wish to reconsider their filing strategy in view of these changes but will need to consider whether the cost savings are sufficient reason to alter their strategy bearing in mind the business reasons behind their current strategy and the wider implications of any changes to that strategy.

Changes in appeal fee

The appeal fee payable when filing an appeal will increase by approximately 20% to EUR 2,255. This will apply to all appeal fees paid after 01 April 2018.

Appellants intending to file an appeal may wish to consider filing their notice of appeal and paying the appeal fee in advance of 01 April 2018 (where the appeal deadline has already been set) in order to benefit from the current lower rate.

Changes in fees where documents are filed online in character-coded format

In an effort to encourage applicants to file documents in the newly proposed character-coded format, the EPO are offering a reduction in the filing fee and grant fee for European applications and a reduction in the transmittal fee for international applications (filed with the EPO as receiving office) where all filing documents (description, claims, drawings and abstract) are filed in character-coded format.

Whilst the reduction in fees is due to be applied from 01 April 2018, it is not currently possible to file documents at the EPO in this format due to delays in the implementation of the pilot project designed to test the new document submission format. So, whilst the relevant rule changes will be effective from 01 April 2018, it may not actually be possible to benefit from these changes until some time after that date. We are following the developments in this area closely and will report again in due course when it is possible to benefit from the proposed discounts.

To discuss the implications of these revisions to the fees on your patent portfolio or any strategic actions to take as a result of these changes, please contact your usual D Young & Co attorney.