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Monday, 31 March 2008

Watch out: EPO fee increases ahead

As from tomorrow, as all European patent attorneys will already know, virtually all fees payable to the EPO will be going up. Some of them (claims fees and renewal fees in particular) will be rising very steeply indeed (see IPKat commentary here), while others are rising by only be a few percent. Another point to be noted is that as from tomorrow it will no longer be possible to pay fees to the EPO by cheque (the IPKat wonders: does anyone still does this?).

All the details are available from the EPO here. The IPKat wonders, given that the claims fee increases are supposed to be 'budget neutral' rather than a way of gouging patentees and paying for retiring EPO staff, how patentees and their attorneys expect to see the total amount they pay for claims changing over the next few months. Will they be rising, staying the same, or falling?


Anonymous said...

I expect the amount we'll charge on claims fees will increase slightly but the amount we'll charge for making the claims "Europe-ready" will sky-rocket.

Anonymous said...

I agree with the post above, but the rise is already putting off some SMEs from filing in Europe at all.

Anonymous said...

It would be interesting at some point in the future to see how many pending PCT applications entered the regional phase in, say, the last week in order to avoid the rise in fees.

Anonymous said...

We filed two month's worth of Euro-PCT this month - mostly at the end of last week.

I have a related question: has anybody else been unable to get through to the EPO by fax today? What's the legal situation if you make every effort to pay a fee today (sending the fax 25 times in one case) but have been unable to have the document delivered due to lack of service of the EPO's fax machines.

Fortunately, we've been able to install and use the electronic filing software for the really urgent things, so I'm not desperate to know the answer, but I'm sure someone else out there must be.

Anonymous said...

Why would you want to use a fax as primary communication tool, and epoline only as a backup? Faxes are terrible things: they take a lot of time, connection may fail, they eat 2 or more pages in one go so that only 1 page is transmitted, etc. In sum, the better way to proceed is to use epoline as primary communication tool, and faxes as backup.

Anonymous said...

epoline is still too buggy, and actually takes longer despite the EPO's constant protestations to the contrary, not least because of the ludicrous idea of putting the onus on the user to do the work of the EPO of categorising submitted documents.

And don't even get me started on the EPO wanting the user to provide an applicant code - fine if you work in industry and represent only one or two applicants but virtually impossible for private practice.

And don't tell me I don't have to do these things because I can imagine the grief I'd get from the EPO if I didn't.

Oh, and opposition and appeal documents can't be filed online - two types of documents that are more likely than anything else to be urgent and to take up a couple of hundred pages. When that little problem gets solved, then I'd be interested in electronic filing - but it's unlikely to be sooner, unless version 4 turns out to solve the various problems with version 3.

For now, if you have a lot of things to send urgently faxing is clearly the most hassle-free way - except for the fact that the EPO can't get their act together. That the EPO fax system went down a couple of weeks back and there was not a hint of a suggestion that this might be counted as a non-day or what the legal consequence would be of missing a deadline was a disgrace.

Anonymous said...

We use epoline for everything we can now. There are a small number of issues but they are far outweighed by keeping everything electronic and receiving a receipt. We certainly don't bother with the registration numbers for applicants or too much with the letter classification (I'm usually happy with whatever my secretary selects).

I find it pretty amazing that people prefer fax: it can be unreliable (more so than epoline ;), reproduction of documents is very low quality, you don't get a proper receipt and you don't get an application number (when filing).


Anonymous said...

With regard to the question of late filing of a fax to the EPO (I assume that this was for the filing of a debit order), OJ EPO Special Edition 5/2007, page 200 explains that in such cases an extension under Rule 134(1), last sentence applies where the transmission of documents by technical means (inlcuding fax) are affected by a technical interruption in the service. The extension under Rule 134(1) is, in theory, automatic.

What I would suggest in such cases is to telephone the EPO formality officer for the file and enquire if there is a disruption in the centralised fax receipt service. If there is, then you can try again the following day by fax and if this fails again repeat the procedure once per day until the fax is successfuly sent.

Keep any documentation from your fax machine which shows that your transmission to the EPO failed. If the EPO then issues a communication of a loss of rights under Rule 112(1), you can request a decision under Rule 112(2), citing this documentation as evidence that the time limit should have been extended under Rule 134(1) to the first day when the fax service resumed (which must also be the day when the fax was sent).

As a precuationary measure, in case the decision under Rule 112(2) does not go your way, you can request further processing as an auxiliary request (provided this is not excluded by Rule 135(2)) and authorise deduction of the necessary further processing fee in the event that the decision under Rule 112(2) does not go your way (see also J23/96, where the Legal Board allowed a party to have a main request under Rule 112(2) and an auxilliary request for re-establishment).

It is a cumbersome procedure I know, but it can be handled by secretarial staff rather than the agent her- or him-self and it avoids a 50% surcharge on the late paid fee for requesting further processing.

If there is not a general interruption in the EPO fax service, then it may be your telephone service provider which is experiencing problems in which case epoline is probably your only option if this is not an opposition or appeal case(and assuming your fax and Internet connections are not interlinked).

Hope this helps, best regards


Filemot said...

EPO fees can be paid directly from the EPOline website (without using the online filing software)if you have a deposit account and a smart card. You log on using the Smart card and even without a secretary its very fast and efficient -even on 31 March.
As they say in their strapline
Online Services - the way to do IP

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