By Brad Crawford --
As we previously reported, on December 14, 2007, the Administrative Council of the European Patent Organization increased the amounts of various fees that patent applicants are required to pay. The Council's decisions can be found here and here. We summarize the changes to the claim fees below, and provide some comments regarding prosecution strategy.
Claim fees are being increased in a two step process. In the first step, which applies to all claim fees paid on or after April 1, 2008, the claim fee for the 16th and each subsequent claim is being increased to 200 EUR. Under current practice, each additional claim after the 10th is charged a fee of 45 EUR. Clearly, this is a significant increase.
All U.S. applicants filing in Europe must be aware of this, as under U.S. practice, the applicant is entitled to 20 claims. Merely filing a U.S. application containing 20 claims in Europe will cost the U.S. applicant an extra 1,000 EUR in excess claim fees. Thus, it may be prudent to reduce the number of claims by either canceling some claims or by making some of them multiply dependent.
In the second step, which applies to all European patent applications filed on or after April 1, 2009, as well as to International applications that enter the European regional phase on or after April 1, 2009, the claim fees will be changed as follows:
Claims 16 to 50 will still be charged 200 EUR each, but claim 51 (and all subsequent claims) will be charged a claim fee of 500 EUR per claim. This fee increase, while applying to relatively few applications, is quite draconian, and efforts should obviously be made to avoid it.
One way to avoid paying these higher claim fees is to pay the fees before the fee increases take effect. Quite simply, if you recently filed a European regional phase application, you may want to have your European associate pay the claim fees now, even though the European Patent Office has not issued an invitation to pay the additional claim fees and/or submit amended claims.
Another strategy is to utilize the provisions of Rule 110, which allows an applicant to file an amended claim set, after entry into the European regional phase. Rule 110 reads as follows:
Claims incurring fees
Consequence of non-payment
(1) If the application documents on which the European grant procedure is to be based comprise more than ten claims, a claims fee shall be payable for the eleventh and each subsequent claim within the period provided for in Rule 107, paragraph 1.
(2) Any claims fees not paid in due time may still be validly paid within a non-extendable period of grace of one month as from notification of a communication pointing out the failure to pay. If within this period amended claims are filed, the claims fees due shall be computed on the basis of such amended claims.
(3) Any claims fees paid within the period provided for in paragraph 1 and which are in excess of those due under paragraph 2, second sentence, shall be refunded.
(4) Where a claims fee is not paid in due time, the claim concerned shall be deemed to be abandoned.
In Europe, after an application is filed, the European Patent Office will issue a notice giving the applicant a non-extendable, one month grace period for filing an amended claim set and for paying any excess claim fees that were not previously paid (see (2) above). Thus, it is possible to reduce the number of claims to be examined, which decreases the claim fees that have to be paid.
Further, if excess claim fees were paid when the basic national fee was paid, it is still possible to submit an amended claim set containing fewer claims (again, within the non-extendable, one-month grace period) and to obtain a refund on the excess claim fees that were paid (see (3) above). A related strategy is to file multiple applications in Europe, each directed towards a different invention and each having no more claims than are necessary. This necessitates paying a new filing fee and will incur additional prosecution related expenses, but if the original application contains significantly more than 50 claims, this option should be considered.