OJ EPO 2009, 603

With the entry into force of the revised text of the EPC on 13 December 2007, the former Rule 85a EPC 1973 was deleted and, consequently, further processing now applies when designation fees are not paid in due time. The abolition of the "automatic grace period" has also had an impact on implementation by the European Patent Office of the so-called "extension system".

The time limits for payment of extension fees are governed by the national laws of the extension states. The national laws of some former^[ 1 ] extension states took over the automatic grace period in Rule 85a(2) EPC 1973 for the purpose of belated payment of extension fees. EPO practice developed this further and accepted any payment of an extension fee so long as payment of designation fees with respect to the relevant application was still possible. This solution was taken over in the national laws of the more recent extension states and became the sole basis for administering extension fee payments at the EPO.

Due to the above-mentioned EPC revision and in view of the national laws of the former and present extension states, however, applicants cannot effect a valid belated payment of extension fees unless a loss-of-rights communication relating to designation fees is issued under Rule 112 EPC (Guidelines for Examination, Part A, Chapter III, 12.2). Consequently, failure to pay an extension fee in due time can only be remedied in the context of further processing in respect of the loss of a designation (Art. 121, Rule 135 EPC).

As this situation has not proved to be satisfactory to the applicants, the EPO has explored the possibility of re-introducing an automatic grace period for the payment of extension fees. On the basis of the approval given by the former and present extension states (SI, RO, LT, LV, HR, MK, AL, BA, RS), the EPO has decided to change its practice with regard to the payment of extension fees and will again apply a two-month grace period for the belated payment of extension fees. This practice will be applied according to the following principles:

1. Extension fees^[ 2 ] continue to be payable within the basic period for the payment of designation fees (Rule 39, Rule 159(1)(d) EPC), i.e.:

• for European patent applications: six months from the date on which the European Patent Bulletin mentions the publication of the European search report;
• for Euro-PCT applications entering the European phase: 31 months from the date of filing (or the oldest priority date) or six months from the date of publication of the international search report, whichever is the latest.

2. If the fee for an extension state has not been paid within the basic period, the applicant can pay the extension fee in combination with a 50% surcharge^[ 3 ]

(a) within two months of expiry of the basic period ("re-introduced grace period") or

(b) within two months of notification of a communication of loss of rights with regard to the omitted payment of a designation fee (procedure applicable as of 13 December 2007; see Guidelines for Examination, Part A, Chapter III, 12.2).

3. The changes indicated under 2.(a) above apply to requests for extension where the basic payment period regarding extension fees expires on or after 1 January 2010.

4. The text of the Guidelines for Examination, Part A, Chapter III will be adapted accordingly as soon as possible.