CA/D 19/09 of 28 October 2009 (OJ EPO 2009, 597), introducing the fee adjustment, hereinafter referred to as "RFees 2010", and adjusting the amount of the reduction in the fee for the supple- mentary European search where the international search report was drawn up by one of the European International Searching Authorities

CA/D 20/09 of 27 October 2009 (OJ EPO 2009, 582) amending the Implementing Regulations to the European Patent Convention

On 1 July 2010 three Administrative Council decisions enter into force:

CA/D 10/09 of 28 October 2009 (OJ EPO 2009, 593) introducing two new fees related to the supplementary inter- national search hereinafter referred to as "SIS"

CA/D 11/09 of 28 October 2009 (OJ EPO 2009, 594) dispensing with the supplementary European search where the international search report or a supplementary international search report was drawn up by the European Patent Office

CA/D 12/09 of 28 October 2009 (OJ EPO 2009, 595) reducing the fee for the supplementary European search where a supplementary international search report was drawn up by one of the European International Searching Authorities

The present Notice updates the amounts of search and examination fees to reflect RFees 2010 and the introduction of supplementary international search by the EPO as Supplementary International

Searching Authority. It replaces the corresponding Notice of 11 February 2008 (OJ EPO 2008, 130)

The new amounts of the search and examination fees will be binding on payments made on or after 1 April 2010.

Transitional arrangement: If within six months of 1 April 2010 a fee is paid in due time but only in the amount due before 1 April 2010, it will be deemed to have been validly paid if the deficit is made good within two months of an invi- tation to that effect from the European Patent Office.

The diagrams annexed to this Notice give an overview of standard cases.

1. Extended European search report for applications filed on or after 1 July 2005 In accordance with Article 3(2) of the Administrative Council's decision of 9 December 2004 (OJ EPO 2005, 5), Rule 62 EPC (= Rule 44a EPC 1973) applies to European patent applications and international applications entering the European phase that are filed on or after 1 July 2005. For such applications, the European or supplementary European search report is accompanied by an opinion on whether the application and the invention to which it relates seem to meet the requirements of the EPC. 1

The procedure established by Rule 62 EPC specifically applies to:

1 Please note that an applicant who pays the examination fee before receiving the European search report and waives the communication under Rule 70(2) EPC is sent a communication under Rule 71(1) or (3) EPC rather than an opinion under Rule 62 EPC, since a valid request for examination has already been made and the examining division becomes responsible under Rule 10(4) EPC; the explanations relating to the EPC 1973 in section II of the Notice from the EPO dated 1 July 2005 (OJ EPO 2005, 435, 437) still apply mutatis mutandis.

European patent applications filed on or after 1 July 2005, including

divisional applications under Article 76 EPC filed on or after 1 July 2005 (even if the earlier application has a filing date prior to 1 July 2005), and

international applications filed on or after 1 July 2005 and subsequently entering the European phase.

Such applications are subject to the following fees: 2

The search fee for the European or supplementary European search under RFees 2010 is EUR 1 105 (but pursuant to Council decisions taken under Article 153(7) EPC the fee for the supplementary European search is in certain cases not payable or is reduced, see point 3 below).

The examination fee under RFees 2010 is EUR 1 480, or EUR 1 645 in the cases referred to in point 3(a) below.

2. Applications filed before 1 July 2005 Extended European search reports are not drawn up for European patent applications filed before 1 July 2005. The same applies to international appli- cations filed before 1 July 2005, even if they enter the European phase on or after 1 July 2005.

The search fee for the supplementary European search 3 under RFees 2010 is EUR 800 (but pursuant to Council

2 In the special cases mentioned in footnote 1, under RFees 2010 the search fee amounts to EUR 1 105 and the examination fee to EUR 1 480. 3 In the case of European applications filed before 1 July 2005 the time limit for the payment of the fee for the European search (Article 78(2) EPC) has already expired.

decisions taken under Article 153(7) EPC the fee for the supplementary European search is in certain cases not payable or is reduced, see point 3 below).

The examination fee under RFees 2010 is EUR 1 645.

3. Supplementary European search report dispensed with or fee reduced

Under Article 153(7) EPC, a supplemen- tary European search report is drawn up in respect of international applications entering the European phase, and the search fee must be paid in respect of that report at the time of European phase entry. However, the Council may decide that the supplementary European search report is to be dispensed with or that the fee is to be reduced. The situation under the Council decisions now in force pursuant to Article 153(7) EPC is as follows:

(a) No supplementary European search report is drawn up in respect of an international application for which the EPO was the International Searching Authority or a Supplementary Interna- tional Searching Authority (as from 1.7.2010). 4

4 Decision CA/D 41/07 of the Administrative Council of 25 October 2007 dispensing with the supplementary European search where the international search report was drawn up by the European Patent Office and reducing the fee for the supplementary European search where the international search report was drawn up by the Austrian Patent Office, the National Board of Patents and Registration of Finland, the Spanish Patent and Trademark Office, the Swedish Patent and Registration Office or the Nordic Patent Institute (OJ EPO 2007, 642) and Decision CA/D 10/09 of the Administrative Council of 28 October 2009 dispensing with the supplementary European search where the international search report or a supplementary international search report was drawn up by the European Patent Office (OJ EPO 2009, 594) entering into force 1.7.2010.

The examination fee under RFees 2010 is EUR 1 645. 5

(b) No supplementary European search report is drawn up in respect of an international application

which was filed before 1 July 2005

and for which the Austrian Patent Office, the Spanish Patent and Trademark Office or the Swedish Patent and Registration Office was the International Searching Authority.

Hence no search fee pursuant to Article 153(7) EPC is payable.

The examination fee under RFees 2010 is EUR 1 645 6.

(c) A supplementary European search report including an opinion 7 pursuant to Rule 62 EPC is drawn up in respect of an international application

which is filed from 1 July 2005 up to and including 30 June 2013 and for which the Austrian Patent Office, the National Board of Patents and Registration of Finland, the Spanish Patent and Trademark Office the Swedish Patent and Registration Office or the Nordic Patent Institute was the International Searching Authority or a Supplementary International Searching Authority (as from 1.7.2010).

5 For international applications filed before 1 July 2005 point 2 above applies. For international applications filed on or after 1 July 2005 in respect of which the EPO acted as ISA, the higher examination fee is payable because no supplementary European search report is drawn up.

6 Point 2 above applies. 7 See footnote 1.

The fee for the supplementary search is reduced by EUR 940 8 and thus amounts to EUR 165.

The examination fee under RFees 2010 is EUR 1 480.

(d) A supplementary European search report without an opinion pursuant to Rule 62 EPC is drawn up in respect of an international application which was filed from 1 April 2005 up to and including 30 June 2005 and for which the National Board of Patents and Registration of Finland was the International Searching Authority.

No fee is payable for the supplementary European search. 9

The examination fee under RFees 2010 is EUR 1 645. 10

(e) The fee for the supplementary European search is reduced if the United States Patent and Trademark Office (USPTO), the Japan Patent Office, the Federal Service for Intellec- tual Property, Patents and Trademarks (Russian Federation), the Australian Patent Office, the State Intellectual Property Office of the People's Republic of China (SIPO) or the

8 Council decision of 28 October 2009, Article 2 (CA/D 19/09, OJ EPO 2009, 587), Council deci- sion of 28 October 2009 (CA/D 12/09, OJ EPO 2009, 595).

9 There is no Council decision dispensing with a supplementary European search report in cases where the National Board of Patents and Registration of Finland was the International Searching Authority. However, the reduction in the fee for the supplementary European search under the Council decision of 10 June 2005 (OJ EPO 2005, 422), which was adapted to RFees 2006 by the Council decision of 15 December 2005 (see footnote 1), also applies to the international applications referred to in point 3(d). Reducing the search fee for applications filed before 1 July 2005 by an amount greater than the fee itself means that there is no charge.

10 Point 2 above applies.

Korean Intellectual Property Office was the International Searching Authority.

If the international application was filed before 1 July 2005, the fee for the supplementary European search is reduced by 20% 11 and thus amounts to 80% of EUR 800, i.e. EUR 640.

The examination fee is EUR 1 645.

If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is reduced by EUR 190 12 and thus amounts to EUR 1 105 minus EUR 190, i.e. EUR 915.

The examination fee under RFees 2010 is EUR 1 480.

(f) At present there is no Council decision reducing the fee for the supplementary European search if the Canadian Intellectual Property Office or the Brazilian National Institute of Industrial Property was the International Searching Authority.

If the international application was filed before 1 July 2005, the fee for the supplementary European search under RFees 2010 is EUR 800.

The examination fee is EUR 1 645.

If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is EUR 1 105.

The examination fee is EUR 1 480.

11 Council decisions of 14 September 1979 (OJ EPO 1979, 368), 11 December 1980 (OJ EPO 1981, 5), 9 December 1993 (OJ EPO 1994, 6) and 8 June 2000 (OJ EPO 2000, 321). 12 Council decision of 27 October 2005 (OJ EPO 2005, 548).

4. Reduction of the examination fee under Article 14(2) RFees Under Article 14(2) RFees the exam- ination fee is reduced by 50% if the EPO has drawn up an international preliminary examination report (IPER) pursuant to Rule 70 PCT. If the IPER was established on certain parts of the international application in accordance with Article 34(3)(c) PCT, the reduction will be allowed only if the examination is to be performed on the subject-matter covered by the IPER.

The examination fee payable under Article 14(2) RFees is as follows:

for international applications filed before 1 July 2005, 50% of EUR 1 645, i.e. EUR 822.50

for international applications filed on or after 1 July 2005, 50% of EUR 1 480, i.e. EUR 740 (see point 3(c) above), or 50% of EUR 1 645, i.e. EUR 822.50 (see point 3(a) above).

5. Lack of unity In cases of lack of unity (Rule 64(1) EPC), the amount of the search fee for each further invention is

EUR 800 if the application was filed before 1 July 2005

EUR 1 105 if the application was filed on or after 1 July 2005.

References: articl2;