The ADA and their annexes have been revised, to clarify the debiting procedures and take account of developments in practice and technology since the previous version entered into force on 1 April 2014. Some editorial changes have also been made.
In particular, the automatic debiting procedure can now also be used to pay fees arising for international applications processed by the EPO as receiving Office, International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA) under the PCT.
Given the varied nature of the changes, users are recommended to read the individual revised provisions carefully.
The main changes can be summarised as follows.
Conditions of operating the account
The last paragraph of point 5.3, stating that debit orders are processed in ascending order of application number ("PCT" before "EP"), unless otherwise indicated, now also makes it clear that for Euro-PCT filings entering the European phase the "EP" (European application) number is the relevant one. So "PCT" covers international applications only.
Point 5.4 explains that account holders who do not use online services are sent statements of account several times a month, unless they have not made any transactions, in which case they will be sent just one statement per year in future.
Debiting the account
Developments with the Case Management System (CMS, or new online filing) and web-form filing will enable users to issue debit orders for particular fees, or automatic debit orders for specific European or international applications. Point 6.2 has been amended accordingly.
Revocation of a debit order
The procedure for revoking debit orders, described in point 7, applies mutatis mutandis to those with deferred execution dates under point 6.3.
Debit orders can also be revoked via CMS or web-form filing.
II. Annex A.1 to the ADA – Arrangements for the automatic debiting procedure (AAD)
The AAD have been updated to reflect in particular the following:
- new procedures involving CMS and web-form filing
- extension of the automatic debiting procedure to include fees payable for international applications processed by the EPO as receiving Office, ISA or IPEA.
The main PCT fees now covered by the automatic debiting procedure are: transmittal fee, search fee, international filing fee, late-payment fee, fee for restoration of the right to priority, additional search fee, fee for preliminary examination, and protest fee relating to an additional search fee (see point 3.3(a) to (p) AAD).
Automatic debiting is not allowed for the fee for a supplementary international search, the review fee relating to a supplementary international search, the supplementary search handling fee, and the late-payment fee relating to a supplementary international search (see point 4.2(a) to (d) AAD).
Details about the dates on which these PCT fees are considered to have been paid, the subsequent filing of automatic debit orders, and termination of the automatic debiting procedure are given in points 6.2, 10.2 and 13.2 to 13.3 AAD respectively.
III. Annex A.2 to the ADA – Information from the EPO concerning the automatic debiting procedure
Annex A.2 has been comprehensively updated to reflect the developments mentioned in point II above. For European applications, the main changes are as follows:
- Under Rule 6 EPC and Article 14(1) RFees, a new system of language-based fee reductions has been introduced. One of its effects is that Rule 6(3) EPC in conjunction with Article 14(1) RFees now only covers filing and examination fees.
- Rule 164 EPC as amended enables applicants who pay a (new) search fee to obtain a search on any invention claimed that the EPO did not search in the international phase. The new rule is in two parts. Rule 164(1) EPC provides for a procedure under which the EPO performs a supplementary European search, i.e. where it did not act as ISA or SISA (Supplementary International Searching Authority), whereas Rule 164(2) EPC provides for one under which the supplementary European search report is dispensed with under Article 153(7) EPC, i.e. where the EPO did act as ISA or SISA for the application.
Annex A.2 also gives details about the automatic debiting procedure applicable to international applications. In particular, an automatic debit order filed in proceedings before the EPO as receiving Office, ISA or IPEA does not apply to fees payable to the EPO in European proceedings in which it is acting as designated or elected Office. For that, a separate automatic debit order has to be filed (see point 2.2 AAD and point 2 of Annex A.2 to the ADA).
IV. Transitional procedure for filing automatic debit orders with the EPO as receiving Office to pay fees in PCT proceedings
With effect from 1 April 2015 and until such time as the electronic filing tools accepted by the EPO as receiving Office, in particular EPO online filing (OLF), PCT-SAFE, CMS and ePCT, are fully operational, automatic debit orders can be filed using Form PCT/RO/101 (option 1), submitted subsequently (option 2), or filed via the Online Fee Payment tool in Online services (option 3).
During this transitional period, the use of option 2 or 3 is recommended, because choosing option 1 may delay the automatic debiting procedure.
The procedure for each of these options is as follows:
Option 1: Use of Form PCT/RO/101
Under "Payment" (OLF or PCT-SAFE), "Pay Fees" (CMS) or "Fees" (ePCT) in the electronic version of Form PCT/RO/101, first select "Other" as mode of payment from the drop-down menu, then write "Automatic debiting" in the free-text field provided. Next, tick the box authorising debiting from a deposit account, and enter the account number and account-holder details in the appropriate fields.
The completion of these steps will be considered to constitute an automatic debit order authorising the EPO as receiving Office, ISA and/or IPEA, as applicable, to debit from the deposit account indicated all fees and expenses falling due.
Option 2: Subsequent submission
Under "Payment" (OLF or PCT-SAFE) or "Pay Fees" (CMS) in the electronic version of Form PCT/RO/101, select "No payment at the time" from the drop-down menu, then finish filing the international application. An automatic debit order can then be filed subsequently using OLF (and the PCT-SFD plug-in) or CMS (on Form 1038).
In particular "automatic debiting" can be selected as mode of payment from the drop-down menu under "Payment" (OLF) or "Pay Fees " (CMS), and the account number and account-holder details entered in the appropriate fields.
Option 3: Using Online Fee Payment in Online services (OLF)
This tool can be used to issue an automatic debit order as from the day after filing the international application (i.e. once its number is available).
V. Entry into force of the revised texts
The revised ADA and their annexes enter into force on 1 April 2015.
Date retrieved: 30 December 2018