On 1 January 2017, amendments to Rules 51(2) and 162(2) of the Implementing Regulations enter into force. ^[ 1 ] This notice gives an overview of the amendments. For more information, see CA/99/16. ^[ 2 ]

1. Rules 51(2) and 162(2) EPC have been amended in order to clarify the legal basis for the EPO’s long-standing practice in respect of renewal fees and claims fees. ^[ 3 ] The amendments do not change current practice under these provisions.

Amendment to Rule 51(2) EPC

2. Rule 51(2) EPC has been amended by adding a sentence explicitly stipulating that the deemed withdrawal of an application for non-payment of a renewal fee and any additional fee under Article 86(1) EPC ensues upon the expiry of the six-month grace period. Further, the wording of Rule 51(2), first sentence, EPC has been adjusted to clarify that a renewal fee can still be paid with a surcharge if the outstanding fee has not been paid on the due date under Rule 51(1) EPC.

Amendment to Rule 162(2) EPC

3. Within the 31-month period for taking the steps for entry into the European phase, an applicant must pay claims fees for the sixteenth and each subsequent claim on file on expiry of that period (Rule 162(1) EPC). Rule 162(2) EPC allows later payment of claims fees. This provision instructs the applicant to compute the number of claims that he wishes to have searched and/or examined and to ensure payment of the corresponding amount of claims fees before expiry of the six-month period under Rule 161 EPC. The amended wording of Rule 162(2) EPC distinguishes more clearly between two situations in which the applicant must ensure payment of claims fees before expiry of the six-month period:

3.1 Rule 162(2), first sentence, EPC covers the situation in which the applicant does not file amendments after expiry of the 31-month period and before expiry of the six-month period under Rule 161 EPC. In this case, the applicant must ensure that any claims fees not yet paid for the set of claims filed within the 31-month period are paid before expiry of the six-month period under Rule 161 EPC.

Example: A Euro-PCT application X contains 27 claims on expiry of the 31-month period. The applicant pays five claims fees within the 31-month period. He must ensure that seven claims fees are paid before expiry of the six-month period under Rule 161 EPC.

3.2 Rule 162(2), second sentence, EPC covers the situation in which the applicant files an amended set of claims after expiry of the 31-month period and before expiry of the six-month period under Rule 161 EPC. In this case, he must compute the number of claims fees due on the basis of the claims on file on expiry of the six-month period under Rule 161 EPC. Before expiry of this period, he must ensure that any claims fees are paid for the number of claims on file on expiry of this period which exceeds the number of claims for which claims fees were paid within the 31-month period.

Example: A Euro-PCT application Y contains 27 claims on expiry of the 31-month period. The applicant pays five claims fees within the 31-month period. After expiry of the 31-month period and before expiry of the six-month period under Rule 161 EPC, the applicant files an amended set of 32 claims. The applicant must compute the number of claims fees on the basis of the claims on file on expiry of the six-month period, i.e. 32 – 15 = 17. Since he has already paid five claims fees, he must pay 12 claims fees (17 – 5 = 12) before expiry of the six-month period under Rule 161 EPC.

4. If there are more than 15 claims on file on expiry of the six-month period under Rule 161 EPC, any of the sixteenth and each subsequent claim for which no claims fee has been paid is deemed to be abandoned under Rule 162(4) EPC. Further processing is available. For further information, see the Euro-PCT Guide, 9th edition, January 2016, point 608.