In the wake of the October 2013 Decisions of the Administrative Council, the EPO has recently announced a further change that will come into force in 2014. This change will increase the fee reductions that are available to give financial compensation for the cost of translations of certain documents from an admissible non-EPO language into an official language of the EPO, while limiting the acts and parties that the reductions are available for.
The Status Quo
Parties having their residence or principle place of business in an EPC contracting state or nationals of such a state that are resident abroad can file European patent applications or other documents in an official language of that contracting state, even where that language is not an official language of the EPO (i.e. not English, French or German). Such a language is known as an admissible non-EPO language.
Where an application is filed in a language other than an official language of the EPO it must be translated into one of the official languages and this chosen language will then become the language of the proceedings. If further documents are filed in an admissible non-EPO language then these documents must be translated into an official language of the EPO (usually the language of proceedings). As this translation requirement may present a burden to persons from contracting states with an official language other than an official language of the EPO, a reduction of certain fees has been available when the corresponding document is filed in an admissible non-EPO language as a form of compensation.
Currently, this reduction is set at 20% of the corresponding fee and is available to any party using an admissible non-EPO language from their contracting state when filing a European patent application, a request for examination, an opposition, an appeal, a petition for review or a request for limitation or revocation.
Looking Ahead To 1st April 2014
In an apparent bid to make this reduction of fees more fit for purpose, the EPO will be increasing the fee reduction to 30% for the filing and examination fee for applications filed or entering the European phase on or after 1 April 2014 and introducing the new limitation that the fee reduction is only available to SMEs, individuals, NPOs, universities or public research organisations. SMEs have been defined as enterprises that employ fewer than 250 people and have either an annual turnover not exceeding €50m or an annual balance sheet not exceeding €43m.
Furthermore, whilst giving qualifying applicants an additional 10% reduction in the filing and examination fees, the EPO has ruled out the availability of any reduction in fees for oppositions, appeals, petitions for review or requests for limitation or revocation filed on or after 1 April 2014.
In the approach to 1 April 2014, parties that will no longer qualify for the fee reduction may want to consider if any planned European applications or oppositions etc. can be filed prior to the law change in order to benefit from the current fee reductions. Similarly, it may be beneficial to enter the European phase of some pending international applications early where the application is otherwise ready for regional processing.
Conversely, applicants that will qualify for the increased fee reductions may wish to delay the filing of European applications claiming priority from earlier applications where the delayed filing date would still fall within the 12 month priority period.
If you would like to discuss how this change might affect your filing strategy in the coming months then please contact your Reddie & Grose attorney.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.