Renewal fees for European patent applications
European patent applications are subject to the payment of renewal fees to the EPO. If these are not paid every year, the application is deemed withdrawn. After grant, the countries in which the patent is valid may impose their own renewal fees.
Normal period for payment
The renewal fee to be paid in respect of the third year is due on the last day of the month containing the second anniversary of the date of filing (not the priority date) of the application (Art. 86(1), Rule 37(1) EPC).
The date of filing is 2 September 1996, hence the due date in respect of the third year is Saturday 30 September 1998. The last day of valid payment without additional fee is Monday 2 October 1998 (Rule 85(1), J1/81).
Payment in additional period
The renewal fee can still be validly paid within six months from 30 September 1998, provided an additional fee is paid at the same time (Art. 86(2) EPC). The additional fee shall be deemed to have been paid at the same time as the renewal fee if it is paid in this six-month period (Rule 37(2) EPC). The six-month period ends on the last day of the sixth month, even if this month is longer than the month containing the due date (J4/91).
In the above example, this period ends on Saturday 31 March 2001 (Rule 37(1) EPC, J4/91). The last day of valid payment with additional fee thus is Monday 2 April 2001 (Rule 85(1), J1/81).
Last renewal fee
The last renewal fee due to the EPO is the one due in respect of the year in which the mention of the grant is published (art. 86(4) EPC). If this annual fee is due after the Rule 51(4) communication has been notified, but before the next possible publication of the mention of grant, this publication is delayed until this annual fee has been paid (Art. 97(2)(c), Rule 51(9) EPC).
No renewal feee is due to the EPO if the grant is published before the second anniversary (Art. 86(1), Rule 37(1) EPC, OJ 1980, 101, OJ 194, 272).
Consequence of not paying a renewal fee
The consequence of not paying a renewal fee is deemed withdrawal of the application (Art. 86(3) EPC). The deemed withdrawal takes effect at the end of the additional period (J4/86), so in the above example the application is deemed withdrawn on Saturday 31 March 2001. A divisional application filed in the additional period thus is validly filed, as the parent application was alive then (Art. 76(1), Rule 25(1) EPC).
Remedies for failure to pay
Further processing is not available, as no Office time limits are involved. Restitutio is possible if all due care can be shown. The cause of noncompliance is normally removed upon receipt of the Rule 69(1) notification of the deemed withdrawal. The one year period starts on the due date, not at the end of the additional period (Art. 122(2) EPC last sentence).
As a courtesy service, the EPO notifies the applicant of the possibility to validly pay a renewal fee with additional fee (Guidelines A- XI 4.2.4). The omission of this courtesy service may not be invoked by the applicant (J 12/81, J1/89).
Renewal fees that were due for the parent up to the date on which the divisional is filed, must also be paid for the divisional. They fall due when the divisional is filed (Art. 86(1), Rule 37(3) EPC). These fees and any annual fees due within four months from the date of filing of the divisional may be paid without additional fee in that four-month period (Art. 86(1), Rule 37(3) EPC).
A divisional was filed on 19 June 1985 and the parent was filed on 1 July 1982. The annual fee to be paid in respect of the third year for the parent thus was due on 31 July 1984 (Art. 86(1), Rule 37(1) EPC). This fee must also be paid for the divisional, as it was due within four months from the date of filing of the divisional. It is due on 19 June 1985. The last day of valid payment without additional fee is Saturday 19 October 1985 (Rule 37(3) EPC, J1/81), which is extended (Rule 85(1) EPC) to Monday 21 October 1985.
If renewal fees for the divisional are not made into time, they can still validly be paid with additional fee within six months from the date of filing of the divisional (Art. 86(2), Rule 37(3) EPC last sentence). Six months from 19 June 1985 is Thursday 19 December 1985 (Rule 83(4) EPC). Had this been a Saturday, it would have been extended under Rule 85(1) EPC (LA 5/93).
Under Rule 107(1)(g) EPC the renewal fee due in respect of the third year must be paid at the end of a period of 31 months from the priority date if this fee fell due earlier under Art. 86(2), Rule 37(1) EPC. When the annual fee is not paid on this date, it may still be validly paid with additional fee in six months from the last date of valid payment (LA 5/93).
A Euro-PCT application has a priority date of 1 January 1991, so the 31 month period ends on Sunday 1 August 1993 (Rule 83(4) EPC), extended (Rule 85(1) EPC) to Monday 2 August 1993. This is when the annual fee in respect of the third year is due.
The six month additional period starts on Monday 2 August 1993 and ends on Wednesday 2 February 1994. Had this been a Saturday, it would have been extended under Rule 85(1) EPC (LA 5/93).
Renewal fees shall not be payable for a new European patent application filed pursuant to Article 61, paragraph 1(b), in respect of the year in which it was actually filed and any preceding year (Rule 37(4) EPC).