The European Patent Office (EPO) now has a dedicated webpage regarding their response to COVID-19; that should provide current information as the crisis unfolds.
UPDATE AS OF 04 JUNE 2020: On 28 May 2020, the EPO published a “Decision of the Administrative Council of 28 May 2020 temporarily suspending the application of Rule 51, paragraph 2, EPC with respect to the additional fee, as referred to in Article 2, paragraph 1, item 5, of the Rules relating to Fees (CA/D 6/20).” It can be seen here.
On 29 May 2020, the EPO published a “Notice from the European Patent Office dated 29 May 2020 concerning the temporary suspension of the application of Rule 51(2) of the European Patent Convention with respect to an additional fee for belated payment of a renewal fee for a European patent application (Article 2(1), item 5, of the Rules relating to fees).” It can be seen here.
Both will eventually be published in the Official Journal of the EPO.
While the “Decision” is quite brief, the “Notice” explains how the EPO intends to apply it, in practice (and that’s what matters!).
As briefly as possible: If a renewal fee fell / falls due in the “window” from 15 March 2020 to 31 August 2020, it can be paid “late” without the need to pay the normal 50% surcharge for late payment if it is paid by 31 August 2020. Note that the surcharge is ONLY waived if the overdue renewal fee is paid before 31 August 2020. And by corollary, if the renewal fee fell / falls due in that “window”, and is paid “late” after 31 August 2020, then the surcharge MUST be paid.
To be clear: This Decision does NOT affect the renewal fee due date and does NOT affect the calculation of the “additional period” for late payment of the renewal fee. Instead, it ONLY affects whether or not the 50% surcharge must be paid.
Warning: Be especially careful when relying on this exemption from the 50% surcharge. If, in fact, the 50% surcharge should be paid, and it is not paid by the end of the “additional period”, the application will be deemed abandoned. Then, the only remedy is to request re-establishment (Article 122 EPC) which relies on proving to the EPO’s satisfaction that the failure to pay the surcharge was “in spite of all due care” (normally, a very high threshold). If you are unsure if the surcharge should be paid, ask your European Patent Attorney!
For some background regarding renewal fees for European patent applications, see below.
The European Patent Office has just published a “Decision of the Administrative Council of 28 May 2020 temporarily suspending the application of Rule 51, paragraph 2, EPC with respect to the additional fee, as referred to in Article 2, paragraph 1, item 5, of the Rules relating to Fees (CA/D 6/20)” It can be seen here. It will eventually be published in the Official Journal of the EPO.
As briefly as possible: If a renewal fee fell / falls due in the “window” from 15 March 2020 to 31 August 2020, it can be paid “late” (by the end of the “additional period” - typically 6 months from the due date, but the calculation can be complicated) without the need to pay the normal 50% surcharge for late payment.
To be clear: This Decision does NOT affect the renewal fee due date and does NOT affect the calculation of the “additional period” for late payment of the renewal fee. Instead, it ONLY affects whether or not the 50% surcharge must be paid.
Warning: Be especially careful when relying on this exemption from the 50% surcharge. If, in fact, the 50% surcharge should be paid, and it is not paid by the end of the “additional period”, the application will be deemed abandoned. Then, the only remedy is to request re-establishment (Article 122 EPC) which relies on proving to the EPO’s satisfaction that the failure to pay the surcharge was “in spite of all due care” (normally, a very high threshold). If you are unsure if the surcharge should be paid, ask your European Patent Attorney!
Some background regarding renewal fees for European patent applications:
Annual renewal fees must be paid to the EPO while the European patent application is pending. The renewal fees are payable in respect of Years 3 to 20, calculated from the filing date (Article 86 EPC). The renewal fees are due, in advance, at the end of the month in which the anniversary of the filing date falls (Rule 51(1) EPC). And so, for example, the Year 3 renewal fee is due at the end of the month in which the second anniversary of the filing date falls.
For a regional phase application, the due date for the Year 3 renewal fee is the later of (a) the date of entry into the European regional phase and (b) the end of the month in which the second anniversary of the filing date falls (Rule 159(1)(g) EPC). Subsequent renewal fees (i.e., for Year 4 onwards) are due, in advance, at the end of the month in which the anniversary of the filing date falls (that is, as normal).
For a divisional application, all of the renewal fees that fell due before the actual filing date of the divisional application (so-called “back renewals”) are due within four months of the actual filing date (Rule 51(3) EPC). Subsequent renewal fees (i.e., those that fall after the actual filing date) are due, in advance, at the end of the month in which the anniversary of the filing date falls (that is, as normal). However, a renewal fee that falls due within four months of the actual filing date may be paid within four months of the actual filing date, without surcharge (Rule 51(3) EPC).
Renewal fees cannot be paid especially early. The Year 3 renewal fee may be paid up to 6 months before it is due; all subsequent renewal fees may be paid up to 3 months before they are due (Rule 51(1) EPC). If a renewal fee is paid “too early” (even one day too early), the EPO will refund the fee, and it will then be necessary to pay it again, inside the permitted window.
As provided by the Paris Convention (Art 5bis (1) PC), any European patent renewal fee may be paid up to six months “late” (during a so-called “additional period” or “grace period”) with a surcharge (Rule 51(2) EPC). The EPO’s surcharge is 50% of the renewal fee (Art 2(1), item 5, RRF). Calculating the last day of the “additional period” can be complicated; in most cases, it is 6 months from the due date, but there are special provisions that deal with “closed days” (e.g., weekends, etc.).
