Friday, October 2, 2009

When do you have to pay when you do early entry in Europe for PCT?

An interesting question:

I have a question about A153 / R159(1) that mainly concerns fees, and calculation of the renewal fee.

If I enter a PCT application into EP before expiry of 31 months e.g. at 25 months, I imagine the fees (e.g. filing fee R159(1)(c), designation fee R159(1)(d), search fee R159(1)(e), examination fee R159(1)(f), R159(1)(g) renewal fees) are due on (i.e. can be paid as from) the date of EP entry.

If some fees were not paid on EP entry, will the invitations to remedy (e.g. R160(1)) be sent (A) shortly after filing or (B) at expiry of 31 months?

If (A) applies, then will renewal fees R159(1)(g) be due on the date of EP entry, and the 6m period of R51(2) be calculated as from the date of entry? Or does the 31m expiry (and the +6m period from end of 31m R51(2)) apply still for renewal fees in case of early entry.

In case the former is true, the question also arises of the aggregate TL; probably it is not available when the renewal fee is due on early entry.

I checked Visser, it says that the EPC has no legal provision for early entry, and that the EPO will start processing after all the requirements of R159(1)(g) have been met. It does not say when periods will expire, however.

See my answer below - I would be interested to hear from anyone who already experienced this.

This is a tricky question

There is no legal basis for awarding an actual date of entry.

Renewal fees will follow Art.86 & R.51 by default. The invitation & reminder system is separate (R.160(1) does not mention renewal fees).

However, LA5/93 is quite clear – any which fall due < 31 month, are considered to have 31 month expiry as due date. So, you are right, this is an aggregate time period. However, the next renewal fee due will be after the 31 month, so the calculation of R.51(1) should be applied. This is unaffected by the date of entry.

Early entry is based on Art.23(2) & Art.40(2) PCT. Based on this, and an old PCT Practical Advice, you must pay the filing fee and file any translation.

There seems no basis for requiring the search fee before 31m, but I doubt if the EPO will search unless you pay it. There must be a solution, otherwise early entry would be made impossible.

How to Get, Part 2 says:
Early entry into the European phase
292 An applicant can at any time request the EPO as designated or elected
Office to commence processing the Euro-PCT application before expiry
of the 31-month time limit. For this purpose, the applicant must file an
express request for early processing, which is not included in EPO
Form 1200, and in addition complete the steps for entry into the
European phase in Rule 159 EPC (see points 301 ff). Only if each of
these requirements is met, any subsequent withdrawal under Rule
90bis PCT will have no effect for the European phase.

295 The EPO will begin processing as soon as the steps for entry into the
European phase have been completed and the EPO has received the
required documents from the IB.

349 If the filing fee is not paid in due time, the application is deemed to be
withdrawn. Further, the Euro-PCT application will not be considered as
comprised in the state of the art under Article 54(3) EPC (see
point 444). The applicant is informed of the loss of rights in a
communication under Rules 112(1) and 160(3) EPC.

I think, then, the maximum limit of 31 months applies. So if, you request early entry, and do not pay filing or search fee or comply with the rest of the requirements of R.159, the EPO will wait until you do so. 

If 31 months expires, they will only then send a loss of rights under R.160.

1 comment:

  1. Regarding the renewal fee the questioner refers to a six month time period - please note that this has changed and the six month 'window' no longer applies, see: For applications entering the European regional phase at 31 months, the third year renewal fee will not, as of 1st April 2009, be accepted and may only be paid at the earliest, three months prior to the due date.