NEWS MARCH-APRIL 2009

Patents - EPO:
The EPO’s new fee structure will apply to all European patent applications, including divisional applications, filed on or after 1st April 2009 and to all international applications entering the European regional phase on or after that date and will have the following impact:

- Claim Fees:
Applicants that file applications with a large number of claims will be heavily penalized:

• for each claim in the range of 16 and 50, EUR 200.-

• for each claim in excess of 50, EUR 500.-

- Specification length:
Applicants that file applications with a large number of pages (i.e. description, claims, abstract and drawings but not sequence listings) will be heavily penalized:

• for each claim in excess of 35, EUR 12.- per page

It is to be noted that for Euro-PCT applications the calculation of the extra pages fee is to be based on the published International publication document.

The fact that the extra page fees are levied up-front will have the consequence that no such fee will be levied at the time of grant. However, the disadvantage is that applicants may have to pay for extra page fees regarding subject-matter which may be removed during prosecution.

This new rule is particularly penalizing applicants in the chemistry/pharma/biotech fields where the length of the description is often dictated by the high requirements for sufficiency of disclosure.

- Designation Fee:
A single flat designation fee of EUR 500.- will now automatically cover all EPC contracting states which will lead to a slight decrease in comparison to the amount of former 7 designation fees in effect designated all of EPC contracting states.

- Maintenance Fees:
Renewal fees (annuities) may not be paid more than 3 months before their due dates. Therefore, the 3rd annuity will have to be paid separately from the act of entering into the regional phase which puts additional administrative burden on the applicant’s side.

For more information on the new fee structure:
http://www.epo.org/patents/law/legal-texts/InformationEPO/archiveinfo/20090126.html

Trademarks – European Community:
The official fee for registering a Community Trade Mark (CTM) will be reduced by 40% for a European Community Trademark filed electronically in up to three classes effective May 1st, 2009.

The individual fee for international trade mark applications and registrations designating the European Community under the Madrid Protocol will also benefit from a 40% decrease, effective May 1st, 2009.