Fee reductions at the European Patent Office for microenterprises, natural persons and universities: false good news?

Offering a 30% reduction on most official fees, this measure seems likely to promote access to European patents for small entities with little experience of industrial property.

In practice, however, it is relatively complex and not without risks.

Which applicants are eligible for this fee reduction?

The applicants concerned by the micro-entity status are:

• microenterprises, i.e. companies which employ fewer than 10 persons and whose annual turnover and/or annual balance sheet total does not exceed EUR 2 million, irrespective of the nationality or place of business of the company,
• natural persons,
• non-profit organizations,
• universities and
• public research organizations.

This status must be effective at the time of fee payment.

In the case of joint ownership, all applicants must belong to one of the above categories.

Which patent applications are eligible for this fee reduction?

The reduction applies both to direct European patent applications and Euro-PCT applications.

It applies from April 1, 2024, irrespective of the filing date of the patent application, for fees not yet paid.

However, the reduction applies only to a maximum of five patent applications filed by the same applicant in the last five years, irrespective of the status of these previous applications or of whether they were subject to a fee reduction.

Which fees benefit from the reduction?

This 30% reduction applies to the main fees that applicants have to pay during the examination of their patent application, namely:

• the filing fee;
• the search fee;
• the examination fee;
• in the case of a Euro-PCT application, the international search fee previously paid when the European Patent Office acted as International Searching Authority;
• the designation fee;
• the fee for grant;
• the annual fees for the European patent application.

For a European patent application granted in the fifth year after filing and benefiting from the fee reduction from its filing, the saving for the applicant will be around EUR 2,360 based on the fee schedule in force on April 1, 2024.

How can you benefit from this system?

The  micro-entity status must be declared to the EPO at the latest when paying a reduced fee for the first time.

In the event of a change of status which results in the loss of the fee reduction, the change of status must be declared before a new fee is paid.

In case of doubt, the EPO may request evidence of the applicant’s status at any time.

Warnings

If the limit of five patent applications is exceeded, the EPO will ask the applicant to pay the missing fee within two months.

More critically, the penalty for incorrectly declaring micro-entity status is that an unduly reduced fee will be deemed not to have been validly paid, resulting in a loss of rights, with the application likely to be deemed withdrawn.

Although remedies may be available, the legal risk associated with an incorrect declaration is therefore significant and will generate additional costs for the applicant.

Regimbeau’s position and recommendations

Because of the risks associated with an incorrect declaration of status, Regimbeau advises its clients to be cautious about taking advantage of the fee reduction.

The Regimbeau team is at your disposal to discuss with you the possibility and desirability of applying for this new fee reduction.

More information on EPO release: https://www.epo.org/en/legal/official-journal/2024/01/a8.html