ANNOUNCEMENT ON THE CHANGES MADE TO THE RATES OF FEES CHARGED BY THE EURASIAN PATENT OFFICE
20 - 22 November, 2012, at the Eurasian Patent Organization headquarters in Moscow, was held the XXVI (nineteenth ordinary) session of the Administrative Council of the Eurasian Patent Organization (hereinafter- AC EAPO).
One of the outcomes of the abovementioned session of the AC EAPO was making amendments and additions to certain normative and legal acts of the EAPO, in particular to the Statute on Fees of the Eurasian Patent Organization ( hereinafter- Statute on Fees) and the Patent Regulations under the Eurasian Patent Convention (hereinafter-Patent Convention), which could be characterized as follows.
An important addition was made to the Rule 53 of the Patent Regulations, which makes provisions for administrative revocation of the Eurasian Patent. The aforesaid addition refers to Article (8) of the given rule, according to which the procedure of the administrative revocation of the Eurasian Patent can be carried out under the decision of the Eurasian Patent Office (EAPO) to revoke the Eurasian Patent, to reject the notice of opposition or against making corrections and amendments to the Eurasian Patent. With this however, interested party may lodge an appeal against the decision in question with the President of the Eurasian Office within four months from the date of dispatch of the decision. Abovementioned provisions were supplemented by the norm, which states that an opposition is considered filed only on payment of the prescribed fee to the Eurasian Office. Introduction of this norm is designed to compensate for highly considerable expenses of the EAPO on processing of appellations, which for more than ten years (starting from the moment of appeal by the interested parties for the administrative revocation of the Eurasian Patent) were not levied.
In relation to the abovementioned, corresponding amendments were made to Article 7 (Filing of opposition to a decision taken by the Eurasian Patent Office) of the Statute on Fees. Given Article was supplemented with sub-item (3) with the following content: when filing an opposition to a decision taken by the Eurasian Office in accordance with Rule 53(8) of the Patent Regulations, a fee of 40000 roubles shall be paid.
A document confirming payment of the fee shall be submitted together with the opposition.
If the document confirming payment of the fee has not been submitted together with the opposition, the opposition shall be considered not to have been filed”
Amendments were made also to other Articles of the Statute on Fees. Thus, according to the Art.2(1)(ii) the fee for each claim in excess of five, in accordance with Rule 24(7) of the Patent Regulations – was increased from 2200 to 3200 roubles; Article 4 provides for fees for the substantive examination of the Eurasian application in accordance with Art.15 (6) of the EAPC. Formerly, according to sub-item 1(ii) of given Article, the applicant had to pay in relation to a group of inventions 25500 rub., and additional 19900 rub. Currently he also has to pay additional 9500 rub., for the third, fourth and fifth invention, each.
The idea of the abovementioned provisions is encompassed in bringing the amount of fees, paid for the filing and examination of the Eurasian applications, which contain large quantity of the claims, in accordance with factual expenses made by EAPO for the investigation and examination of said applications.
Article 8 of the Statute on Fees regulates the issues of paying the additional fees for the extension of missed time limits and restoration of rights.
In accordance with new subparagraphs (i) and (ii) Art. 8(1) and in accordance with Rule 49(4) of the Patent Regulations on the extension of the time limit to furnish additional materials, requested by the examiner, additional fee established by Rule 37 of the Patent Regulations must be paid:
- up to 12 month after the expiry of the time limit prescribed for submission of the requested additional materials - 1000 roubles for the first two months of the extension. The fee for each subsequent month increases by 500 roubles in comparison to the preceding month.
- more than 12 months after the expiry of mentioned time limit, the fee for each subsequent month starting from thirteenth month of extension increases by 1000 roubles in comparison to the preceding month.
With this earlier existing sub-paragraph (iii) Art. 8 (1) was excluded.
Ought to be acknowledged, that summed up amount of the additional fees, in accordance with the earlier existing edition of the sub-paragraphs (i), (ii) and (iii) was lower in comparison with the new additional fees. The abovementioned increase in additional fees is associated with an attempt to reasonably restrict the extension of the time limit for a response to the examiner’s request, excessive prolonging of which unavoidably affects the third parties.
Furthermore, in accordance with paragraphs one and two of Art. 8(2), the amount of prescribed fees (25000 rub.) for filing the request for the restoration of rights in relation to the Eurasian application and requests for the restoration of rights for Eurasian patent, was increased. It should be believed, that current increase in the amount of fees will stimulate the applicants and patent holders to comply with the time limits, established by the Patent Regulations for corresponding procedures.
Aforementioned amendments and additions to the Patent Regulations and the Statute on Fees will come into force on January 1, 2013. At the same time, a transitional provision was included in the Art.5 of the Protocol of the twenty sixth Session of the AC, stating that from January 1, 2013, fees for legally significant activities in relation to the Eurasian application and Eurasian patent are to be paid according to approved amendments and additions to the Statute on Fees of the EAPO, except cases, when the fee payment notification, which states a specific amount of fees (additional fees) due for payment, was sent by the Eurasian Patent Office before January 1, 2013. In cases like this, payment of fees (additional fees) in the amount stated in the notification and within the time frame provided by the notification will be considered to have been made correctly.