Do I have to pay excess claims fees when filing a European patent application?

What are excess claims fees?

European patent applications which contain more than fifteen claims incur excess claims fees for each claim beyond the 15th under Rule 45(1) of the European Patent Convention (EPC). In addition, there is a higher fee due for each claim beyond the 50th, as set out in Article 2(1) item 15 of the Rules relating to Fees (which also provides up-to-date cost information for excess claims fees). If an application contains more than 15 claims, the applicant can choose whether to pay the excess claims fees, to amend the application to reduce the number of claims, or to allow some of the claims to be deemed abandoned by non-payment of the fees.

The fees are relatively high. At time of writing (February 2024), the fee for each claim beyond the 15th is €265 and the fee for each claim beyond the 50th is €660. Accordingly, most applicants will prefer to amend the claims of their application to thereby reduce the number of the claims and thus limit the fees that fall due. However, in some cases it is a better option to keep at least some of the excess claims. In any case, it is important to understand when excess claims fees will fall due, and what the consequences are of not paying excess claims fees. To that end, this article provides an overview of excess claims fees before the European patent office (EPO).

When do fees fall due?

The deadlines for paying excess claims fees depend on the type of application. Importantly, there is no need to pay excess claims fees (or to amend the claims) at the same time as filing a European Regional Phase patent application. This can be addressed at a later date. The EPO will send the applicant an invitation under Rule 161 and Rule 162(2) EPC, and if the excess claims fees were not paid when the claims were filed, then this invitation will trigger a 6-month deadline for either paying the fees, or amending the claims such that no excess claims fees are due. This provides valuable additional time for the applicant to review the claims and to take a number of steps which might include:

• Adapting the claims to European practice;
• Addressing any unity issues;
• Pre-empting any other objections, perhaps on the basis of the International Search Report and Written Opinion; and
• Assessing which subject matter is the most commercially important.

The applicant can then decide whether to pay the claims fees, or to amend the claims to reduce their number. In general, we would suggest the latter.

Even then, yet more time can be obtained via Further Processing (under Article 121 EPC), although making use of Further Processing will lead to some additional costs. Specifically, where claims are deemed abandoned due to non-payment of excess claims fees, the EPO will notify the applicant of their loss of rights, under Rule 112(1) EPC. If the applicant would like to keep the claims that were deemed abandoned, they can request Further Processing within two months of receiving such a Notification, in which case they must pay the excess claims fee(s) alongside a Further Processing fee, which will be 50% of the unpaid excess claims fee(s).

The deadlines for paying excess claims fees are different for direct European patent applications, as well as European divisional patent applications and European patent applications claiming priority from other national applications. For such applications, excess claims fees fall due on filing the claims, but can be paid within one month after the first set of claims is filed (under Rule 45(2) EPC). If the fees are not paid on time, the EPO will send a communication to the applicant indicating the failure to pay the fees, and the fees can still then be validly paid within a 1-month period of that communication. Again, Further Processing can be used if this deadline has been missed, by responding to a Notification of Loss of Rights within two months of receiving the Notification, but this will result in the additional Further Processing fee falling due.

It should be noted that while claims are usually included in the European patent application when the application is filed, this is not always the case. The applicant does have some time to commit to a first set of claims. Specifically, the first set of claims may be filed:

• On the filing date of the application;
• After the filing date of the application, with a response to a Communication from the EPO indicating their absence (under Rule 58 EPC); or
• After the filing date of the application, by the applicant’s own motion and before the EPO sends a communication indicating the absence of the claims.

Later in the application process, when the Intention to Grant Communication is issued under Rule 71(3) EPC, the number of claims will be reviewed again under Rule 71(4) EPC. In some cases, due to amendments during prosecution, the text intended for grant of the patent contains more than 15 claims and fees have not already been paid for the 16th and subsequent claim. If this occurs, the applicant will then be required to pay the excess claims fees at this stage. No refund is available if excess claims fees were paid previously, and the application contains 15 claims or fewer when the Intention to Grant Communication is issued (as is made clear by the Guidelines for Examination at C-V, 1.4). If the excess claims fees are not paid within the time limit indicated by the said Communication, the application will be deemed withdrawn under Rule 71(7) EPC (although Further Processing is also available in this case).

If the Intention to Grant Communication is based on an auxiliary request, then the number of claims fees depends on the number of claims in that request. However, if the applicant replies requesting grant based on a higher-ranking request, no claims fees are due when responding to the Intention to Grant Communication (see Guidelines for Examination at C-V 1.4).

How to reduce the number of claims

As mentioned above, applicants often prefer to amend the claims of European patent applications to reduce the total number of the claims (and thus the number of claims fees that fall due) without reducing scope. This can be achieved by combining claims so that the features of one claim become optional features of another claim. In a simple example, if an application contained the following claims:

22. A widget according to any one preceding claim, wherein the widget comprises an additional feature.

23. A widget according to claim 22, wherein the feature is of type N.

The 23rd claim could be deleted and the 22nd claim could be amended as follows:

22. A widget according to any one preceding claim, wherein the widget comprises an additional feature, optionally wherein the feature is of type N.

Such amendments require care to ensure that no subject matter is inadvertently abandoned or added, and to limit the risk of an EPO examiner raising a clarity objection. However, this can be an effective way of reducing the total number of claims in a claim set, while maintaining subject matter. Interestingly, claims can even be combined in this way such that the resulting claims relate to multiple claim categories. According to the Guidelines for Examination at F-IV, 3.4, “A dependent claim referring explicitly to independent claims in two categories as alternatives cannot be objected to on this ground alone.” Such an approach can therefore be a powerful tool for reducing the number of claims.

Of course, as referred to above, claims can also be amended or cancelled to adapt them to European practice, to address any objections that were raised in the International Search Report (for European Regional Phase patent applications), to address unity issues, or possibly for strategic reasons relating to how the applicant may wish to commercialise their invention.

Risks associated with deleting claims

An important reason to maintain features in the claims is that when a European search report is drawn up (or supplementary search report in the case of a Euro-PCT application) the examiner will generally consider the subject matter of each of the claims, provided there is not an objection of a lack of unity. However, subsequent amendments to the claims may be disallowed if they relate to unsearched subject matter and can only be considered if a divisional application is filed. Thus, it is important to ensure that key features are in the claims when they are searched, even if only as optional features.

Furthermore, if the subject matter of an abandoned claim does not also appear in the description or drawings, it cannot later be reintroduced into the application (as indicated in Decision J15/88). This may be surprising because, in general, an applicant normally has the right to derive subject matter from any part of the description, claims, or drawings as originally filed. Accordingly, care should be taken to ensure that the subject matter of the claims appears elsewhere in the application before any claims are finally abandoned. If the matter does not appear elsewhere in the application then numbered clauses, corresponding to the deleted claims, may be included in the application at least until the scope of the claims is finally agreed.

As is always the case for pending European patent applications, the applicant also has the option to file one or more divisional applications for subject matter which does not extend beyond the content of the parent application as filed, as provided for by Article 76 EPC. Therefore, any claim which is deleted by the applicant to limit the excess claims fees that fall due, or that is deemed abandoned or withdrawn due to non-payment of excess claims fees, can be included in a divisional application as long as the subject-matter relating to the claim was present in the parent application at the time of filing the parent application. Divisional applications must be filed while the parent application is still pending (as prescribed by Rule 36(1) EPC). For divisional applications, any excess claims fees (i.e. for claims beyond the 15th which appear in the divisional application) must still be paid, even if the applicant paid a fee in respect of claims relating to the same subject matter for the parent application (See the Guidelines for Examination, A-IV, 1.4.2).

How to proceed with more than 15 claims

There are of course reasons to keep more than 15 claims in a claim set in some instances. For example, doing so means that the subject matter of the claims is searched, which is not necessarily the case for features in claims where those features are presented as being optional. Whether the claims are unified, and whether additional search fees might be required for non-unified claims, is a separate question.

Assuming that they wish the application to go forward with more than 15 claims, the applicant has the option to pay excess claims fees for all claims beyond the 15th, or for only some of the claims beyond the 15th. However, any claim beyond the 15th will be deemed abandoned if no excess claims fee is paid for it (under Rule 45(3) EPC).

The order of the claims is that indicated at the time of filing the claims. This is important, because if an applicant pays some claims fees but not enough to cover all of the claims, then the applicant must indicate which fees are intended to cover which claims. For example, if an application contains 18 claims, numbered 1 to 18, and the applicant would like to keep claims 1 to 15 and claim 18, they only need to pay one excess claims fee and they can cancel claim 16 and 17 to avoid the need to pay fees for all of their claims. However, it would be necessary to indicate to the EPO which claims the applicant wants to retain, and thus which claims the fees are intended to cover. Furthermore, since only the claims numbered 1 to 15 are exempt from the claims fees, it is not possible to transfer the fee exemption to a claim numbered 16 or higher (as indicated in decision J9/84).

According to the European Patent Office’s Guidelines for Examination (at A-III, 9), in the unusual event that a European patent application contains multiple sets of claims, Rule 45 applies only for the set of claims containing the highest number of claims. Note that this might not necessarily be the first set of claims presented in the application. If, an application includes more than one claim set each with more than 15 claims, non-payment of fees would result in claims being deleted from the claim set containing the most claims. If this leads to one of the other claim sets containing the most claims, then the number of claims in the said other claim set much be reduced to the same number as that remaining in the set originally incurring the fees (see decision J 8/84). Accordingly, if no excess claims fees are paid for an application with several sets of claims, then the claims beyond the 15th in each set of claims are all deemed to be abandoned.

Conclusion

In conclusion, the management of applications to limit costs associated with excess claims fees requires careful thought. However, when this is approached strategically, applicants can make significant costs savings without unnecessarily limiting the scope of their applications.

This article was prepared by European patent attorney Rebecca Douglas. If you would like to discuss any of the points raised, or anything else in relation to your intellectual property, please contact your usual Hindles attorney, or Rebecca, who will be happy to help.