EPO Expands Official Fee Discount Eligibility for Micro-Entities

From 1st April 2024 the EPO will allow applicants of any nationality or domicile that are deemed to be a micro-entity to get a 30% reduction in many key EPO official fees provided they have not filed five or more applications with the EPO in the last 5-years.

Background - Currently the EPO only provides some official fee reductions to qualifying entities that are resident or have their principle place of business in an EPC contracting state. Those qualifying entities are: natural persons; non-profit organisations, universities and public research organisations; microenterprises; and small and medium-sized enterprises (SMEs).

Enhanced Scheme - The broadening of the scheme to include applicants of any nationality or domicile will only apply where all applicants separately qualify as micro-entities – being either: natural persons; non-profit organisations, universities and public research organisations; or microenterprises. Microenterprises are defined as enterprises having fewer than 10 employees; and an annual turnover of less than EUR 2,000,000, with this criteria not taking into account any linked or partner enterprises.

The EPO will not give the 30% official fee reduction to an application filed by a micro-entity that has filed 5 or more patent applications with the EPO in the last 5-years. The relevant date is the date of filing of the European patent application concerned or the date of entry into the European phase of the Euro-PCT application concerned. For divisional applications the relevant date is the date of receipt of the divisional application. Where an application has multiple applicants each applicant must separately satisfy the prior applications limit. If multiple applications are filed on the same day only the applications that are within the limit will qualify for the official fee reduction.

The official fee reductions for qualifying micro-entities apply to the following fees irrespective of whether the EP application (or European phase of a PCT application) was filed before or after 1st April 2024, but only applies to fees paid on or after 1st April 2024:

• the filing fee, including any additional fees part of the filing fee;
• the fee for a European search or the fee for a supplementary European search in the case of a Euro-PCT application searched by an International Searching Authority (ISA) other than the EPO;
• the examination fee, and in addition, if applicable, the previously paid international search fee where the EPO acted as ISA;
• the designation fee;
• the fee for grant;
• the renewal fees for the European patent application.

In order for a to qualify for the 30% official fee reduction the micro-entity needs to make a declaration as to its status as a micro-entity, and the EPO should be notified if the entity no longer qualifies as a micro-entity when a subsequent qualifying fee is due. If the application is subsequently transferred to another entity, official fees due subsequent to the recordal of the transfer in the EP registry will depend upon whether the new owner qualifies as a micro-entity, with a declaration being required if such status is claimed.

Bigger Picture for Small Sized Applicants Down Under - Many patent offices allow some applicants to qualify for discounted official fees. The qualifying criteria for eligible applicants varies across these patent offices, taking into account factors such as whether the applicant is a natural person or a legal entity, the size and/or profit status of the legal entity and the nationality or place of residence of the natural person or principle place of business of the legal entity.

Small sized patent applicants who are based in Australia or New Zealand will welcome this expansion to the jurisdictions that provide discounts to eligible applicants irrespective of their nationality or domicile. Other such jurisdictions that are likely to be of interest to small sized patent applicants who are based in Australia or New Zealand are: Argentina, Brazil, Canada, many European States, India, Japan, Mexico, South Korea and the United Sates of America.

Authors: Quinn Miller and Jim Piper

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