Recent EPO Decision Puts Pendency of Some Applications in Doubt

Renewal fees are due to the European Patent Office (EPO) on pending European patent application for the third and each subsequent year. If a renewal fee payment is not paid in due time at European Patent Office, the fee may still be paid within six months of the due date, provided that an additional fee is also paid within that period.

In recent EPO Board of Appeal decision T 1402/13, the Board of Appeal held that a European patent application is not pending during the six-month period for late payment of a renewal fee, in view of the wording of Article 86(1) EPC (see here). This conclusion is controversial, as it is in direct conflict with the EPO's Guidelines for Examination (see here), which state that:

"In the event of non-payment of a renewal fee by the due date (Rule 51(1)), the application is pending up to the last day of the six-month period for payment of the renewal fee with an additional fee (Rule 51(2)), and a divisional application may still be filed during this period – even if the fees are ultimately not paid. Deemed withdrawal of the application takes effect on expiry of the six-month period."

Further, when the current wording of Article 86(1) EPC was introduced in EPC 2000, the EPO issued explanatory materials clarifying that in their view applications remain pending up to the last day of the six-month period for payment of the renewal fee with an additional fee.

It remains to be seen whether or not the reasoning of T 1402/13 will be followed by other Boards of Appeal, or will result in the EPO changing the Guidelines for Examination and its day to day practice. Nevertheless. T 1402/13 highlights the importance of ensuring that all renewal fees have been paid on a parent application before a divisional application is filed. If a renewal fee is outstanding on the parent application when a divisional application is filed, then there is a risk of the divisional application being subsequently found invalid on the basis that the parent application was not pending when the divisional application was filed.

T 1402/13 also raises the possibility of attacking a divisional application during EPO opposition procedure, on the basis that the divisional application was filed when the parent application was not pending.