Fee related amendments before the EPO and decision of EU Commission on full ban on patents for NGT plants

  1. New proposal of EU Commission approved by EU Parliament suggesting a full ban on all patents for all NGT plants, plant material, parts thereof, genetic information and process features they contain   

The EU Parliament approved the EU Commission’s proposals for new rules on plants obtained through ‚New Genomic Techniques‘ (NGTs) on February 7, 2024.

The key aspects of the proposals can be summarized as follows:

  • NGT plants considered equivalent to conventional ones (NGT 1 plants) would be exempted from the requirements of the GMO (genetically modified food) legislation. However, labeling will be required.
  • For NGT 2 plants most of the requirements of the GMO legislation will be maintained, e.g. the authorization procedure.
  • A full ban on patents for all NGT plants, plant material, parts thereof, genetic information and process features they contain.

Accordingly, it is proposed to introduce two Articles (Article 4a and Art 33a) into Biotech Patent Directive 98/44/EC and the EU will start negotiations with the member states on the final law. 

However, it should be noted that the proposed amendments are not yet harmonized with the European Patent Convention.  In more detail, according to the established case law of the Boards of Appeal (see for example the decision G 3/19 (“Pepper”)) the term „plant varieties or essentially biological processes for the production of plants“ in Art. 53(b) EPC only excludes plant varieties and essentially biological processes for the production of plants obtained exclusively through such processes, e.g. by sexual crossing and selection, whereas plants obtained by a technical process which leads to a modification of the genetic characteristics of the plant are considered patentable under the EPC.

Consequently, NGTs are currently patentable under the current provisions of the EPO.

Since the EPO is not an EU entity and further encompasses other contracting states such as the UK which have a more liberal approach concerning NGTs it cannot be predicted whether the EPO will amend its regulations in view of the new EU proposal.

In summary, as an independent entity the EPO is not forced to immediately adapt their regulations to the new proposal of the EU. So far, we have not received any official information from the EPO on this matter and, thus, must wait for any further developments which could be expected in the next months.

  1. Introduction of new fee-related support measures for small entities (effective: April 1, 2024)

The Administrative Council of the European Patent Organization decided to introduce a new fee reduction scheme specifically for micro-entities. The amendments will enter into force on April 1, 2024 and will apply to fee payments made on or after that date for European patent applications and Euro-PCT applications which have entered the European regional phase. 

The fee reduction will be available for small entities such as:

  • micro-enterprises;
  • natural persons;
  • non-profit organizations, universities and public research organizations.

Notably, the fee reduction will be applicable irrespective of the nationality or domicile of the Applicant.

As a consequence, the following fees will be reduced by 30%:

  • 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.

The application of the fee reduction will require a declaration of their status which can be made by ticking the appropriate box(es) in the request for grant of a European patent.

However, please note that the fee reduction is limited to only such micro-entities which have filed fewer than five applications with relevant dates in the five years preceding the relevant date of the application, for which the fee reduction is requested.  

  1. Introduction of new fee-related support measures for small entities (effective: April 1, 2024)

The European Patent Office will increase its fees as of April 1, 2024. While some fees were increased moderately, the fees for the 3rd and 4th annuity fee were increased significantly, which is due to the new annuity fee model of the EPO which is now following a linear progression. The following table gives an overview about the official fees for pending patent applications before the EPO before and after April 1, 2024:

FeesFee before April 1, 2024Fee from April 1, 2024Difference
Search FeeEUR 1.460,00EUR 1520,00+ EUR 60,00
Designation FeeEUR 660,00EUR 685,00+ EUR 15,00
Examination FeeEUR 1840,00EUR 1915,00+ EUR 75,00
Claim fee for the 16th to 50th claimEUR 265,00EUR 275,00+ EUR 10,00
3rd Annuity feeEUR 530,00EUR 690,00+ EUR 160,00
4th Annuity feeEUR 660,00EUR 845,00+ EUR 185,00
5th Annuity feeEUR 925,00EUR 1000,00+ EUR 75,00
6th Annuity feeEUR 1180,00EUR 1155,00– EUR 25,00
7th Annuity feeEUR 1305,00EUR 1310,00+ EUR 5,00
8th Annuity feeEUR 1440,00EUR 1465,00+ EUR 25,00
9th Annuity feeEUR 1570,00EUR 1620,00+ EUR 50,00
10th Annuity fee and subsequent yearsEUR 1775,00EUR 1775,00±EUR 0,00

Since all annuities can be paid already three months before the respective due date except for the 3rd annuity which can be even paid 6 months in advance, the client can make considerable savings if the annuities are paid prior to April 1, 2024.

The same applies for regional phase entries of pending PCT applications, where the applicant can save up to EUR 310.00 for a regional phase entry preponed to an entry date before April 1, 2024 including a payment of the 3rd annuity fee e.g. up to 6 months in advance.

Therefore, an applicant can save at least EUR 195.00, when entering the European regional phase of a PCT application prior to April 1, 2023.

Please rest assured that we will keep you further duly informed about any new developments.

However, if you have any questions or wish to obtain advice regarding the upcoming new developements, please do not hesitate to contact your usual attorney of the highly experienced team of Dr. Schön, Neymeyr & Partner mbB or email us via mail@schoen-partner.de.

Sincerely yours,

Dr. Christoph Schön

Ulrich Neymeyr

Dr. Susanne Schön