Since the beginning of time (not quite!) it has been the case that applicants entering the European regional phase of the PCT were able to benefit from a reduction in the search fee under Art 153(7) EPC. This Article provides that:
“…The Administrative Council may decide that the supplementary search report is to be dispensed with or that the search fee is to be reduced…”.
This has meant, historically, that where the International Search Report was drawn-up by the Australian Patent Office, the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Russian Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation), the United States Patent and Trademark Office (USPTO) or the State Intellectual Property Office of the People’s Republic of China (SIPO), then a (somewhat measly) €190 reduction of the European Search fee was available. The EPO search fee is currently €1,300, so that was a paltry 14.6% discount.
However, in December 2017, the EPO’s Administrative Council introduced (without much, if any, publicity) a change, which as of 1 April 2018, abolished this fee reduction (see the announcement here). As a result, applicants are no longer entitled to the €190 fee reduction any more.
Somewhat perversely, the same is not true where the International Search Report was drawn up by a “European ISA” (that is to say: the Austrian Patent Office, the Finnish Patent and Registration Office, the Spanish Patent and Trademark Office, the Swedish Patent and Registration Office, the Nordic Patent Institute, the Turkish Patent and Trademark Office or the Visegrad Patent Institute).
Where a European ISA drew-up the ISR, the applicant is, and remains, entitled to a fee reduction of €1,110, which is an 85% reduction!
If you have any questions about this, then please feel free to contact us.