WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Entitlement to the 75% reduction in certain fees payable for the benefit of the International Bureau and the European Patent Office

Q: Our client, a South African company whose principal place of business is in South Africa, will shortly be filing a PCT application, choosing the European Patent Office (EPO) as International Searching Authority. I do not think that the company is entitled to the reduction in certain of the fees payable for the benefit of the International Bureau which is accorded to applicants from certain States (including South Africa), since that reduction is only available to natural persons, and not to legal persons. I have heard that the EPO has recently changed the requirements for the entitlement to the 75% reduction in the EPO's fees for international search and preliminary examination. Are those requirements now the same as for the fee reductions accorded by the International Bureau?

A: As you correctly state, it is not possible for a South African applicant company, which is not a natural person, to obtain any fee reduction in the case of the fees payable for the benefit of the International Bureau (that is, basic fee, the designation fee and the handling fee).

For international applications filed on or after 1 November 2000, and in accordance with the decision of the EPO's Administrative Council of 11 October 2000 (Official Journal of the EPO, No. 10/2000, page 446), the EPO's fees for international search and preliminary examination are reduced by 75% where the applicant or, if there are two or more applicants, each applicant is a natural person and is a national of and resides in a State not party to the European Patent Convention, which fulfils the requirements for the corresponding reduction of certain PCT fees as specified in the Schedule of Fees annexed to the PCT Regulations. That Schedule of Fees states that the international application must be "filed by any applicant who is a natural person and who is a national of and resides in a State whose per capital national income is below 3,000 US dollars* (according to the average per capita national income figures used by the United Nations for determining its scale of assessments for the contributions payable for the years 1995, 1996 and 1997); if there are several applicants, each must satisfy those criteria."

Thus, for international applications filed on or after 1 November 2000, the EPO's 75% reduction of the international search and preliminary examination fees is no longer applicable to legal persons. Your client therefore cannot benefit from such reduction. Indeed, the requirements for entitlement to the EPO fee reduction are now practically the same as those for the 75% reduction of fees payable for the benefit of the International Bureau. The only difference now between the two kinds of fee reductions is that the reduction accorded by the EPO is not applicable if the applicant, or any of the applicants, is a national or resident of a State party to the European Patent Convention.

It is recalled that for international applications filed on or after 1 January 2001 with the International Bureau as receiving Office, applicants who are eligible for the 75% reduction in the international fee will not have to pay any transmittal fee (see PCT Newsletter No. 10/2000).

* The PCT Contracting States concerned are the following: Albania, Algeria, Armenia, Azerbaijan, Belarus, Belize, Benin, Bosnia and Herzegovina, Brazil, Bulgaria, Burkina Faso, Cameroon, Central African Republic, Chad, China, Colombia (as from 28 February 2001), Congo, Costa Rica, Cote d'Ivoire, Croatia, Cuba, Czech Republic, Democratic People's Republic of Korea, Dominica, Estonia, Gabon, Gambia, Georgia, Ghana, Grenada, Guinea, Guinea-Bissau, Hungary, India, Indonesia, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Lithuania, Madagascar, Malawi, Mali, Mauritania, Mexico, Mongolia, Morocco, Mozambique, Niger, Poland, Republic of Moldova, Romania, Russian Federation, Saint Lucia, Senegal, Sierra Leone, Slovakia, South Africa, Sri Lanka, Sudan, Swaziland, Tajikistan, The former Yugoslav Republic of Macedonia, Togo, Turkey, Turkmenistan, Uganda, Ukraine, United Republic of Tanzania, Uzbekistan, Viet Nam, Yugoslavia and Zimbabwe.