The EPO's Legal Board of Appeal decided on 3 November in J 0002/26, published on 6 November, that renewal fees already due for the parent application when a divisional is filed must be paid again for the divisional, even if the parent's fees were paid long ago. The applicant's request for a refund of the third- to eleventh-year renewal fees it had paid for the divisional was refused, as was its request to reimburse the appeal fee.
Divisional EP 22190072.3 was filed on 11 August 2022 from parent EP 12793105.3.
Disputing the requirement, the applicant still paid the third- to eleventh-year renewal fees under protest on 9 December 2022, within the four-month period of Rule 51(3) EPC, and asked for a refund in a separate letter. The Receiving Section refused the refund on 13 May 2026, and the applicant appealed.
The argument over "due"
The applicant read the fees "already due in respect of an earlier application" as fees due and still unpaid, so years already paid on the parent would not have to be paid again. The Board rejected this:
- "Due" and the German "fällig" mark the moment the obligation to pay arises, not whether the fee is still unpaid; the German text's past perfect, "fällig geworden sind", stresses that the debt has arisen.
- The rule speaks of renewal fees in the plural, covering every year that fell due, counted from the filing date the divisional enjoys, before it was actually filed.
- A divisional keeps the parent's filing date and priority, and parent and divisional can each lead to a patent. Charging only unpaid years would give divisionals a large discount with no justification.
Payment period
Under Rule 51(3), these fees fall due when the divisional is filed and may be paid within four months without an additional fee, as may any renewal fee falling due within those four months. After that, Rule 51(2) applies and an additional fee is payable. In this case nine years' fees, the third to the eleventh, were paid at once.
J&C recommends that applicants deciding whether and when to file a European divisional build this one-off fee and the four-month payment period into the budget and timetable, since the later the divisional, the more years are due at once.
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