A decision of the Administrative Council of the European Patent Organisation relating to the refund of the examination fee, of 29 June 2016, amends Article 11 of the Rules Relating to Fees (RRF).

Thus, the date when the Examining Division assumes responsibility is not relevant anymore. Only the beginning of the substantive examination will be taken into consideration to determine whether the refund is full or partial, now 50% instead of 75%. However, the time limit for obtaining a partial refund is slightly delayed.

From now on, the examination fee shall be refunded:

  1. in full if the European patent application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun;
  2. at a rate of 50% if the European patent application is withdrawn after substantive examination has begun but
  • before the expiry of the time limit for replying to the first invitation under Article 94(3) EPC, issued by the Examining Division or,
  • if no such invitation has been issued, before the date of the communication of the intention to grant, under Rule 71(3) EPC.

N.B.: new paragraph b) only applies to applications which are withdrawn, and not to applications which have been refused or deemed withdrawn.

In addition, a notice of the EPO of June 30, 2016 details the practical aspects of its application.

In particular, for certain files and if operationally possible, the date on which substantive examination is intended to start will be indicated approximately 2 months beforehand, through an information letter and mention in the online registry. This information letter commits the Office to not starting substantive examination before the date indicated, although it may start later.

The following are regarded as first invitation under Article 94(3) EPC issued by the Examining Division:

  • Invitations pursuant to Rule 137(4) EPC,
  • Invitation to remedy deficiencies in the application, referring to the possibility of deemed withdrawal (Article 94(4) EPC), attached to the minutes of a consultation by phone or in person;
  • Communications on consideration of the 'completely contained' criterion regarding missing parts of description and/or missing drawings subsequently filed (Rule 56(3) EPC).

The following are NOT regarded as first invitation issued by the Examining Division:

  • Communications addressing purely formal deficiencies issued by formalities officers, even if sent as communications under Article 94(3) EPC, or
  • Communications of the Examining Division issued under other legal basis addressing purely formal deficiencies (such as communications under Rule 164(2)a) EPC or 53(3) EPC, or under Article 124 EPC).

In case of direct grant, the 50% refund possibility exists until the day before the date on which the examining division issues the communication of intention to grant (under Rule 71(3) EPC), which is the date printed on the communication.

A withdrawal made conditional on the 50% refund remains possible.

Conclusion and recommendations.

The above modifications have no impact for applications where a normal examination procedure and issuance is desired. However, these changes optimise the refund of the examination fee when the applicant no longer wishes to obtain a grant. We therefore invite you to let us know as soon as possible when the abandonment of a patent application is considered, spontaneously or in response to the dispatch of the EPO information letter within the 2 months preceding the beginning of the substantive examination, to enable us to obtain, whenever possible, a refund of the examination fee.