The EPO has recently announced several changes in the availability of certain refunds of Examination fees paid for European patent applications. Currently, the Examination fee for European patent applications is €1635, or €1825 for PCT applications for which no supplementary European search report is required, i.e., applications for which the International Search Authority is the EPO. Such fees are relatively high, and the opportunities for obtaining refunds of such fees were limited under the previous rules. More particularly, under the old rules the Examination fee would be refunded in full if the application was withdrawn, refused, or deemed withdrawn before the Examining Division of the EPO had assumed responsibility, or at a rate of 75% if the Examining Division had assumed responsibility but before substantive examination had begun. Moreover, the point in time at which the Examining Division had assumed responsibility, and the point in time at which substantive examination had begun were unclear under the old system. This meant that Applicants would be unsure about which refund, if any, was available.
Under the new rules, the 75% refund is no longer applicable. The EPO will now send a communication informing Applicants at least two months in advance of the date on which it intends to start substantive examination. Any application which is withdrawn, refused or deemed to be withdrawn before the date on which substantive examination has begun will benefit from a 100% refund of the Examination fee, whether or not the Applicant has received the aforementioned communication. It appears according to the EPO that these communications will be phased in gradually. Such full refunds are available from 1 July 2016. This obviously provides benefits to Applicants in having a two month window in which to withdraw an application to obtain a full refund of the Examination fee.
Furthermore, under the new rules, the Applicant can benefit from a partial refund of the Examination fee paid even if substantive Examination has begun. That is, 50% of the Examination fee will be refunded if the application is withdrawn before expiry of the time limit for replying to the first Examination Report under Article 94(3) EPC in the Examination stage. The normal period for replying to the first Examination Report is four months, extendable to six months. Such 50% refund of the Examination fee is also available for applications which proceed directly to allowance, that is, where no communication under Article 94(3) issues. In this case, if the application is withdrawn at the latest one day prior to the date of notification of the intention to grant the application, a 50% refund of the Examination fee will be available. For the latter case, unlike the above communication notifying applicants of the date when substantive examination will begin, there will be no advance warning of when the notification of intention to grant will issue. The 50% refund of the Examination fee applies to all European patent applications for which substantive examination starts on or after 1 November 2016.
In view of the above changes, it is clear that there will be further opportunities for obtaining at least a partial refund of the Examination fee paid for European patent applications. Applicants can now wait for later into the prosecution of their application to decide whether to withdraw the application in order to obtain a refund. For example, an Applicant having responded to the search report can wait until the first Examination Report is issued by the Examining Division before determining whether to continue prosecuting the application, and still obtain a partial refund of the Examination fee paid if they decide to withdraw the application. The new provisions may also be viewed as motivation for Applicants to withdraw their applications, thus easing the workload of the EPO.