This year, State Intellectual Property Office Announcement No. 272 announced new changes to the suspension and adjustment of some patent fees. Previously, Xiaobian also introduced the relevant situation to everyone. Everyone should remember that the third article of the announcement clearly states:
For the invention patent application entering the substantive examination stage, if the application for withdrawal is taken before the expiration of the reply period of the first review opinion (except for the reply), the 50% patent application substantive examination fee may be refunded.
According to the provisions of this article, if the applicant receives the "First Review Opinion Notice" but decides to waive the patent application, it may submit an active withdrawal request and request the Patent Office to refund 50% of the substantive examination fee. However, there are "limitations" in any regulations. The actual situations that may be encountered in actual work vary widely and need to be interpreted and judged according to legal principles.
Recently, according to the above-mentioned regulations, we have assisted the applicant to submit a request for voluntary withdrawal and refund, and suffered a “return or no refund”. Let's take a look at what happened.
The case was submitted to the “review” status when it submitted the initiative to withdraw the request, but the first review notice was not received. After receiving the withdrawal request from the applicant, the Patent Office issued a notice agreeing to withdraw the patent application, but did not agree to refund 50% of the examination fee. The reason given by the examiner is: "The stage of not refunding half of the actual examination fee, Does not comply with the provisions of the State Intellectual Property Office No. 272 Announcement." After communicating with the examiner, the examiner believes that because the “Notice of First Review Opinion” has not been issued, it does not meet the premise of the refund as stipulated in the announcement, and should not be refunded.
We believe that the examiner's understanding is that the "mechanical application" of the regulations does not explain the application of the regulations from the original intention of the regulations. I thought:
1. The State Intellectual Property Office grants the applicant a 50% substantive examination fee, which is an assessment based on the actual workload of the examiner, ie “no charge” for the work that the examiner has not actually carried out. Although there is no “review period for the first review opinion” in this case, it does not meet the objective conditions stated in the article, but compared with the case where the first review notice has been issued and has not yet been answered, the examiner The labor paid is no different, not increased, or even less. Therefore, from the perspective of the actual workload of the examiner, as long as the applicant makes an active withdrawal request earlier than the time limit for replying to the first review notice, whether or not the notice is issued, the request for a refund of 50% of the substantive examination fee is reasonable;
2. If the applicant has decided to waive the patent application and withdraw the case as soon as possible, it can save more review resources, and it is worth encouraging that the examiner concentrates on reviewing other applications that want to obtain patent rights and improve the efficiency of examination. On the other hand, if the "First Review Opinion Notice" is not issued, the refund will not be allowed, and the applicant will be allowed to let the case "natural death" due to non-response, so that the examiner can do more "useless work", but instead Delay the review process in other cases.
Based on the above reasons, on behalf of the applicant, we prepared and submitted a statement of opinion, asking the examiner to comprehensively consider the original intention of the refund policy and return 50% of the substantive examination fee of the applicant. In November, we received an official notice, and the examiner approved our opinion and agreed to refund the fee.
The divergence points of this case are mainly concentrated on the definition of “the stage of meeting the refund of 50% of the actual audit fee”. In combination with the original intention of the norm, we fully consider the applicant's wishes, review costs, fairness and justice, etc., and successfully maintain the applicant's interest. The new refund policy has also been interpreted from a single perspective.