Refunding examination fees
The Examination Division assumes responsibility subsequent to the applicant’s request for examination and payment of the examination fee. When the first examination report is drawn up is subject to variations depending on the workload of the European examiners.
If the applicant loses interest in the application he may invoke Art. 11(b) of the Rules relating to Fees, which states that 75 percent of the examination fee can be refunded if the “application is withdrawn, refused or deemed to be withdrawn after the Examining Division have assumed responsibility, but before substantive examination has begun”.
This article encourages applicants to withdraw applications so that the Examining Division can focus its limited resources on ‘relevant’ applications. Decision J 25/10 from the Legal Board of Appeal concerns a European application based on an international patent application.
The applicant filed a request for examination and paid the examination fee but reconsidered and filed a request for withdrawal of the European application together with a request for partial refund of the examination fee.
“THE LEGAL BOARD OF APPEAL CONCLUDED THAT THE EXAMINING DIVISION’S DENIAL OF THE REFUND WAS MADE IN A MANNER THAT WAS NEITHER PREDICTABLE NOR VERIFIABLE FOR THE APPLICANT.”
The decision of the European Patent Office (EPO) to deny the partial refund was appealed and, according to the decision on the appeal, the denial was based on the simple statement from the primary examiner that “he had already started with the substantive examination when the application was withdrawn”.
The file did not contain any indication showing, by reference to objective criteria, that the Examining Division had performed a concrete act of any kind that could be regarded as a start of substantive examination in the regional phase once the request for examination had been filed.
Decision J 25/10 summarises that:
