Today the rules relating to fees[1] stipulates that the examination fee will be refunded in full if the European patent application is withdrawn, refused or deemed to be withdrawn before the Examination Division (ED) has assumed responsibility of the application. The examination fee can also be refunded at a rate of 75% if the European patent application is withdrawn, refused or deemed to be withdrawn after the ED has assumed responsibility, but before the substantive examination has begun. Exactly when the Examination Division assumes the responsibility really depends on when the request for examination has been filed, which is practically determined by when the Examination fee has been paid. The substantive examination begins on the date when the examiners starts identifying European prior rights not available when the search was carried out, and this date is recorded in the Register.
This rule will now change, and the examination fee will hereafter be refunded as follows:
R Fees 11 (a) in full if the European patent application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun; and
R Fees 11 (b) at a rate of 50% if the European patent application is withdrawn after substantive examination has begun and before expiry of the time limit for replying to the first invitation under Article 94 (3) EPC issued by the Examining Division proper or, if no such invitation has been issued by the Examining Division, before the date of the communication under Rule 71(3) EPC.
A full refund will thus be obtainable if the substantive examination has not begun. For certain files and if operationally possible the EPO will inform the applicant, at least two months beforehand, of the date on which it intends to start substantive examination, and they will commit to not starting substantive examination before the date indicated.
The 50% refund will be applied after the issuance of a first office action, and an applicant will only get this refund if they actively withdraw their application. Communications addressing purely formal deficiencies in the application documents and issued by formalities officers will not be considered an Art 94(3) EPC communication issued by the “Examining Division proper”.
In the situation of a direct grant after search, the 50% refund is only possible to obtain the day before the date printed on the Rule 71(3) EPC communication, meaning that the withdrawal should be done as soon as possible after the positive search opinion has been received.
A withdrawal made conditional on the 50% refund will generally be possible.
RFees 11 (a) a as amended applies to all European patent applications which are withdrawn, refused or deemed to be withdrawn on or after 1 July 2016. Article 11(b) RFees as amended applies to all European patent applications for which substantive examination starts on or after 1 November 2016.
Sofia Willquist, European Patent Attorney
[1] RFees 11 Refund of examination fee