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Notice from the European Patent Office dated 9 January 2009 concerning the criteria for refund of search fees

OJ EPO 2009, 99

1. Where the EPO can make full or partial use of a search report it has drawn up earlier, a refund of the search fee is provided for

  • in Article 9(2) of the Rules relating to Fees[ 1 ] in conjunction with a decision of the President of the European Patent Office under that provision[ 2 ], and
  • in Article 5(2)(i) in conjunction with Annex C, Part II(3), of the Agreement under the PCT between the EPO and the International Bureau of WIPO[ 3 ] and a communication from the EPO to the International Bureau, based on a decision of the President of the European Patent Office[ 4 ].

2. The criteria determining the applicable refund level are as follows:

2.1. The "full refund" level will apply where the EPO can make full use of the earlier search report for drawing up the European or international search report.

This would occur, in particular, where the claims of the earlier and the later application are identical or where the claims of the later application are limited with respect to those of the earlier application, this limitation being due to

(a) the deletion of alternative features from an independent claim or

(b) the introduction of one or more limiting features into one or more of the independent claims of the later application where the limiting feature(s) was/were all contained in a dependent claim referring back to said independent claim(s) in the earlier application.

2.2. The "partial refund" level will apply where the EPO can make partial use of the earlier search report for drawing up the European or international search report.

This would occur, in particular, where

(a) the claims of the later application are broader than those of the earlier application, this broadening representing a further generalisation of the same invention as that searched in the earlier application, or

(b) the claims of the later application are limited with respect to those of the earlier application, due to a limiting feature not disclosed in the earlier application but relating to the same invention as that searched in the earlier application.

The cases referred to under points 2.1 and 2.2 are intended to illustrate the most common situations but are not to be considered exhaustive.

2.3. No refund will be due

(a) where the subject-matter claimed in the later application represents an invention different from that searched in the earlier application, or

(b) the legal requirements for a refund are not fulfilled, for example where the priority of the earlier application is not claimed.

3. In due course after mailing the European or international search report, the EPO will make the refund after informing the applicant of the amount.

4. This notice replaces those dated 1 July 2005 concerning the criteria for refund of search fees (OJ EPO 2005, 433) and 31 January 2008 concerning the criteria for refund of search fees by the EPO acting as International Searching Authority (OJ EPO 2008, 200).

 

 

[ 1 ] Supplement to OJ EPO 2/2009.

[ 2 ] OJ EPO 2009, 96.

[ 3 ] OJ EPO 2007, 617.

[ 4 ] OJ EPO 2009, 114.