Notice from the European Patent Office dated 20 August 2019 concerning the revised fee refund procedures
In the Official Journal notice dated 27 February 2019 (OJ EPO 2019, A26) the EPO informed its users about the new refund procedures entering into force on 1 April 2019 and announced that the filing of refund instructions in an electronically processable format would become obligatory in the near future (see point I(b) of the notice).
The EPO has now completed the necessary technical preparations for this next step that will allow end-to-end electronic processing of refund instructions.
Under the fee refund procedures applicable as from 1 October 2019, users will be required to file clear and up-to-date refund instructions in an electronically processable format (XML). As a consequence of this development aimed at further enhancing the refund processes, the EPO will invite any party not complying with the above requirement to claim the refund online as described in section II below. Those parts of the refund procedures relating to the refund recipient as well as the filing and updating of refund instructions have been amended accordingly.
For transparency reasons, the fee refund procedures are reproduced in full in the present notice, which thus supersedes the notice dated 27 February 2019. The filing and format requirements for refund instructions have also been included in the revised Arrangements for deposit accounts (ADA). [ 1 ]
I. Refunds to a deposit account held with the EPO
(a) Refund recipient
The EPO refunds fees to any deposit account that the party to the proceedings before it indicates in its refund instructions. [ 2 ] Parties are therefore also able to indicate a deposit account held by a third party. In the event of a discrepancy between the name of the deposit account holder and the account number indicated, the account number will prevail.
In general, the EPO will keep on file and continue to follow any refund instructions provided until parties update them (see point (b) below). Therefore, parties should ensure that the EPO has clear and up-to-date refund instructions at all times. If none are on file when a refund becomes due or if the instructions on file are ambiguous, the EPO will process refunds as described in section II below.
By way of exception, in the case of a refund of fees not payable by the applicant, proprietor or appellant (if applicant or proprietor), e.g. the opposition fee, the EPO will establish ex officio whether the refund can be credited to a deposit account of the person who made the payment or its professional representative, if appointed. Otherwise it will process the refunds as described in section II below.
As is currently the case, when a refund is due the EPO will issue a communication ("refund advice") informing the party of the pending refund and of the deposit account to which it will make the refund based on the information on file.
(b) Filing and updating refund instructions
As provided for in point 8 ADA, refund instructions must be filed in an electronically processable format (XML) and preferably as early as possible in the proceedings before the EPO:
‒ for European applications or patents, they must be filed via EPO Online Filing or new online filing (CMS), using EPO Form 1001E, 1200E or 1038E;
‒ for international applications, they must be filed via EPO Online Filing, new online filing (CMS) or ePCT, using Form PCT/RO/101. [ 3 ] In EPO Online Filing they may also be filed using the PCT-SFD or PCT-DEMAND plug-in.
Refund instructions submitted via a non-accepted means of filing, in an invalid format or by a third party will not be processed. [ 4 ] The EPO will inform the party concerned accordingly, as a courtesy service.
Until valid instructions are filed, refunds will be processed as described in section II below.
Refund instructions can be updated at any time using EPO Form 1038E (for European patent applications and patents) or PCT-SFD (for international patent applications). It is possible to submit the relevant forms solely for this purpose.
(c) Validity of refund instructions
Refund instructions filed for an international application before the EPO as receiving Office or as an International Authority under the PCT will apply only to refunds due in the international phase. To receive refunds to the same deposit account in the European phase, the party to the proceedings will need to file new refund instructions, preferably using EPO Form 1200E.
Parties are advised to update their refund instructions if their representative changes or if rights are transferred. For European patent applications, if new refund instructions are filed together with a request for a change of representative or a transfer of rights, in general they will apply only once the EPO has processed that request (i.e. not before it has issued the communication confirming the change). For international applications, a request for a change of agent or a transfer of rights may be filed with the receiving Office or the International Bureau (IB) and is recorded by the latter. Any refund instructions reflecting the change must, however, be filed direct with the EPO as receiving Office or as an International Authority under the PCT. Parties are advised to file the instructions either at the same time as the request for a change of agent or a transfer of rights[ 5 ] or as soon as the IB has processed the request. [ 6 ]
If no new refund instructions are filed with a request for a change of representative or a transfer of rights, the EPO will check the validity of the refund instructions on file once it has processed the request. For international applications before the EPO as receiving Office or as an International Authority under the PCT, it will check the validity of refund instructions on file once informed of a change of agent or a transfer of rights by the IB. For legal certainty, the EPO will delete ex officio any instructions to make refunds to a deposit account held by an applicant or representative who has withdrawn from the proceedings. It will delete ex officio too any instructions from an applicant or representative who has withdrawn from the proceedings to make refunds to a deposit account held by a third party.
Following the ex officio deletion of refund instructions, the EPO will process refunds as described in section II below until the new party or representative files new refund instructions.
II. Refunds to a bank account
If the EPO cannot make a refund to a deposit account held with it, it will invite the party to the proceedings to claim the refund via its website.
To do so, it will send two separate communications:
‒ the first, similar to the refund advice mentioned in section I, will inform the party of the pending refund and that it can be claimed online;
‒ the second will contain a refund code required to identify and claim the refund. [ 7 ]
For security reasons, the second communication will neither be put in the public part of the file nor include the number of the patent application or patent concerned. Both communications will state the party's reference on file and the filing date of the application or patent, enabling them to be linked.
To claim the refund, the party will then need to go to epo.org/fee-payment-service/en/refund and register with an email address and password. Since that email address will be the party's user name, associating multiple email addresses with one account will not be possible.
After successfully registering and signing in, the party will need to enter:
‒ the application number from the first communication;
‒ the refund code from the second communication; and
‒ the details of a bank account.
For accounts within the Single Euro Payments Area (SEPA), the only details required will be the IBAN and the name of the account holder. For non-SEPA bank transfers, parties may need to provide more information depending on the country to which the refund is to be transferred. The EPO will pay the transfer fees.
Parties will have the option of saving the bank account details they enter for the purpose of future refunds. When claiming a refund in future, after signing in they will be able to retrieve the details by selecting the relevant check box. Alternatively, they will be able to enter different bank account details. Information on previous refunds will be available with the Refund history function.
To provide greater flexibility, when claiming a refund online, parties will also be able to indicate a deposit account held with the EPO for the refund. However, only that refund will be made to it.
If parties would like all their refunds to be made to a deposit account held with the EPO, they will have to submit separate refund instructions to that effect, using one of the methods indicated in section I, point (b), above. The EPO will follow those instructions for future refunds only, meaning that they will not apply to refunds that parties have already been invited to claim online.
III. Entry into force
The fee refund procedures set out in the present notice will enter into force on 1 October 2019 and will apply to any refunds processed on or after that date. The present notice supersedes the notice from the European Patent Office dated 27 February 2019 concerning the fee refund procedures.
[ 1 ] See point 8 ADA, supplementary publication 4, OJ EPO 2019.
[ 2 ] It is not currently possible to indicate a bank account in the refund instructions.
[ 3 ] This form has been amended to allow the filing of refund instructions.
[ 4 ] On paper, by fax, via the web-form filing service or using a different format such as a PDF attachment or the annotation field in the online forms.
[ 5 ] This applies if the request is filed by the applicant or agent on file.
[ 6 ] This applies if the request is filed by the new applicant or agent, since refund instructions may only be modified by the applicant or agent on file.
[ 7 ] Parties who have queries about the second communication are advised to contact EPO Customer Services via epo.org/contact.