If the applicant pays the additional fees under protest and the protest is found admissible, the case is referred to the director to appoint a three-member Review Panel, which comprises the examiner in charge, an examiner as chairperson of the Review Panel and a further examiner. This Review Panel will, in case of entry into the European phase, constitute the Examining Division. The names of the members of the Review Panel are made public on Form 212.[GL/ISPE 10.68; OJ EPO 2015, A59; ]
The Review Panel is appointed from the moment that the protest is found admissible. Its purpose is to determine, on the basis of the protest, whether the request for payment of additional fees by the examiner was justified on the basis of the reasoning given (see W 11/93). The review does not allow a re-evaluation to determine possible additional grounds for lack of unity (see W 9/07, Reasons 2.8).
The scope of the review is limited to those inventions for which additional fees have been paid. If the applicant’s reasoning is not related to those inventions, the Review Panel will come to the conclusion that the protest is not or is only partially justified, depending on the case.
If the Review Panel determines that the protest is wholly justified, it will inform the applicant with Form 212 (Decision on Protest Chapter I). This also applies if the Review Panel’s finding results in the application not lacking unity. It is not necessary to give any reasons unless the Review Panel decides that such reasoning would be beneficial. Furthermore, the Review Panel will order the reimbursement of all the additional fees and the protest fee. The search will be carried out and the written opinion established for the inventions for which the fees are paid (see GL/PCT-EPO B‑VII, 6.3).[GL/ISPE 10.70; ]
If the Review Panel considers that the protest is not justified at all, it will communicate this to the applicant withusing Form 212. Reasoning must be given, indicating why the request for payment ofthe additional fees is upheld, including and addressing the applicant’s relevant arguments to the extent reasonable. The search will be carried out and the written opinion established for the inventions for which the fees are paid (see GL/PCT-EPO B‑VII, 6.3).
If the Review Panel considers that the protest is only partially justified, it will communicate this to the applicant withusing Form 212. Reasoning must be given, indicating why the request for payment of the additional fees is partially upheld, including and addressing the applicant’s relevant arguments to the extent reasonable. The search will be carried out and the written opinion established for the inventions for which the fees are paid (see GL/PCT-EPO B‑VII, 6.3). The Review Panel will order the reimbursement of the corresponding additional fees but not the protest fee.
The formalities officer will send the decision of the Review Panel to the applicant and the IB. The decision on protest (Form 212) will be sent out together with the final ISR and WO-ISA in order to ensure that both are consistent.
After an invitation to pay additional search fees, the applicant may pay all of the additional fees under protest. If the Review Panel confirms the initial finding of lack of unity by finding the protest not justified, and if the application enters the European phase with unamended claims, the Examining Division will, as a rule, confirm the lack of unity and request the applicant to limit the claims to one invention and to file (a) divisional application(s) for the other invention(s). Alternatively, the applicant may amend the claims to render them unitary.
See also GL/EPO C-III, 3.3.
Date retrieved: 24 November 2017
11 references found.Click X to load a reference inside the current page, click on the title to open in a new page.
EPO Guidelines - C Procedureal Aspects of Substantive Examination
EPO PCT GL - A Formalities Examination
EPO PCT GL - B Search
EPO PCT GL - C Procedureal Aspects Chapter II
Offical Journal of the EPO
XOJ EPO 2015, A59 - Decision of the President of the European Patent Office dated 9 June 2015 providing for review panels for the implementation of the protest and review procedures under the PCT