OJ EPO 2013, 153

In view of decisions J 25/10^[ 1 ] and J 9/10^[ 2 ] of the Legal Board of Appeal and their implications for current practice with regard to search and examination fee refunds, the Office has decided to implement a technical and administrative solution^[ 3 ] which will define specific, transparent search- or examination-related acts, thereby fulfilling the requirements of these two decisions without having to amend the Rules relating to Fees (RFees), Articles 9(1) and 11(b) of which thus remain unchanged.

Under Article 11(b) RFees, the examination fee is refunded at a rate of 75% if the European patent application is withdrawn, refused or deemed to be withdrawn after the examining divisions have assumed responsibility but before substantive examination has begun.

Similarly, under Article 9(1) RFees, the search fee paid for a European or supplementary European search is refunded in full if the European patent application is withdrawn, refused or deemed to be withdrawn before the Office has started drawing up the search report.

The present notice outlines the new system which will take effect on 28 June 2013.

Introduction of a technical and administrative solution

Under Articles 9(1) and 11(b) RFees, the 75% and 100% refund of the examination and search fee respectively can be refused only if the Office has started substantive examination or drawing up the search report.

However, to comply with the case law, the confirmation that search or examination has already started must be based on transparent facts which objectively support it.

This means that the examining or search division must specifically and transparently signal that examination or search has started.

Act starting the search

The initiation of preparatory work to issue any first action performed by the search division – except the A2 publication – will trigger in the system the execution of a search algorithm which will create a raw list of relevant prior-art documents serving as the basis for the examiner to define an appropriate search strategy for the case in point. Once this list is created, the system will generate a search starting date.

The search starting date will be stored in the publicly available part of the electronic file to ensure that it is verifiable.

For published applications, this date will be visible to all in the European Patent Register. For applications not yet published, the search starting date will be stored but be visible only at the request of the applicant or his representative or by inspecting the file using the MyFiles service.

Act starting examination

The initiation by the examining division's first member of preparatory work to issue a communication from the division will trigger in the system the execution of an algorithm identifying the state of the art, within the meaning of Article 54(3) EPC, not available when the search was carried out, and the documents cited by other offices on applications of the same family. Once this operation is performed, the system will generate an examination starting date.

This date will be stored in the system to ensure that it is verifiable, being visible to all in the European Patent Register; for applications not yet published, the same procedure applies as that described above for the search starting date.

Entry into force, previous notices superseded

With effect from its entry into force, on 28 June 2013, the present EPO notice supersedes the notice dated 22 October 2009 concerning the refund of the examination fee^[ 4 ].