Amendments relating to the refund of the fees for European and Euro-PCT patent applications

26.01.2002

By two decisions of the Administrative Council of 18 October 2001 and 13 December 2001, the European Patent Office (EPO) has modified the rules relating to fees.



By two decisions of the Administrative Council of 18 October 2001 and 13 December 2001, the European Patent Office (EPO) has modified the rules relating to fees.I Refund of the Search fee (Article 10)A refund of 50 or 100% of the search fee (it was of 25, 50, 75 or 100% before) will apply when the European search report is based on an earlier search report already prepared by the EPO on an application whose priority is claimed.- A 100% refund of the search fee paid will apply where the European or international search report may be based wholly on the earlier search. 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 by a feature already disclosed in the earlier application.- A 50% refund of the search fee paid will apply where the European or international search report may be based partly on the earlier search. This would occur, in particular, where the claims of the later application are broader than those of the earlier application or where the claims of the later application are limited by a feature not already disclosed in the earlier application. This modification applies to all European patent applications and international applications in respect of which the European or international search report is drawn up on or after 3 January 2002.II Refund of the international preliminary examination fee (New Article 10d)The result of the international search will be the basis for rationalised international preliminary examination, which can be followed by a more detailed substantive examination.Exemples of cases cited in a Notice of the President of the European Patent Office dated 2 November 2001."XY cases"If the international search report contains at least one X or Y document, and the applicant has neither filed amendments under Article 19 or 34(2)(b) PCT nor expressly requested detailed preliminary examination, the international search report becomes the basis for a negative written opinion without involving the substantive examiner again.If this rationalised written opinion prompts no response under Rule 66.3 PCT, the EPO will draw up an international preliminary examination report with the same content as the written opinion and refund two thirds of the preliminary examination fee.If the applicant responds to the rationalised written opinion under Rule 66.3 PCT by requesting detailed substantive examination, the substantive examiner will exceptionally draw up a second opinion, unless in the light of that examination he can issue directly a positive examination report."A cases"If the international search report does not cite X or Y documents, and the applicant has neither filed amendments under Article 19 or 34(2)(b) PCT nor expressly requested detailed preliminary examination, the EPO will issue a positive rationalised examination report without involving the substantive examiner again and refund two thirds of the preliminary examination fee.The new system applies to all international applications on which the EPO draws up a rationalised international preliminary examination report as from 3 January 2002.III Refund of the European examination fee (Article 12)If an international application is pursued before the EPO as elected Office (Euro-PCT route) and the Office has refunded two thirds of the international preliminary examination fee, the full European examination fee is payable under Article 12(2).Thus applicants will benefit from the 50% reduction in the European examination fee only if the EPO has drawn up a detailed international preliminary examination report on the Euro-PCT application.