The President of the European Patent Office has recently issued two decisions concerning the refund of search fees. The first decision relates to International Search fees, whilst the second decision concerns European Search fees. The decisions will come into force on 1 July 2014.
Where the EPO can make full use of the earlier search report it will issue a full refund. This would occur when the claims of the earlier and later application are identical or when the claims of the later application are limited with respect to those of the earlier application.
Where the EPO can make partial use of the earlier search report, the EPO will issue a partial refund. This would occur, for example, when the claims of the later application are broader than those of the earlier application. Alternatively, this could occur when the claims of the later application are limited with respect to the earlier application, but the limiting feature is not disclosed in the earlier application.
Full or partial refund of International Search fee
Where the EPO acts as the International Searching Authority (ISA) and the International Search Report drawn up by the EPO is based on an earlier search report prepared by the EPO (on an application whose priority is claimed for the international application), the fees will be refunded in the following situations:
Full or partial refund of European Search Fees
Where the European Search report or the supplementary European Search report is based on an earlier search report prepared by the office on an application whose priority is claimed, or a parent application (in the case of a divisional application), or a previous application filed by a non-entitled person, the fees will be refunded in the following situations:
No refund will be due where the subject-matter claimed in the later application is entirely different to that searched in the earlier application. In addition, no refund will be due where the legal requirements for a refund are not fulfilled, for example, where the priority of the earlier application has not been claimed.
Abbreviations used:
BE – Belgium; CY – Cyprus; FR – France; GR
– Greece; IT- Italy; LT– Lithuania; LU - Luxembourg; MT
- Malta; NL – the Netherlands; SM – San Marino; TR
– Turkey.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.