3.4 Refund of additional search fees 

If the applicant has paid further search fees in response to an invitation under Rule 64(1), Rule 164(1) or Rule 164(2) and has requested a refund, the examining division is required to review the validity of the finding of lack of unity (see also F‑V, 4 to F‑V, 7).

A refund request should be handled promptly. If the examiner concludes that it should not be granted, the applicant is informed of the examining division's preliminary opinion in a communication under Art. 94(3). This preliminary opinion takes into account the arguments put forward by the applicant in their reply to the search opinion. The applicant is informed that they may request an interlocutory decision on the refund, allowing a separate appeal under Art. 106(2). If there is a pending request for oral proceedings, the applicant is also invited in the communication to clarify whether this request also applies to the issuing of the interlocutory decision on the request for refund. If the applicant confirms this to be the case, oral proceedings will have to be held before a negative decision on the request for refund can be issued.

an An interlocutory decision to that effect should be issued at the earliest opportunity, subject to the requirements of Art. 113(1), and not left until the final decision on the application. Of course, if the stage in the procedure when the examiner is in a position to issue the decision on the refund coincides with the issuing of either a Rule 71(3) communication or a decision refusing the application, then, in the former case, the interlocutory decision can be issued with the Rule 71(3) communication; in the latter case, the decision on the refund can be included in the decision refusing the application. The examiner ensures that the interlocutory decision issued on this matter clearly states that a separate appeal under Art. 106(2) is allowed.

Before an interlocutory decision is issued which refuses the request to refund additional search fees under Rule 64(2), applicants should be informed of the examining division's preliminary opinion in a communication under Art. 94(3). The arguments presented by the applicants in their reply to the search opinion should be taken into account in this preliminary opinion. Furthermore, a time limit should be set in order to give the applicants the possibility to comment on the examining division's preliminary opinion. At the same time, the applicants can be informed that they may request an interlocutory decision on the refund which will allow separate appeal under Art. 106(2). If these requirements are fulfilled, the applicant's right to be heard under Art. 113(1) is respected. The same procedure applies to the refund of search fees paid under Rule 164(1) and Rule 164(2).

Rule 164(5) provides for a refund of any search fee paid under Rule 164(1) or Rule 164(2) in line with Rule 64(2) (see A‑X, 10.2.2). Where the applicant pays a search fee in response to the Rule 164(2) invitation and at the same contests the basis for requiring payment of a search fee and requests its refund under Rule 164(5), the examining division may deal directly with this issue in the communication under Art. 94(3) and Rule 71(1) or Rule 71(2) that accompanies the search results under Rule 164(2). Such an immediate review of the applicant's request is not possible in cases under Rules 64(1) and Rule 164(1) until the examining division assumes responsibility for the application.

The review under Rule 64(2) or Rule 164(5) is restricted to a reconsideration of the validity of the original finding under the circumstances existing at the time the Rule 64(1), Rule 164(1) or Rule 164(2) invitation was sent, taking into account only the prior art that was available at that time. For more details on the assessment of unity of invention, see F‑V.

The issue of refunds of additional international search fees paid to the EPO acting as ISA in response to an invitation under Art. 17(3)(a) PCT, however, does not arise in the European phase because these fees were paid in the international phase, which is closed by this stage of the procedure. The applicant may contest the payment of additional international search fees to the EPO acting as ISA by paying these under protest according to Rule 40.2(c) PCT. However, this must be done in the international phase (see also the decision of the President of the EPO dated 9 June 2015, OJ EPO 2015, A59, and the notice from the EPO dated 24 March 2010, OJ EPO 2010, 322).