INFORMATION FROM THE EPO
Notices of the President of the EPO
Notice from the President of the European Patent Office dated 1 July 2005 concerning the criteria for refund of search fees1
1. Where the European or international search may be wholly or partly based on an earlier search report already prepared by the EPO, a refund of search fees is provided for in
- Article 10, paragraph 2, of the Rules relating to Fees2 in conjunction with the Decision of the President of the European Patent Office dated 1 July 2005 concerning the refund of search fees (OJ EPO 7/2005, 431) and
- Annex C Part II(3) of the Agreement between the EPO and WIPO under the PCT3 in conjunction with the Notice from the President of the EPO dated 1 July 2005 concerning revised amounts of the refund of search fees in the light of the introduction of the extended European search report as from 1 July 2005 (OJ EPO 7/2005, 463).
2. The criteria for determining the applicable refund rate are as follows:
2.1. The full refund 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 with respect to those of the earlier application, this limitation is due to
(a) the deletion of alternative features from an independent claim or
(b) the introduction of one or more limiting features into one or more of the independent claims of the later application where the limiting feature(s) was/were all contained in a dependent claim referring back to said independent claim(s) in the earlier application.
2.2. The partial refund will apply where the European or international search report may be based partly on the earlier search.
This would occur, in particular, where
(a) the claims of the later application are broader than those of the earlier application, this broadening representing a further generalisation of the same invention as that searched in the earlier application, or
(b) the claims of the later application are limited with respect to those of the earlier application, due to a limiting feature not disclosed in the earlier application but relating to the same invention as that searched in the earlier application.
The cases referred to under points 2.1 and 2.2 are intended to illustrate the most common situations but are not to be considered exhaustive.
2.3. No refund will be due
where the subject-matter claimed in the later application represents an invention different from that searched in the earlier application, or
the legal requirements for a refund are not fulfilled, for example, where the priority of the earlier application is not claimed (Article 10(2) RFees).
3. The procedure for refunding search fees remains unchanged, ie the rate of refund applicable will be communicated to the applicant together with the European or international search report, and the EPO will make the corresponding refund. In the event of disagreement, the applicant may request a decision from the EPO.
4. This Notice applies to search reports drawn up on European and international patent applications filed on or after 1 July 2005.
1 This Notice replaces - with regard to the search reports referred to in No. 4 of this Notice - the Notice from the President of the European Patent Office dated 13 December 2001 concerning refund of search fees (OJ EPO 1/2002, 56).
2 as amended by decision of the Administrative Council dated 9 December 2004, OJ EPO 1/2005, 5.
3 Current version, see OJ EPO 12/2003, 631, republished in OJ EPO 7/2005, 463.