Article 26

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 27 February 2019 concerning the fee refund procedures

The EPO is making an increasing number of fee refunds. It has therefore reviewed its refund procedures with the aim of increasing efficiency and providing a better service.

While, in the majority of cases, the EPO will continue to make refunds to a deposit account held with it (see section I), it will no longer make refunds by cheque and make bank transfers instead (see section II).1 In addition, it will offer users more flexibility in their choice of refund recipient.

Under the revised fee refund procedures, the filing of clear and up-to-date refund instructions will be paramount to ensuring a smooth refund process. Detailed guidance on how and when to file such instructions is provided below.

I. Refunds to a deposit account held with the EPO

(a) Refund recipient

In general, from 1 April 2019 the EPO will refund fees to any deposit account that the party to the proceedings2 before it indicates in its refund instructions.3 Contrary to the practice before this date, parties will therefore also be able to indicate a deposit account held by a third party. In the event of a discrepancy between the name of the deposit account holder and the account number indicated, the account number will prevail.

In general, the EPO will keep on file and continue to follow any refund instructions provided until parties update them (see point (b) below). Therefore, parties should ensure that the EPO has clear and up-to-date refund instructions at all times. If none are on file when a refund becomes due or if they are ambiguous, the EPO may decide itself whether it can make a refund to a deposit account. In particular, if a professional representative (or international agent) appointed for the proceedings holds a deposit account with the EPO, they will be deemed to be authorised to receive payments and so the refund will be made to their account. Otherwise, the EPO will make the refund to the party's deposit account, if it has one.

As it does now, when a refund is due the EPO will issue a communication ("refund advice") informing the party of the pending refund and of the deposit account to which it will make it based on the information on file.

(b) Filing and updating refund instructions

To enable the smooth and quick processing of refunds, refund instructions should preferably be filed in an electronically processable format (XML) and as early as possible in the proceedings before the EPO.

• For European applications or patents, they should be filed via EPO Online Filing or new online filing (CMS), using EPO Form 1001E, 1200E or 1038E.4
• For international applications, they should be filed via EPO Online Filing, new online filing (CMS) or ePCT, using Form PCT/RO/101.5 In EPO Online Filing they may also be filed using the PCT-SFD or PCT-DEMAND plug-in.

Filing refund instructions in an electronically processable format (XML) will become obligatory in the near future. Users are advised to prepare for this change by adapting their workflows in good time.

For the time being, the EPO will continue to accept refund instructions filed by other means,6 although they may delay refund processing.

Refund instructions can be updated at any time, preferably using EPO Form 1038E (for European patent applications and patents) or PCT-SFD (for international patent applications). It will be possible to submit the respective forms solely for this purpose.

(c) Validity of refund instructions

Refund instructions filed for an international application before the EPO as receiving Office or as an International Authority under the PCT will apply only to refunds due in the international phase. To receive refunds to the same deposit account in the European phase, the party to the proceedings will need to file new refund instructions, preferably using EPO Form 1200E.

Parties are advised to update their refund instructions if their representative changes or rights are transferred. For European patent applications, if new refund instructions are filed together with a request for a change of representative or a transfer of rights, in general they will apply only once the EPO has processed that request (i.e. not before it has issued the communication confirming the change). For international applications, a change of agent or a transfer of rights may be requested with the receiving Office or the International Bureau (IB) and is recorded by the latter. Any refund instructions reflecting the change must, however, be filed direct with the EPO as receiving Office or as an International Authority under the PCT. Parties are advised to file them either at the same time as the request for a change of agent or a transfer of rights7 or as soon as the IB has processed that request.8

If no new refund instructions are filed with a request for a change of representative or a transfer of rights, the EPO will check the validity of the refund instructions on file once it has processed that request. For international applications before the EPO as receiving Office or as an International Authority under the PCT, it will check the validity of refund instructions on file once informed of a change of agent or a transfer of rights by the IB. For legal certainty, the EPO will delete ex officio any instructions to make refunds to a deposit account held by an applicant or representative who has withdrawn from the proceedings. It will delete ex officio too any instructions from an applicant or representative who has withdrawn from the proceedings to make refunds to a deposit account held by a third party.

Following the ex officio deletion of refund instructions, the EPO will process refunds based on the information on file (see point (a) above) or under section II below until the new party or representative files new refund instructions.

II. Refunds to a bank account

If the EPO cannot make a refund to a deposit account held with it, it will invite the party to the proceedings to claim the refund via its website.

To do so, it will send two separate communications:

• The first, similar to the refund advice mentioned in section I, will inform the party of the pending refund and that it can be claimed online.
• The second will contain a refund code required to identify and claim it.9

For security reasons, the second communication will neither be put in the public part of the file nor include the number of the patent application or patent concerned. Both communications will state the party's reference on file and the filing date of the application or patent, enabling them to be linked.

To claim the refund, the party will then need to go to www.epo.org/fee-payment-service/en/refund and register with an email address and password. Since that email address will be the party's user name, associating multiple email addresses with one account will not be possible.

Upon successful registration and login, the party will need to enter:

• the application number from the first communication;
• the refund code from the second communication; and
• the details of a bank account.

For accounts within the Single Euro Payments Area (SEPA), the only details required will be the IBAN and the name of the account holder. For non-SEPA bank transfers, parties may need to provide more information depending on the country to which the refund is to be transferred. The EPO will pay the transfer fees.

Parties will have the option of saving the bank account details they enter for the purpose of future refunds. When claiming a refund in future, after logging in they will be able to retrieve the details by ticking the relevant checkbox. Alternatively, they will be able to enter different bank account details. Information on previous refunds will be available in the refund history function.

To provide greater flexibility, when claiming a refund online, parties will also be able to indicate a deposit account held with the EPO for the refund. However, only that refund will be made to it.

If parties would like all their refunds to be made to a deposit account held with the EPO, they will have to submit separate refund instructions to that effect, preferably using one of the methods indicated in section I, point (b), above. The EPO will follow those instructions for future refunds only, meaning that they will not apply to refunds which parties have already been invited to claim online.

III. Entry into force

These revised fee refund procedures will enter into force on 1 April 2019 and apply to any refunds processed on or after this date.