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Changes to terms of reimbursement for EP examination fees

25-07-2016

The European Patent Office (EPO) has changed the terms of reimbursement for European Patent (EP) examination fees. Novagraaf’s Philippe Vigand outlines the changes.

Changes to the EPO’s terms of reimbursement provide new possibilities for patent applicants to optimise their prosecution strategy while minimising the costs of patent applications. In particular:

A full refund is now possible on withdrawal before the start of substantive examination
As of 1 July 2016, the examination fee will be refunded in full if the relevant patent application is withdrawn or rejected before the substantive examination has begun.

Before this change, the examination fee would only be refunded in full if the application was withdrawn before the Examining division became competent and at a rate of 75% before the examination had started.

The EPO will now inform applicants “for certain files and if operationally possible” of the date at which the substantive examination is intended to be started, at least two months beforehand. The start date is also published in the European Patent register.

Partial refunds for withdrawals during examination
From 1 November 2016, the examination fee will be refunded at the rate of 50% if the patent application is withdrawn before the end of the term to reply to the first communication of the Examining division (A94(3) EPC). Currently, no refund is possible once the Examining division has begun examination.

Please note that the “first communication of the Examining division” is not the Search Report written opinion, but instead the first communication once the applicant has replied to this written opinion. Formal communications are not taken into account.

In other words, these new terms of reimbursement will allow applicants to make a first response to the written opinion and, if this response is not found persuasive by the Examiner, to withdraw the patent application and still obtain a partial refund.

Partial refunds for withdrawals before a direct grant
In the case of a direct grant, when the first communication from the Examining division is the communication of a text intended to be granted (R71(3) EPC), the examination fee will also be refunded at the rate of 50% as of 1 November 2016, if the patent application is withdrawn before the day on which the R71(3) communication is issued.

Although the date of the R71(3) communication is difficult to predict, this does enable an applicant to obtain a partial refund in the case of a direct grant once the examination has begun. It is also possible to file a conditional withdrawal, in other words a withdrawal only if a reimbursement is possible, hence allowing the grant of a patent if the reimbursement is not possible.

For specific advice on optimising the prosecution strategy for your patent portfolio, please speak to your Novagraaf attorney or contact us.