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Administration Process at the EPO is not the sexiest of IP subjects, this IPCopy writer will admit. But when that process affects your wallet (or your client’s wallet), it becomes a bit more interesting.
The EPO is finally increasing the transparency of the process for the refund of Search and Examination fees, and IPCopy is pleased to have seen it! Here’s a quick look at what the problem has been until recently, and the ‘technical and administrative solution’ that the EPO has now implemented.
In the course of obtaining a European patent at the EPO, Search and Examination Fees must be paid at some point in the lifetime of the application (exactly when these are due depends on whether the application is a direct European application, or a regional-phase application of a PCT – ask your patent attorney if you want to know more!). If the application is subsequently withdrawn, these fees will be refunded in some circumstances. If the application is withdrawn before the Search Examiner has begun to draw up the European Search Report, the Search Fee is refunded in full. If the application is withdrawn before substantive examination has begun, a refund of the Examination fee can be obtained: 100% if the application has not yet been passed to the Examining Division, and 75% if it has. These fees are quite sizeable amounts: in excess of 1000 Euros each, so the refunds can be significant, especially for SMEs.
Anyone who has obtained a refund of the Examination Fee will probably have raised an eyebrow or two on receiving a refund that’s less than they were expecting, and wondered if substantive examination of the application really had started in the Examining Division yet – after all, there is no way to tell if this is indeed the case*. Likewise if a refund is refused – how are we to know if Search or Examination really is underway? There is no means of redress for the Applicant, and this has always seemed rather unfair.
Well, a couple of Applicants took the EPO to task over this, and in J25/10 and J9/10, the Legal Board of Appeal declared that this just wasn’t cricket, and something should be done.
In response, the EPO implemented a solution as of 28 June 2013, which you can read about here. The up-shot is that, for every published patent application, the European Patent Register will now include an indication of the date on which the search process began, and the date on which the examination process began. The dates will be triggered automatically by processes within the Search and Examining Divisions respectively.
This might not make it easier to get those refunds, but it will at least make the process transparent, and allow a greater degree of certainty for Applicants who could do with having those fees back in their pockets!
Emily Weal 18 July 2013
(*this sentence of the post was updated after the post originally went up to take account of L.B’s comment below (thank you L.B.).)
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“Anyone who has obtained a refund of the Examination Fee will probably have raised an eyebrow or two on receiving a refund of 75% rather than 100%, and wondered if the application really had been passed to the Examining Division yet – after all, there is no way to tell if this is indeed the case”
The transfer of competence between Receiving Section and Examining Division is determined by the applicant’s own actions under Rule 10 EPC, therefore it has always been possible to objectively determine whether the refund should be 100% or 75%. Cases J9/10 and J25/10 on the other hand concern the situation where the refund is either 75% or 0%,
In particular, in J25/10 it was decided that the burden of proof lay with the EPO in the case where examination had actually begun “behind the scenes” but no official communication had issued yet and that the mere assertion of the primary examiner that he/she was already working on the case (the criterion applied so far for deciding on the refund) was not sufficient. The “solution” merely consists in tracking a piece of data that was available all along: as soon as the examiner opens a dossier on his/her workstation, that action is time-stamped and a corresponding entry is made in the registry. It was a trivial thing to do, but I agree that it was a good choice as it makes the process more transparent.