Article 154 - OJ 2005, 226

PCT
Notice from the European Patent Office dated 1 March 2005 concerning the protest procedure under the PCT (lack of unity)

- OJ 2005, 226 -

This Notice replaces the previous Notice published in OJ EPO 1992, 547.

1. Rules 40 and 68 PCT have been amended with effect from 1 April 2005. The effect of the amendments is that the requirement to carry out a review of the justification for the invitation to pay additional fees under Article 17(3)(a) or Article 34(3)(a) PCT prior to requiring payment of a protest fee (Rule 40.2(e) and Rule 68.3(e) PCT) has been deleted.

2. Under Articles 154(3) and 155(3) EPC the boards of appeal at the EPO are responsible for deciding on protests against payment of additional fees for international search or international preliminary examination subject to payment of a protest fee, currently EUR  1 020. These Articles have been deleted from the EPC as revised in 2000 which however has not yet entered into force.

3. Pending entry into force of the revised version of the EPC, where additional fees for international search or international preliminary examination are paid under protest according to Rule 40.2(c) or Rule 68.3(c) PCT, the EPO will continue to subject any invitation to pay such additional fees to an internal review, prior to submission of the protest to the board of appeal. This review is in the nature of a service from the EPO and the previous procedure described in Rule 105(3) EPC is no longer applicable. In order to allow the applicant to consider the result of the review the EPO will, by way of concession, not require payment of the protest fee until one month after the date of notification of the review to the applicant.

4(a) If the result of the review is that the invitation was not justified, any additional fees for international search or international preliminary examination paid will be refunded. If the applicant has already paid the protest fee this will also be refunded.

(b) If the result of the review is that the invitation was entirely justified, the applicant will be notified and will also be informed that if he wishes to proceed to examination of the protest by the board of appeal he must pay the protest fee within one month if he has not already done so.

(c) If the result of the review is that the invitation was justified only in part, the corresponding additional fees will be refunded. If the applicant has already paid the protest fee, the protest will be referred to the board of appeal unless the applicant indicates within one month from notification of the result of the review that he does not wish to continue the protest. If the applicant has not already paid the protest fee, he will be informed that he must do so within one month of the date of the notification of the result of the review if he wishes the protest to be referred to the board of appeal.

5. If the protest fee is duly paid the protest will be referred to the board of appeal for decision.

(a) If the board of appeal finds that the protest was entirely justified, the additional fees and the protest fee will be refunded.

(b) If the board of appeal finds that the protest was justified only in part, the corresponding additional fees will be refunded, but not the protest fee.