Article 10(2) RRF - OJ 2002, 56

Notice from the President of the European Patent Office dated 13 December 2001 concerning refund of search fees¹

- OJ 2002, 56 -

1. The criteria for refund of European search fees² as provided for in Article 10 paragraph 2 of the Rules relating to fees³ and for refund of international search fees as provided for in Annex C Part II(3) of the Agreement between the EPO and WIPO under the PCT⁴, where the European or international search may be based on an earlier search report already prepared by the EPO, have been simplified.

2. A 100% refund of the search fee paid 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.

3. A 50% refund of the search fee paid 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 and 3 are intended to illustrate the most common situations but are not to be considered exhaustive.

4. 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(1) RFees, Rule 16.3 PCT, PCT Agreement between the EPO and WIPO, Annex C, Part II(3)).

5. The procedure for refunding search fees remains unchanged. 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.

6. This communication applies to all European patent applications and international applications in respect of which the European or international search report is drawn up on or after 3 January 2002.