EPO Relaxes Rules on Examination Fee Refunds

It may be the case that you no longer believe that your European patent application will be useful, that the expense of keeping it going cannot be justified, or that it will not be possible to overcome the examiner’s objections.

In general, in such circumstances, we recommend thinking twice before abandoning – withdrawal of a patent application can only be reversed if certain narrow criteria apply, and (assuming that the withdrawn patent application has been published) refiling the patent application cannot result in a valid patent.

To keep options open for as long as possible and to allow for the possibility of a change of mind, it is often best to take no action and to allow a patent application to lapse rather than actively withdraw it. In this way it may take several months or longer before a patent application is irretrievably abandoned.

However, in some circumstances, there are advantages in active withdrawal. For example, some official fees may be refunded if an application is withdrawn, deemed withdrawn or refused before certain deadlines.

Regarding refunds of European examination fees (usually EUR 1,840 or EUR 2,055 depending on the type of application at the time of writing in February 2024), the law has changed:

• Since 1 July 2016 a simplified and more generous procedure has applied – 100% of the examination fee is refunded if an application is withdrawn, refused or deemed withdrawn before substantive examination has begun (the date of this is indicated in the European patent register). Previously only 75% of the examination fee was refunded if the application had become the responsibility of the examining division but substantive examination had not yet started.
• From 1 November 2016, for the first time it will be possible to obtain a partial refund of the examination fee even if substantive examination has begun. 50% of the fee will be refunded if the application is actively withdrawn before expiry of the time limit for responding to the first report of the examining division, or – if no such report issues – before the date of the communication in which the EPO indicates that it intends to grant a patent. This refund will only apply in the event of active withdrawal (i.e. where the applicant or their representative explicitly indicate that they are withdrawing the application) not in the event of refusal or deemed withdrawal due to non-response. Search opinions (amongst other reports) are not considered to be reports of the examining division: therefore, it will be possible to obtain a 50% refund even after responding to a search opinion.

Our understanding is that the EPO hopes that these changes will encourage more applicants to actively withdraw cases thereby enhancing efficiency.

It should be noted that full or partial refunds can also be obtained in respect of other official fees (e.g. search fees and appeal fees) in certain circumstances.

Author: Robert Gregory, Director