It is rare, but there are times where one will file a European Application (EA) and then change their mind due to business considerations. Filing fees are a significant part of the fees associated with filing an EA. The rules relating to the refund of fees is found in Article 11 of the European Patent Convention (EPC).
Article 11 was amended on June 29, 2016 to clarify when fees can be refunded. From now on, the examination fee shall be refunded:
a) in full if the European patent application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun; or
b) at a rate of 50% if the European patent application is withdrawn after substantive examination has begun but
- before expiry of the time limit for replying to the first invitation under Article 94(3) EPC issued by the Examining Division or,
- if no such invitation has been issued by the Examining Division, before the date of the communication of the intention to grant, under Rule 71(3) EPC.
Thus, the date when the Examining Division assumes responsibility is not relevant anymore. Only the beginning of the substantive examination will be taken into consideration to determine whether the refund is full or partial. Also, the partial refund has been reduced from 75% to now 50%. However, the time limit for obtaining a partial refund is slightly extended.
If you find that your business needs dictate a change in your European Portfolio, do consider obtaining a refund on your EA.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
