Under current arrangements the EPO refunds 75% of the examination fee after the examining division has assumed responsibility for the case but before substantive examination has actually begun. In order to provide transparency over whether substantive examination has begun the EPO also posts a notice on the EP patents register to let applicants know when substantive examination has started.
As from 1 July 2016 the EPO is going a stage further (see EPO News Item) and is now starting to inform applicants, if operationally possible, at least two months in advance of the date on which it intends to start substantive examination. Any application that is withdrawn, refused or deemed to be withdrawn before such substantive examination has begun will get a full (100%) exam fee refund instead of the previous 75% rate.
Additionally, if an application is withdrawn after substantive examination has begun it will still be possible to get a 50% refund if either (a) the application is withdrawn before the time limit for replying to the first exam has expired or (b) the application is withdrawn before the date of the rule 71(3)EPC communication (in the event that no exam report is issued).
It is noted that no warning will be given by the EPO that they are about to issue a rule 71(3) communication in case (b) above and it will not be possible to get the refund by withdrawing the application on the day the communication issues.
Patent Prosecution Highway with Australia
The EPO also launched a joint Patent Prosecution Highway (PPH) pilot programme with the IP Office of Australia on 1 July 2016. The pilot programme will initially run for 3 years and will allow applicants to ask for accelerated processing based on claims that have been found allowable in one of the offices.
IPcopy notes that accelerated processing, without the administrative hoops required for PPH requests, can be obtained at the EPO simply by asking…
Mark Richardson 20 July 2016