EPO fee refund rules for abandoned patent applications
When a European application is abandoned for commercial reasons, it is sometimes possible to obtain a refund of some of the European Patent Office (EPO) fees paid for the application.
Revised refund timings
The EPO is changing its rules (with full effect from 01 November 2016) so that a refund of the examination fee will now be allowed later than before.
Comparing old and new examination fee refund rules
The diagram (below) summarises the change from the old to the new rules, showing the percentage of the examination fee which can be refunded at various stages of the prosecution.
Hence, a complete refund of the examination fee is available if the application is withdrawn before examination has started.
The EPO will start sending a letter informing the applicant of the start of examination at least two months in advance, to help determine whether a refund is available.
Also, a 50% refund is available if the application is withdrawn before the expiry of the time limit for responding to the first examination report. The application has to be formally withdrawn to qualify for the refund – no refund is possible if the application lapses because no response to the examination report is filed.
Advice for clients
Where a commercial decision is taken to abandon a European patent application, your D Young & Co attorney can advise whether it is possible to gain an examination fee refund.
You may now qualify for a refund even if substantive examination has already begun and an official letter has already been received.