If the applicant has paid further search fees in response to an invitationof the Search Division under Rule 64(1), Rule 164(1) or Rule 164(2) and has requested a refund of these, the Examining Division is required to review the validity of the finding of lack of unity (see also F‑V, 10 to F-V, 13).
Requests for refunds should be handled promptly. If the examiner concludes that a request for refund should not be granted, an interlocutory decision to that effect should be issued at the earliest opportunity, subject to the requirements of Art. 113(1), and the issuing of the decision should not normally be left until the final decision on the application. Of course, if the stage in the procedure at which the examiner is in a position to issue the decision on the refund coincides with the issuing of either a Rule 71(3) communication or a decision refusing the application, then in the former case the interlocutory decision can be issued with the Rule 71(3) communication, and in the latter case the decision on the refund can be included in the decision refusing the application. An interlocutory decision issued on this matter will allow separate appeal under Art. 106(2).
Before an interlocutory decision is issued which refuses the request to refund additional search fees under Rule 64(2), the applicant should be informed of the Examining Division’s preliminary opinion in a communication under Art. 94(3). The arguments presented by the applicant in his reply to the search opinion should be taken into account in this preliminary opinion. Furthermore, a time limit should be set in order to give the applicant the possibility to comment on the Examining Division’s preliminary opinion. At the same time, the applicant can be informed that he may request an interlocutory decision on the refund which will allow separate appeal under Art. 106(2). lf these requirements are fulfilled, the applicant’s right to be heard under Art. 113(1) is respected. The same procedure applies to the refund of search fees paid under Rule 164(1) and Rule 164(2).
Rule 164(5) provides for a refund of any search fee paid under Rule 164(1) or Rule 164(2) in line with Rule 64(2) (see A-X, 10.2.2). Where the applicant pays a search fee in response to the Rule 164(2) invitation and at the same contests the basis for requiring payment of a search fee and requests its refund under Rule 164(5), the Examining Division may deal directly with this issue in the communication according to Art. 94(3) and Rule 71(1) or Rule 71(2) which accompanies the search results under Rule 164(2). Such an immediate review of the applicant’s request is not possible in Rule 64(1) and Rule 164(1) cases until such time as the Examining Division assumes responsibility for the application.
Moreover, it is essential to bear in mind that the review under Rule 64(2) or Rule 164(5) is restricted to a reconsideration of the validity of that original finding under the circumstances existing at the time the Rule 64(1), Rule 164(1) or Rule 164(2) invitation was sent, taking into account only the prior art which was available at that time. For more details on the assessment of unity of invention see F‑V.
The issue of refunds of additional international search fees paid to the EPO acting as ISA in response to an invitation under Art. 17(3)(a) PCT, however, does not arise in the European phase, because these fees were paid in the international phase, which is closed by this stage of the procedure. The applicant may contest the payment of additional international search fees to the EPO acting as ISA by paying these under protest according to Rule 40.2(c) PCT. However, this must be done in the international phase (see also the Decision of the President of the EPO dated 24 March 2010, OJ EPO 2010, 320 and the Notice from the EPO dated 24 March 2010, OJ EPO 2010, 322).