J 0014/85 (Repayment of examination fee) 30-07-1986

1. The appeal complies with Articles 106-108 EPC and Rule 64 EPC and is, therefore, admissible.

2. The decision under appeal correctly held that there is no express provision in the EPC, the Implementing Regulations or the Rules relating to Fees, for the refund of the examination fee which has been paid when it is due. Nevertheless, the decision acknowledged that the EPO does refund the fee in the circumstances referred to in Legal Advice No. 1/79 (OJ EPO 1979, 61), namely when the European Patent application is withdrawn during the procedure before the Receiving Section.

3. Consideration of Legal Advice No. 1/79 and of two decisions of the Legal Board of Appeal in which refund of the examination fee was ordered (Case J 06/83, OP EPO 1985, 97 and Case J 08/83, OJ EPO 1985, 102) shows that there is a principle of law common to the Legal Advice and to both cases, namely that an examination fee which has been paid is to be refunded if the EPO is precluded by law (in particular, the provisions of the EPC and, where applicable, the PCT) from commencing substantive examination at the date of actual or deemed withdrawal of the application. This is clearly so if responsibility for the application has not passed to the Examining Division in accordance with Articles 16 and 18 (1) EPC. It will also be so if, although responsibility has passed to the Examining Division, there is some other legal impediment. In Case J 06/83, it was held that examination was precluded by law at the date of withdrawal because the mandatory supplementary European search report had not been drawn up in respect of an international application. (cf. Gall, Münchner Gemein schaftskommentar, Art. 51 Gebührenordnung, Nos. 378-392).

4. In the present case, the Board considers that examination had been effectively requested and was not precluded by law at the date of withdrawal of the application in September 1984. In accordance with the provisions of Article 94(2) EPC, second sentence, the Appellant's request for examination, made on the Request for Grant form, is not deemed to have been filed until after the examination fee was paid in August 1984. Accordingly, as the European search report had already been transmitted to the Appellant in January 1984, this was not a case in which an invitation to indicate whether he desired to proceed further with the application had to be sent in accordance with Article 96(1) EPC.

5. There is no express bar to a refund of the examination fee, in the Convention, the Implementing Regulations or the Rules. Therefore, the Appellant contends that the EPO has a discretion to make a refund in the circumstances of the present case, in which the application was withdrawn so soon after the examination fee was paid that examination could not in fact have been commenced. Reliance is placed, inter alia on observations in Case J 08/83 that the opportunity to withdraw a case operates to the benefit of all parties and that the prospect of a refund is an incentive to withdraw cases which are unlikely to succeed.

6. This argument has to be rejected. The observations made in Case J 08/83 (Reasons for the Decision, para. 6) related specifically to the policy behind Article 96(1) EPC and cannot be used to support an argument for the existence of a general discretion. The refund of fees is never a matter of discretion under the EPC, the Implementing Regulations and the Rules. If there is to be a refund, it is a matter of right, either because the fee paid was never due or because the service for which it was paid cannot be provided owing to some legal impediment or because there is express provision for repayment, as in Article 77(5) EPC and Rules 31(3) and 67 EPC and Article 10(4), Rules relating to Fees. The last-mentioned Article expressly provides for the full refund of the search fee if a European patent application is withdrawn or refused or deemed to be withdrawn at a time when the EPO has not begun to draw up the European search report. The Board finds itself unable to imply a corresponding rule, by analogy, to the refund of the examination fee in circumstances such as those of the present case.

7. The Appellant's argument that at the time the examination fee was paid it was not due, as the period under Article 94(2) EPC was still running, cannot be followed. The request for examination is made dependent on the payment of a fee on the applicant's own initiative - as are other requests e.g. for re-establishment of rights and for appeal. The request becomes effective once the fee is paid and thereafter, unless there is a legal basis for repayment, repayment cannot be demanded even if it is desired to withdraw the request or the European patent application. This point was drawn to the attention of the Appellant in the Rapporteur's communication. In reply, the Appellant argued that because, in accordance with Article 94(2) EPC, second sentence, a request for examination is not deemed to have been filed until after the fee has been paid the fee is never due within the meaning of Article 4, Rules relating to Fees (which provides that a fee is due on the date of receipt of the request for the service incurring the fee). Accordingly Article 4 of those Rules had to be disregarded as inapplicable and Article 94 (2) EPC effectively set the due date for payment. This argument must also be rejected. There is no incompatibility between Article 4, Rules relating to Fees and Article 94 (2) EPC, since the actual filing of the request makes the fee due and the real effect of Article 94(2) EPC, second sentence, is that the request may not be acted upon unless and until the fee has been paid. If the fee is not paid by the end of the period prescribed in Article 94(2) EPC, first sentence, or by the end of the period of grace provided by Rule 85(b) EPC, the request may never be acted upon.

8. The Appellant has also pointed out that the Guidelines (Part A, Chapter XI, para. 10.2.7) state that the fee for printing can be repaid if the European patent application is withdrawn at a time when it is still possible to stop publication. The Guidelines also state that the fee for grant will be refunded if the application is withdrawn before communication of the decision to grant (loc. cit., para. 10.2.6). The applicability of these statements, by analogy, to the present case cannot be accepted as justified.

9. For the foregoing reasons, the appeal must be rejected and the decision under appeal affirmed. It must, however, be observed that insofar as the decision under appeal stated that a further basis for ruling out a refund of the examination fee was that the fee does not cover the cost of examination, this reasoning cannot be supported. There are many circumstances in which a fee which does not cover the costs of providing the service in question may be refunded in accordance with the EPC : Rule 67 EPC (reimbursement of the appeal fee) is a good example.

10. In the present case, the requirements of Rule 67 EPC are not fulfilled : the appeal is not allowed and there was, in any case, no procedural violation. The request for reimbursement of the appeal fee must, therefore, be refused.