Notice from the President of the European Patent Office dated 31 January 2008 concerning the criteria for refund of search fees by the EPO acting as International Searching Authority
1. Where the international search may be wholly or partly based on an earlier search report already prepared by the EPO, a refund of search fees is provided for in Article 5(2)(i) in conjunction with Annex C, Part II(3) of the Agreement between the EPO and the International Bureau of WIPO under the PCT1
2. The criteria determining the applicable refund rate (full or partial) are as follows:
2.1. The full refund will apply where the international search report may be based wholly on the earlier search.
This would occur, in particular, where the claims of the earlier and the later application are identical or, where the claims of the later application are limited with respect to those of the earlier application, this limitation being due to
(a) the deletion of alternative features from an independent claim or
(b) the introduction of one or more limiting features into one or more of the independent claims of the later application where the limiting feature(s) was/were all contained in a dependent claim referring back to said independent claim(s) in the earlier application.
2.2. The partial refund will apply where the international search report may be based partly on the earlier search.
This would occur, in particular, where
(a) the claims of the later application are broader than those of the earlier application, this broadening representing a further generalisation of the same invention as that searched in the earlier application, or
(b) the claims of the later application are limited with respect to those of the earlier application, due to a limiting feature not disclosed in the earlier application but relating to the same invention as that searched in the earlier application.
The cases referred to under points 2.1 and 2.2 are intended to illustrate the most common situations but are not to be considered exhaustive.
2.3. No refund will be due
(a) where the subject-matter claimed in the later application represents an invention different from that searched in the earlier application, or
(b) the legal requirements for a refund are not fulfilled, for example, where the priority of the earlier application is not claimed.
3. The rate of refund applicable will be communicated to the applicant together with the international search report and the EPO will make the corresponding refund.
4. This Notice replaces the Notice from the President dated 1 July 2005 (OJ EPO 2005, 433) in respect of the procedure before the EPO acting as International Searching Authority.