Article 23

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 15 February 2024 concerning the further digitalisation of the fee refund procedure

1. In the Official Journal notice dated 20 August 2019 (OJ EPO 2019, A82), the EPO informed its users how to claim refunds arising during the patent grant procedure before the European Patent Office.

2. From 2 April 2024, the EPO will make available an enhanced fee refund procedure that has been further digitalised to make the process of claiming refunds online even simpler and more efficient. Under the revised procedure, users of MyEPO Portfolio will be able to claim their refunds directly in Central Fee Payment without having to receive a refund code first. In addition, users can manage their access rights to delegate the task of claiming refunds.

3. Users are still encouraged to maintain up-to-date refund instructions for each file. This facilitates the swift processing of refunds to a deposit account held with the EPO without the need for further intervention on the user side.

4. For transparency reasons, the existing fee refund procedures as detailed in the notice of 20 August 2019 are reproduced in full in the present, which thus supersedes the previous notice in OJ EPO 2019, A82. The possibility of claiming refunds directly in Central Fee Payment has also been reflected in the revised Arrangements for deposit accounts (ADA).1 A new section has been added to explain the new feature for claiming refunds in Central Fee Payment without a refund code (see section II below).

I. Refunds to a deposit account held with the EPO

(a) Refund recipient

5. The EPO refunds fees to any deposit account that the party to the proceedings before it indicates in its refund instructions.2 Parties are therefore also able to indicate a deposit account held by a third party. In the event of a discrepancy between the name of the deposit account holder and the account number indicated, the account number will prevail.

6. In general, the EPO will keep on file and continue to follow any refund instructions provided until parties update them (see point (b) below). Therefore, parties should ensure that the EPO has clear and up-to-date refund instructions at all times. If none are on file when a refund becomes due or if the instructions on file are ambiguous, the EPO will process refunds as described in section II or III below, depending on whether the refund recipient concerned is a user of MyEPO Portfolio.3

7. By way of exception, in the case of a refund of fees not payable by the applicant, proprietor or appellant (if applicant or proprietor), e.g. the opposition fee, the EPO will establish ex officio whether the refund can be credited to a deposit account of the person who made the payment or their authorised representative, if appointed. Otherwise it will process the refunds as described in section II or III below, whichever is applicable.

8. As is currently the case, when a refund is due the EPO will issue a communication ("refund advice") informing the party of the pending refund and of the deposit account to which it will make the refund based on the information on file.

(b) Filing and updating refund instructions

9. As provided for in point 15.2 ADA, refund instructions must be filed in an electronically processable format (XML) and preferably as early as possible in the proceedings before the EPO:

• for European applications or patents, they must be filed via EPO Online Filing or Online Filing 2.0, using EPO Forms 1001E, 1200E or 1038E;
• for international applications, they must be filed via EPO Online Filing or Online Filing 2.0 or ePCT, using PCT Form PCT/RO/101, PCT SFD (EPO Online Filing) or PCT/IPEA/401 (EPO Online Filing and Online Filing 2.0).

10. Refund instructions submitted via a non-accepted means of filing, in an invalid format or by a third party will not be processed.4 The EPO will inform the party concerned accordingly, as a courtesy service. Until valid instructions are filed, refunds will be processed as described in section II or III below.

11. Refund instructions can be updated at any time using EPO Form 1038E (for European patent applications and patents) or PCT-SFD (for international patent applications). It is possible to submit the relevant forms solely for this purpose.

(c) Validity of refund instructions

12. Refund instructions filed for an international application before the EPO as receiving Office or as an International Authority under the PCT will apply only to refunds due in the international phase. To receive refunds to the same deposit account in the European phase, the party to the proceedings will need to file new refund instructions, preferably using EPO Form 1200E.

13. Parties are advised to update their refund instructions if their representative changes or if rights are transferred. For European patent applications, if new refund instructions are filed together with a request for a change of representative or a transfer of rights, in general they will apply only once the EPO has processed that request (i.e. not before it has issued the communication confirming the change). For international applications, a request for a change of agent or a transfer of rights may be filed with the receiving Office or the International Bureau (IB) and is recorded by the latter. Any refund instructions reflecting the change must, however, be filed direct with the EPO as receiving Office or as an International Authority under the PCT. Parties are advised to file the instructions either at the same time as the request for a change of agent or a transfer of rights5 or as soon as the IB has processed the request.6

14. If no new refund instructions are filed with a request for a change of representative or a transfer of rights, the EPO will check the validity of the refund instructions on file once it has processed the request. For international applications before the EPO as receiving Office or as an International Authority under the PCT, it will check the validity of refund instructions on file once informed of a change of agent or a transfer of rights by the IB. For legal certainty, the EPO will delete ex officio any instructions to make refunds to a deposit account held by an applicant or representative who has withdrawn from the proceedings. It will delete ex officio too any instructions from an applicant or representative who has withdrawn from the proceedings to make refunds to a deposit account held by a third party.

15. Following the ex officio deletion of refund instructions, the EPO will process refunds as described in section II or III below until the new party or representative files new refund instructions.

II. Claiming refunds in Central Fee Payment without a refund code

16. If the EPO cannot make a refund to a deposit account and the party to the proceedings or their authorised representative is a user of MyEPO Portfolio, the refund can be claimed directly in Central Fee Payment without the need for a separate refund code. To use this option in Central Fee Payment, the service must be accessed using two-factor authentication.7 The EPO will inform the party to the proceedings, via a communication to their Mailbox in MyEPO Portfolio, that a refund is pending and can be claimed in Central Fee Payment.

17. For this purpose, a new section – Claim refund without refund code – has been added under Refunds in Central Fee Payment. In this section, users will see all pending refunds they are authorised to claim either in their capacity as party to the proceedings or as authorised representative. The individual refunds are displayed together with a voucher number, the number of the application to which the refund relates, the date the refund was issued and the total refund amount. The pending refunds can be selected and claimed either individually or all together.

18. When it comes to finally claiming the refund, the user can select whether the refund is to be made to a bank account or to a deposit account held with the EPO. For bank accounts within the Single Euro Payments Area (SEPA), the only details required will be the IBAN and the name of the account holder. For non-SEPA bank transfers, parties may need to provide more information, depending on the country to which the refund is to be transferred. The EPO will pay the transfer fees.

19. Parties will have the option of saving the bank account details they enter for the purpose of future refunds. When claiming a refund in future, they will be able to retrieve the details by selecting the relevant check box. Alternatively, they will be able to enter different bank account details. Information on previous refunds will be available under Refund history.

20. When claiming a refund to a deposit account held with the EPO, only that particular refund will be made to the deposit account indicated. If parties would like all their refunds to be made to a deposit account held with the EPO, they will have to submit separate refund instructions to that effect, using one of the methods indicated in section I, point (b), above. The EPO will follow those instructions for future refunds only, meaning that they will not apply to refunds that parties have already been invited to claim in Central Fee Payment.

21. To ensure that refunds can be claimed only by those eligible, pending refunds are visible only to users with the necessary access rights granted in the Admin area of MyEPO Portfolio. Users are eligible if they have been granted Full control access rights by the company administrator for the portfolio to which the patent application associated with the refund belongs. It is the responsibility of the company administrator to ensure that access rights are properly managed.8

III. Claiming refunds in Central Fee Payment with a refund code

22. If the EPO cannot make a refund to a deposit account and the refund recipient is not a user of MyEPO Portfolio, it will invite the party to the proceedings to claim the refund in Central Fee Payment with a refund code.

23. To do so, it will send two separate communications:

• the first, similar to the refund advice mentioned in section I, will inform the party of the pending refund and that it can be claimed in Central Fee Payment with a refund code;
• the second will contain a refund code required to identify and claim the refund.9

24. For security reasons, the second communication will neither be put in the public part of the file nor include the number of the patent application or patent concerned. Both communications will state the party's reference on file and the filing date of the application or patent, enabling them to be linked.

25. To claim the refund, the party will then need to access Central Fee Payment and enter:

• the application number from the first communication;
• the refund code from the second communication; and
• the details of a bank account or deposit account held with the EPO.

26. The procedure described under points 18 to 20 above applies mutatis mutandis when claiming refunds with a refund code.

IV. Entry into force

27. The fee refund procedures set out in the present notice will enter into force on 2 April 2024 and will apply to any refunds processed on or after that date. In addition, any refunds for which a refund code has been issued before 2 April 2024 but which have not been claimed by that date can be claimed directly in Central Fee Payment, provided that the party to the proceedings or their authorised representative is a user of MyEPO Portfolio and has been granted the necessary rights.

28. The present notice supersedes the notice from the European Patent Office dated 20 August 2019 concerning the revised fee refund procedures.