Thursday, 11 August 2011

Getting an Examination Fee Refund - Nullius in Verba*

According to Article 94(1) EPC, a request for examination has to be accompanied by an examination fee for the request to be deemed filed.  The fee, according to RFees A2.6, is currently set at 1480 Euros, or 1645 Euros for the case of an international application where no supplementary search is drawn up by the EPO.  In either case this is, to many people, a not inconsiderable amount of money.

Since examination at the EPO is considered to be separate from search (even though they are nowadays increasingly merging together), RFees Article 11 allows for the situation where a refund of the examination can be made if the application is withdrawn, refused or deemed withdrawn before examination begins.  A full refund can be made if this happens before the Examining Division (ED) assumes responsibility, while a 75% refund is made if the ED have assumed responsibility but substantive examination has not begun.

According to Rule 10(2) EPC, the ED becomes responsible from the time when a request for examination has been filed.  There are therefore not many cases where a full refund would be made, although there may be many more where a partial refund could be made, for example once a search has been done and there is clearly little chance of getting anything worthwhile granted. If the refund is more important to the applicant than the application itself (in which case there is very little point continuing anyway, but that is a different story), a letter could be sent to the EPO withdrawing the application but only on condition that a refund of the examination fee is possible.  This does, however, beg the question of whether the applicant should take the ED's word for it if they state that examination has begun but the examiner has not quite finished preparing the examination report, and therefore no refund will be made.  

For most applicants, the easiest and cheapest approach when trying to get a refund would simply to be to take what comes, as any fight is bound to be more expensive than the potential refund.  For some, however, it may be a matter of principle.  This appears to be the case for Medtronic Vascular, Inc., who found the ED's statement that examination had begun unconvincing when asking for, and being refused, a refund.  After requesting and receiving a decision on the matter, in which the refund was still refused, the ED's decision was appealed.  A decision of the legal board of appeal in case J 25/10 has now issued, in which the board comprehensively castigates the ED for not behaving properly. The decision is due to appear in the Official Journal of the EPO. 

The board noted that there was "no indication whatsoever in the file showing, by reference to objective criteria, that the Examining Division had performed a concrete act of any kind which could be regarded as a start of substantive examination in the regional phase after the request for examination had been filed" (reasons point 6).  The main points in the board's decision are in the following paragraphs: 
10. The only point on which the refusal for the partial refund was then based was "that the primary examiner confirmed that he started already with substantive examination"(point 3 of the Reasons). This is no more than an unsubstantiated assertion. Article 11(b) RFees establishes clear conditions which must be fulfilled in order for a partial refund of the examination fee to be made. Whether these conditions have been fulfilled in any particular case is a question of fact. If the request is to be refused on the basis that these conditions have not been met, the Examining Division must give reasons why the conditions are not met, having established what the facts are. It is not sufficient simply to assert that a condition of a provision is not met without reference to underlying facts which objectively demonstrate that this is so. To do so would amount to an arbitrary decision which is not verifiable and goes against all legal certainty. In G 3/08 (OJ EPO 2011, 10) the Enlarged Board of Appeal said that "the predictability and verifiability of all state action are indispensable elements of a democratic legal order", these being amongst the principles which the EPO must support (point 7.2.1 of the Reasons). The Board further said: "Another essential element of a democratic legal order is the principle that a public authority is bound by law and justice. This is supplemented by the principle of uniform application of the law. Both principles are designed to ensure predictability of jurisdiction and hence legal certainty by preventing arbitrariness" (point 7.2.3. of the Reasons). A mere assertion that a condition laid down in a legal provision is not met, without sufficient substantiation by reference to the underlying facts, violates these principles.

11. As the appellant points out, without factual information relevant to the criteria of when substantive examination began, the date of this event cannot be objectively determined. In the present case this resulted in the determination appearing to be at the discretion of the Examining Division. The appellant points out that the Examining Division had been asked for the exact date of the start of substantive examination and the criteria applied to its assessment. However, no such information was provided. Without such information, the appellant could not determine the correctness of the decision. The Board would add that without such information it also cannot determine whether the decision that substantive examination had begun was correct or not. The decision was therefore neither predictable nor verifiable, contrary to the principles set out in G 3/08 loc. cit., above.

12. It appears to the Board that the application of these principles is particularly important in the present case for two reasons. First, since the decision which the Office, via the Examination Division, is required to take involves its own financial interests, it is important for the public confidence in the Office that the decision-making process should be transparent. For the same reason it is also important that such decisions should be reviewable by the Boards of Appeal. Second, in the present case any relevant information lay solely within the knowledge of the Office. It is not a case in which, for example, a communication had been sent to the applicant, so that there were externally verifiable facts on which a decision to refund fees could be based and reviewed. This makes it important that the applicant (and the Board of Appeal) knows what the actual underlying facts are on which the decision was based.

13. In conclusion, it cannot be accepted as established in this case that substantive examination had already begun when the application was withdrawn.
As a result, the applicant had the decision to refuse the refund set aside, and had their appeal fee and 75% of their examination fee refunded.

I admire the tenacity of the applicant in this case, in what appears to be an appeal based on the principle of fair play, in that if the ED is to make any kind of decision that affects an applicant it must be reasoned and objectively supported.  This is a theme that has been playing out in other recent decisions relating to reasons for refusing applications and other requests (other examples being T 1442/09 and T 933/10), where appeal boards have also found in favour of applicants where they have found divisions of the EPO not substantiating their reasons properly. This can only be a good thing.  If applicants and their representatives are expected to follow the increasingly rigidly defined rules of the EPC, then surely the EPO divisions should themselves do the same.

*Roughly translated as "Take nobody's word for it", being the motto of the Royal Society (although they don't really follow it any more). 

1 comment:

  1. I think it would have made more sense if the Board had decided that examination has not yet begun if nothing in the public file shows otherwise (i.e. first communication has not been sent). The present decision leaves room for the examiner (or his director) to make up a date on which he allegedly opened the dossier in order for him to get his examination point.