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Notice from the European Patent Office dated 27 February 2019 concerning the fee refund procedures

This text is intended for publication in the
Official Journal (OJ) of the EPO. It is made available in advance on
the EPO website merely as a courtesy to the public. Only the text
subsequently published in the officially certified PDF file of the OJ is
authentic. It cannot be guaranteed that this advance version accurately
replicates that text.

The EPO is making an increasing number of
fee refunds. It has therefore reviewed its refund procedures with the
aim of increasing efficiency and providing a better service.

While, in the majority of cases, the EPO
will continue to make refunds to a deposit account held with it (see
section I), it will no longer make refunds by cheque and make bank
transfers instead (see section II).
[ 1 ] In addition, it will offer users more flexibility in their choice of refund recipient.

Under the revised fee refund procedures, the
filing of clear and up-to-date refund instructions will be paramount to
ensuring a smooth refund process. Detailed guidance on how and when to
file such instructions is provided below.

I. Refunds to a deposit account held with the EPO

(a) Refund recipient

In general, from 1 April 2019 the EPO will refund fees to any deposit account that the party to the proceedings[ 2 ] before it indicates in its refund instructions.[ 3 ]
Contrary to the practice before this date, parties will therefore also
be 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.

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 they are ambiguous, the EPO
may decide itself whether it can make a refund to a deposit account. In
particular, if a professional representative (or international agent)
appointed for the proceedings holds a deposit account with the EPO, they
will be deemed to be authorised to receive payments and so the refund
will be made to their account. Otherwise, the EPO will make the refund
to the party’s deposit account, if it has one.

As it does now, 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 it
based on the information on file.

(b) Filing and updating refund instructions

To enable the smooth and quick processing of
refunds, refund instructions should preferably be filed in an
electronically processable format (XML) and as early as possible in the
proceedings before the EPO.

‒ For European applications or patents, they should be filed via EPO Online Filing or new online filing (CMS), using EPO Form 1001E, 1200E or 1038E.[ 4 ]

‒ For international applications, they
should be filed via EPO Online Filing, new online filing (CMS) or ePCT,
using Form PCT/RO/101.[ 5 ] In EPO Online Filing they may also be filed using the PCT-SFD or PCT-DEMAND plug-in.

Filing refund instructions in an
electronically processable format (XML) will become obligatory in the
near future. Users are advised to prepare for this change by adapting
their workflows in good time.

For the time being, the EPO will continue to accept refund instructions filed by other means,[ 6 ] although they may delay refund processing.

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

(c) Validity of refund instructions

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.

Parties are advised to update their refund
instructions if their representative changes or 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 change of agent or a transfer
of rights may be requested 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 them either at the same time as the
request for a change of agent or a transfer of rights[ 7 ] or as soon as the IB has processed that request.[ 8 ]

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 that 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.

Following the ex officio deletion of
refund instructions, the EPO will process refunds based on the
information on file (see point (a) above) or under section II below
until the new party or representative files new refund instructions.

II. Refunds to a bank account

If the EPO cannot make a refund to a deposit
account held with it, it will invite the party to the proceedings to
claim the refund via its website.

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 online.

‒ The second will contain a refund code required to identify and claim it.[ 9 ]

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.

To claim the refund, the party will then need to go to www.epo.org/fee-payment-service/en/refund
and register with an email address and password. Since that email
address will be the party’s user name, associating multiple email
addresses with one account will not be possible.

Upon successful registration and login, the party will need to enter:

‒ the application number from the first communication;

‒ the refund code from the second communication; and

‒ the details of a bank account.

For 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.

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, after logging in they will be able to
retrieve the details by ticking the relevant checkbox. Alternatively,
they will be able to enter different bank account details. Information
on previous refunds will be available in the refund history function.

To provide greater flexibility, when
claiming a refund online, parties will also be able to indicate a
deposit account held with the EPO for the refund. However, only that
refund will be made to it.

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, preferably 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 which parties have already been invited to
claim online.

III. Entry into force

These revised fee refund procedures will
enter into force on 1 April 2019 and apply to any refunds processed on
or after this date.


 

[ 1 ] Parties are reminded that the EPO does not make refunds to credit cards (OJ EPO 2017, A73, point IV).

[ 2 ]
For example, the applicant, the opponent or the appellant or, if the
party is represented, its representative or international agent.

[ 3 ] For the time being, it will not be possible to indicate a bank account in refund instructions.

[ 4 ]
By way of exception, opponents may file refund instructions only in a
non-electronically processable format, for example in the notice of
opposition.

[ 5 ] This form has been amended to allow the filing of refund instructions.

[ 6 ] On paper, by fax or via Web-Form Filing, or in another format, for example as a PDF document attached to EPO Form 1038E.

[ 7 ] This applies if the request is filed by the applicant or agent on file.

[ 8 ]
This applies if the request is filed by the new applicant or agent,
since refund instructions may only be modified by the applicant or agent
on file.

[ 9 ] Parties who have queries about the second communication are advised to contact EPO Customer Services via www.epo.org/contact.

 
 
 
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