(i) in full if the European patent appli- cation is withdrawn, refused or deemed to be withdrawn before the examining divisions have assumed responsibility; or

(ii) at a rate of 75% if the European patent application is withdrawn, refused or deemed to be withdrawn after the examining divisions have assumed responsibility but before substantive examination has begun.

With the entry into force of the amended Implementing Regulations to the EPC on 1 April 2010 (see CA/D 3/09 of 25 March 2009, OJ EPO 2009, 299), the circum- stances in which the refund rate of 75% applies need clarification, especially with regard to Rules 70a and 161 EPC. The following clarifications apply to all European patent applications for which the European search report or the supplementary European search report accompanied by an opinion according to Rule 62 EPC is drawn up on or after 1 April 2010 or for which a communication under Rule 161(1) EPC is dispatched (i.e. where a written opinion of the European Patent Office (EPO) as the International Searching Authority (ISA) or an International Pre- liminary Examination Report where the EPO has also acted as the International Preliminary Examining Authority (IPEA) has been drawn up in respect of the application but no communication under Rule 161 EPC in the version applicable before 1 April 2010 has been issued).

Once the examining division has assumed responsibility (Rule 10 EPC), the following situations apply:

A Euro-direct application for which a valid request for examination has been filed:

a 75% refund of the examination fee will be made if the application is deemed to be with- drawn under Rule 70a(3) EPC because of failure to reply in due time to the nega- tive opinion accompanying the European search report; 1

a 75% refund of the examination fee is possible if the application is withdrawn by the applicant within seven months of the mention in the European Patent Bulletin of the publication of the European search report. 2

1 For applications for which the EPO has issued a positive opinion accompanying the European search report (or supplementary European search report), a reply under Rule 70a EPC is not mandatory. For appli- cations where the applicant has filed a valid request for examination before the European search report is transmitted to him and has also waived the right to be invited to confirm his intention to proceed further with the appli- cation after transmittal of the European search report (or supplementary European search report), Rule 70a EPC does not apply.

2 For applications where the applicant has filed a valid request for examination before the European search report or the European supplementary search report is transmitted to him and has also waived the right to be invited to confirm his intention to proceed further with the application after transmittal of the European search report (or supplemen- tary European search report), a 75% refund is possible only if the application is withdrawn before a communication is issued by the exam- ining division.

A Euro-PCT application for which a supplementary European search report is drawn up and for which a valid request for examination has been filed:

a 75% refund of the examination fee will be made if the application is deemed to be with- drawn under Rule 70a(3) EPC because of failure to reply in due time to the nega- tive opinion accompanying the supple- mentary European search report; 3

a 75% refund of the examination fee is possible if the application is withdrawn by the applicant within seven months of noti- fication of the communication under Rule 70(2) EPC inviting the applicant to indi- cate his intention to proceed further with the European patent application. 4

A Euro-PCT application for which the EPO has acted as ISA (and, if a demand under Article 31 PCT was filed with the EPO, also as IPEA) and for which a valid request for examination has been filed:

a 75% refund of the examination fee will be made if the application is deemed to be with- drawn under Rule 161(1), second sentence, EPC because the applicant did not respond to the negative written opinion of the ISA (or the negative Inter- national Preliminary Examination Report issued by the EPO) within the time limit laid down in Rule 161(1), first sentence, EPC; 5

a 75% refund of the examination fee is possible if the application is withdrawn by the applicant within the time limit laid down in Rule 161(1), first sentence, EPC.

3 See Footnote 1. 4 See Footnote 2. 5 For applications for which the EPO has issued a positive opinion as the ISA (or a positive International Preliminary Examination Report, where the EPO has acted also as the IPEA), a reply under Rule 161(1) EPC is not mandatory.

In all cases where the application is with- drawn by the applicant, substantive examination may already have started before notice of withdrawal is received by the EPO, in particular if notice of with- drawal is filed at the end of the applic- able period. In such circumstances a 75% refund will not be possible.

Applicants unsure whether substantive examination has already begun and wanting to withdraw the application only if they receive the 75% refund may make the withdrawal contingent upon the refund ("conditional" withdrawal).

For applications for which the European search report or the supple- mentary European search report is drawn up before 1 April 2010 or where the communication under Rule 161 EPC was dispatched before 1 April 2010, the 75% refund of the examination fee takes place if substantive exam- ination has not yet started at the time when notice of withdrawal is received by the EPO.

The start of substantive examination depends on the individual circumstances of each application. However, whenever a communication has been issued by the examining division, substantive examination has begun. "Conditional" withdrawal is also possible in these cases.

References: articl11;