The European Patent Office extends the options to obtain a refund of the appeal fee
The European Patent Office (EPO) has introduced an amendment to Rule 103 EPC regulating the refund of the appeal fee. The new Rule has entered into force on 1 April with the increase of some official fees, such as the appeal fee.
The aim of the updates to Rule 103 EPC is to provide appellants with additional incentives to withdraw their appeals and, thus, to reduce the backlog of cases pending before the EPO’s Board of Appeal.
Below is a graphical representation of the new incentives:
Specifically, paragraph 1 of Rule 103 EPC has been maintained unamended, providing for a full refund of the appeal fee if the withdrawal occurs before the Grounds of Appeal (GoA) are filed and before the expiry of the deadline for filing the Grounds of Appeal (i.e., 4 months after notification of the contested decision).
The amendments made to paragraph 2, on the other hand, increase the options available to obtain a refund of the appeal fee during the proceedings. In particular, the possibility of obtaining a refund of 75% or 25% of the appeal fee at certain stages of the procedure is introduced and the existing criteria for obtaining a 50% refund are updated.
In particular, new Rule 103(2) EPC provides:
- a refund of 75% of the fee, if the appeal is withdrawn within 2 months of the notification by the Board of Appeal (BoA) that it intends to initiate substantive examination of the appeal;
- a refund of 50% of the fee, if the appeal is withdrawn after the filing of the GoA, provided that the withdrawal takes place:
- within 1 month of the notification of the Board of Appeal (BoA) issued in preparation for the oral proceedings, if the date of the oral proceedings has been fixed;
- if the date of the oral proceedings has not been fixed and the BoA has invited the Appellant to submit comments, before the expiry of the deadline for their submission;
- in all other cases, before the decision is issued.
New Rule 103(3)(a) EPC further requires the withdrawal to take place within one month of the notification of a “communication of the BoA in preparation of the oral proceedings” (the previous wording required the withdrawal at least 4 weeks before the date of the oral proceedings).
Finally, new Rule 103(4) EPC provides for a refund of 25% of the appeal fee in the following cases:
- if the appeal is withdrawn after the expiry of a period of one month of the notification of a communication issued by the BoA in preparation for oral proceedings, but before the decision is announced at the oral proceedings;
- if the appeal is withdrawn after the expiry of the term for filing observations in response to the BoA’s invitation, but before the decision is issued;
- if the request for oral proceedings is withdrawn within 1 month of notification of the communication issued by the BoA in preparation for the oral proceedings and, therefore, no oral proceedings take place.
With these new refund criteria, the European Patent Office intends to make some procedures flexible in order to reduce the large number of pending appeals and, specifically, avoid any confusion arising from the possibility that more than one of the refunds described above may apply to a particular scenario. In these cases, it is specified that the refund will be paid at the highest percentage.
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