According to Article 11 b) Rfees (Rules relating to Fees) the examination fee shall be partially refunded if the patent application is withdrawn before substantive examination has begun. However, since the applicant has no insight into the activities of the Office it is not readily apparent for him whether the conditions for repayment are met.

The Legal Board of Appeal of the European Patent Office has now dealt with a case where an application for the partial reimbursement of the examination fee had been denied (Decision of 07/21/2011 – J 25/10). The applicant requested a withdrawal of the patent application and a partial reimbursement of the examination fee following some time after the application had entered into the regional phase before the European Patent Office. The formalities officer informed the applicant that no such refund was possible since substantive examination had already begun.

The applicant appealed with his request for a partial refund of the examination fee. It was argued that since the Examining Division had not specified when substantive examination had begun and how such date was determined, the Examining Division was not entitled to deny a claim of refund.

The Board of Appeal has ruled to set the decision under appeal aside. The Examining Division must provide verifiable facts indicating that substantive examination had actually begun. Otherwise, it could not be verified whether the decision was correct. This particularly applies when the European Patent Office has its own financial interests to withhold the fees. The Board of Appeal has ruled that such practice of the Examining Division constitutes a substantial procedural violation and ordered a refund of the appeal fee.