審查與答辯，源自EPC ART.94(3)規定，當審查意見顯示專利申請案並未能核准專利，歐洲審查部門應要求申請人提出他的意見，並依照規定修正專利申請案。
EPC Rule 71規範實際審查的細節。
(1)歐洲審查單位應要求申請人在期限內修正任何缺陷與說明書、申請專利範圍與圖式。
(2)歐洲審查單位應提出合理的陳述，包括適當與全部的拒絕准予專利的理由。
(3)在歐洲審查單位核准專利前，應通知申請人。應要求申請人繳付核准、公告與申請專利範圍翻譯（另兩個官方語言，官方語言為英文、德文與法文）費用。
(4)如果歐洲專利申請案超過15項專利範圍，歐洲審查意見應要求申請人繳付第16項之後的請求項審查費用。
(5)當申請人繳付核准、公告與另兩個官方語言的費用，即視為同意相關內容與個人資料。
(6)若申請人請求合理的修正，歐洲審查部門同意修正後應提出新的審查意見。
(7)如果未繳付核准、公告與請求項費用，或是另兩個語言的翻譯沒有及時提交，申請案將被視為撤回。
Guidelines for Examination Part A, Chapter VI(2) 2.5
退還審查費用條件（EPC Article 11）：
(i)審查費用（examination fee）全額退費：如果歐洲專利申請案撤銷、被拒絕或是在實際審查"開始前"撤回（if the European patent application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun），可以全額退回審查費用；
(ii)審查費用退一半：如果歐洲專利申請案在實際審查已經"開始後"撤回，但在回應第一次審查意見的時間過期之前，或是在發出審查意見之前，可以退一半審查費用。
上述第(i)點適用於全部2016年7月1日當日或之後被撤回或拒絕的歐洲專利申請案。
上述第(ii)點適用在2016年11月1日當日或之後實際審查已經開始的全部歐洲專利申請案。
對於在2016年11月1日之前已經進入實際審查的歐洲申請案來說，無法退費。
p.s. 要通過詢問(EPO Form 2095)可知申請案是否已經開始實際審查。
[法條]
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(1) The European Patent Office shall, in accordance with the Implementing Regulations, examine on request whether the European patent application and the invention to which it relates meet the requirements of this Convention. The request shall not be deemed to be filed until the examination fee has been paid.
(2) If no request for examination has been made in due time, the application shall be deemed to be withdrawn.
(3) If the examination reveals that the application or the invention to which it relates does not meet the requirements of this Convention, the Examining Division shall invite the applicant, as often as necessary, to file his observations and, subject to Article 123, paragraph 1, to amend the application.
(4) If the applicant fails to reply in due time to any communication from the Examining Division, the application shall be deemed to be withdrawn.
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Rule 71 Examination procedure
(1) In any communication under Article 94, paragraph 3, the Examining Division shall, where appropriate, invite the applicant to correct any deficiencies noted and to amend the description, claims and drawings within a period to be specified.
(2) Any communication under Article 94, paragraph 3, shall contain a reasoned statement covering, where appropriate, all the grounds against the grant of the European patent.
(3) Before the Examining Division decides to grant the European patent, it shall inform the applicant of the text in which it intends to grant it and of the related bibliographic data. In this communication the Examining Division shall invite the applicant to pay the fee for grant and publishing and to file a translation of the claims in the two official languages of the European Patent Office other than the language of the proceedings within four months.
(4) If the European patent application in the text intended for grant comprises more than fifteen claims, the Examining Division shall invite the applicant to pay claims fees in respect of the sixteenth and each subsequent claim within the period under paragraph 3 unless the said fees have already been paid under Rule 45 or Rule 162.
(5) If the applicant, within the period laid down in paragraph 3, pays the fees under paragraph 3 and, where applicable, paragraph 4 and files the translations under paragraph 3, he shall be deemed to have approved the text communicated to him under paragraph 3 and verified the bibliographic data.
(6) If the applicant, within the period under paragraph 3, requests reasoned amendments or corrections to the communicated text or keeps to the latest text submitted by him, the Examining Division shall issue a new communication under paragraph 3 if it gives its consent; otherwise it shall resume the examination proceedings.
(7) If the fee for grant and publishing or the claims fees are not paid in due time, or if the translations are not filed in due time, the European patent application shall be deemed to be withdrawn.
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Guidelines for Examination Part A, Chapter VI(2)
2.5 Refund of examination fee
The examination fee is refunded:
(i) in full if the European patent application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun (Art. 11(a) RFees); or
(ii) at a rate of 50% if the European patent application is withdrawn after substantive examination has begun and
– before expiry of the time limit for replying to the first invitation under Art. 94(3) issued by the examining division proper or,
– if no such invitation has been issued, before the date of the communication under Rule 71(3) (Art. 11(b) RFees).
As concerns (i) above, this applies to all European patent applications which are withdrawn, refused or deemed to be withdrawn on or after 1 July 2016. As concerns (ii) above, this applies to all European patent applications for which substantive examination began on or after 1 November 2016 (see the Decision of the Administrative Council of 29 June 2016, OJ EPO 2016, A48). For all applications for which substantive examination began before that date, Art. 11 RFees as in force before 1 November 2016 continues to apply, which means that there will be no refund if the application is withdrawn, refused or deemed to be withdrawn at this stage of proceedings.
Communications under Art. 94(3) "issued by the examining division proper" (see also C‑III, 4) are all communications indicating that the application does not meet the requirements of the EPC and referring to deemed withdrawal under Art. 94(4) in case the deficiencies are not duly remedied. These include the following: invitations under Rule 137(4), minutes of consultations by phone or in person, accompanied by an invitation to remedy deficiencies, communications relating to the ‘completely contained' criterion pursuant to Rule 56(3), or summons to oral proceedings pursuant to Rule 115(1) to which a communication complying with the requirements of Art. 94(3) and Rule 71(1) is annexed. In contrast, communications addressing purely formal deficiencies and issued by formalities officers as part of the duties entrusted to them, even if issued on the basis of Art. 94(3), do not constitute communications under Art. 94(3) "issued by the examining division proper". Likewise, communications issued by the examining division itself on some other legal basis, such as Rule 164(2)(a), Rule 53(3) or Art. 124, have no bearing on the period for a withdrawal qualifying for the 50% refund (see the Notice from the EPO dated 30 June 2016, OJ EPO 2016, A49).
An applicant unsure whether substantive examination has begun and wanting to withdraw the application only if he will receive the 100% refund may make withdrawal contingent upon the refund ("conditional" withdrawal). The date of the start of examination (C‑IV, 7.1) is indicated by means of EPO Form 2095 in the public part of the dossier and is thus open to file inspection in the European Patent Register after publication of the patent application. If EPO Form 2095 is not on file, substantive examination is deemed to have started on the date on which the first communication from the examining division proper is issued (e.g. a communication under Art. 94(3), Rule 71(3) or any other legal basis as mentioned above). Before publication, the EPO will provide the applicant with the relevant information upon request, or this information can be accessed electronically via the My Files service. For more details see OJ EPO 2013, 153.
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EPC Article 11 Refund of examination fee
The examination fee provided for in Article 94, paragraph 1, of the Convention shall be refunded:
(a) in full if the European patent application is withdrawn, refused or deemed to be withdrawn before the substantive examination has begun;
(b) at a rate of 50% if the European patent application is withdrawn after substantive examination has begun and
- before expiry of the time limit for replying to the first invitation under Article 94, paragraph 3, of the Convention issued by the Examining Division proper or,
- if no such invitation has been issued by the Examining Division, before the date of the communication under Rule 71, paragraph 3, of the Convention.
感謝同事Jennifer提供資訊。
Ron
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