It was recently brought to our notice that under Article 11 of the new European Patent Office (EPO) Rules for examination which come into force from April 1, 2010, the examination fee will be refunded:
(i) in full if the European patent application is withdrawn, refused or deemed to be withdrawn before the examining divisions have assumed responsibility; or
(ii) at a rate of 75% if the European patent application is withdrawn, refused or deemed to be withdrawn after the examining divisions have assumed responsibility but before substantive examination has begun.
This is an interesting development in light of Rule 7(4) of Indian Patent Rules, 2003 which states that “Fees once paid in respect of any proceeding shall not ordinarily be refunded irrespective of whether the proceeding has taken place or not”.
Should we too have a provision for refund of fees?
yes why not….in case you are suppose to take steps like this, fees should be refunded….this would be more applicable to independent inventors who file their applications and wish to subsequently withdraw…
A commentator send s mail informing that even the Japanese Patent Office (JPO) has provisions for refund of fees. The commentator also rightly points out that even if one ends up paying more than the stipulated amount, neither is that amount refunded nor is it set off against future payments.
Another senior IP practitioner says thus:
“Hi,
In my view that is quiet a motivating step. Alteast the domestic clients will then foresee a possibility of the patent being less expensive. Certainly, the other provisions have to be looked into since once the application is withdrawn, it may deemed to have been published and its a fact that publication has reasonable impact.
One can always choose to withdraw the application before the prescribed period for publication i.e 18 months from the date of filing.”
Bests,
Sai.
Dear Shri Sai,
Personally, I feel there should be extra benefit in calculation of Direct Tax against such fees instead of refund, this will also help to foster innovation culture and patent filing among individual innovators —- Just a thought.
Well, my query is little different, in the above said rule 7(4) the wording used is “shall not ordinarily” what this word “ordinarily” mean/signify in Patent act / rule.
This is not the only instance where patent act/rule uses this word, even section 11A (1) and rule 24 uses the same, I am reproducing these for ready reference
Section 11A (1): Save as otherwise provided, no application for patent shall ordinarily be open to the public for such period as may be prescribed.
Rule 24: Publication of application: The period for which an application for patent shall not ordinarily be open for public under sub-section (1) of section 11A shall be eighteen months from the date of filing of application or date of priority of the application, whichever is earlier.
Provided that the period within which the controller shall publish the application in the journal shall ordinarily be one month from the date of expiry of said period, or one month from the date of request for publication under rule 24A.
However there are many patents which takes much more time (even more than 3 years for example application NO 2097/DEL/2004; filing date 25/10/2004; priority date 05/11/2003; Publication date 19/02/2010)
Does this word “ordinarily” is escape rout (intentionally introduced in act) for patent office; because looking at current practice at IPO and reading of Section 11A(1) and rule 24, it appears it is not obligatory for IPO to publish patents within stipulated period as above.
Transferring the same logic to different plane i.e. Refund of fees, section 7(4) “……shall not ordinarily be refunded…..” — is not obligatory to IPO and IPO may take liberty and refund the fees?????
Sagar
In Japan any person may submit information relating to patentability of claimed inventions contained in a patent application or a granted patent to the Commissioner of the Japan Patent Office (JPO). Such information can be submitted anonymously. The content of the submitted information is open to the public inspection.
No fee is required for the submission of this information.
In Egypt an opposition is subject to the payment of a fee which will be reimbursed in case the opposition is accepted.
In Philippines following the publication of an application, any person may present observations in writing concerning the patentability of the invention.
No fee is required to submit observations.
In U.K and U.S.A. also anonymous observations can be
Submitted against the published or granted patent without paying any fee.
Under Rule 24(2) of Indian Trade Marks Act,1999 an applicant, while withdrawing his application within the period mentioned in rule 39, is eligible to have repaid to him any fee paid on the filings of the application.
K.Muthu Selvam
I.P. Attorney,
Formerly Examiner of Trade Marks