News from the EPO – Board of Appeal refunds examination fee

Published on: 09 October 2012
by Dr. Christian Köster, Patent Attorney at Dennemeyer & Associates, Munich

On 18 Apr, 2012 the Legal Board of Appeal of the European Patent Office issued Decision J 9/10, a decision of type B. While decisions of type B are not published in the Official Journal of EPO, they often include relevant information that can significantly impact proceedings before the European Patent Office.

In the above-mentioned decision, the Board concluded that a form automatically generated by a computer and posted by a formalities officer without the involvement of an examiner appointed to the examining division does not constitute a legally effective act of the examining division. In support of their decision, the Board noted that neither the applicant nor the public was able to ascertain whether the communication was sent "on behalf of and representing the views of the members of the examining division" because the primary examiner's name was not found on the communication.

Therefore, at point 2.8 of the Reasons the Board concluded that despite an explicit reference to Article 94(3) EPC on the form, such a form, as issued in the decided case, could not be considered to have the legal effect of a communication pursuant to Article 94(3) EPC. According to the Board, the issued form did hence not constitute the beginning of substantive examination. Consequently, the appealing applicant, who withdrew an application after receiving the automatically generated form, was awarded a 75% refund of the examination fee.