We are currently developing a new site to host the Patent Manual of Practice and Procedure. The BETA version of this site is now available for you to review. The information and content displayed in the BETA site is only available for testing purposes. Do not use or reference the information in the BETA site when making any decisions or actions regarding IP rights. Payment of Additional Search Fees Under Protest

Date Published

An option available to the applicant is to pay the additional search and examination fees under protest.  The additional fee is paid and should be accompanied by a reasoned statement explaining why the applicant believes that the requirements of unity of invention are fulfilled and addressing the reasons set out in the invitation to pay additional fees. [Rule 40.2]

Where a fee is paid under protest, the case should be searched and reported on in respect of the additional inventions. When completing the ISR, the examiner should ensure that Box 3 on the first page of the Notification of Transmittal Form (PCT/ISA/220) is completed and the box "no decision has been made yet on the protest; the applicant will be notified as soon as a decision is made" is checked. After completing the report, the examiners should also include a file note on the eCasefile about how much work was involved in the additional search and provide a paragraph explaining whether or not they agreed with the protest and why.

The PCT unit will then forward an alias of the eCasefile to the Assistant General Manager (AGM) with responsibility for the section where the protest occurred. The AGM will arrange for the protest to be reviewed by an independent supervising examiner. Based on this review and the examiner’s comments, the AGM will decide whether the applicant’s protest should be upheld.

A protest may be upheld and the fees refunded (fully or in part), for several reasons including:

  • that, having regard to the facts of the case and the PCT Rules, there is no lack of unity,

  • the invitation fails to give either sufficient or substantially correct reasons for the finding of lack of unity and the lack of unity is not manifestly obvious from the claims themselves,

  • that the amount of the additional fees, in the circumstances, is excessive.

It is not currently Office practice to charge a fee for examination of the protest. Rule 40.2(e)

Back to top