6.1.4.11 Payment of Additional Search Fees Under Protest

Also in this Chapter:

• 6.1.4.1 Unity of Invention Background
• 6.1.4.2 Determining Lack of Unity
• 6.1.4.3 Combinations of Different Categories of Claims
• 6.1.4.4 Markush Practice
• 6.1.4.5 Intermediate and Final Products in Chemical Applications
• 6.1.4.6 Biotechnological Inventions
• 6.1.4.7 Single General Inventive Concept
• 6.1.4.8 A Priori and A Posteriori Lack of Unity
• 6.1.4.9 Issuing the Invitation to Pay Additional Search Fees
• 6.1.4.10 Unsupported Unclear Long
• 6.1.4.12 Completing the Search Report
• 6.1.4.13 Time for Completing the Search Report
• 6.1.4.14 Reported Decisions -Unity
• 6.1.4.15 Other Decisions on Unity from the EPO

Key Legislation:

Regulations under the PCT:

• Rule 40.2 Additional Fees

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 examiner should also include a file note on the case file (see RIO for Patents Manual page on creating case notes) 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 examiner (or their Supervising Examiner) should send an email alerting 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.

If a refund is deemed appropriate, a Refund task will need to be created through form PCT/ISA/213 (see RIO for Patents Manual (Create Correspondence Task))

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