PCT Rules 16.2 and 16.3 deal with refunds of international search fees. For the search fee amount, see Patent Regulations, Schedule 7, Part 3 item 302.

2. Rule 16.2 Refunds

Rule 16.2 sets out particular circumstances in which it is appropriate to refund the search fee in its entirety. As implemented in IP Australia, those circumstances are where:

i. the applicant withdraws the PCT application and the search examiner has not commenced any work; or

ii. the Receiving Office i.e. AU Patent Office, declares that the PCT application shall be considered withdrawn e.g. due to non-compliance with Article 14 of the Treaty and no work has commenced on the search.

Note:

No partial refunds are appropriate under the provisions of Rule 16.2.
Where the search examiner has commenced any work on the file, a refund is not appropriate.

3. Rule 16.3 Refunds

PCT Rule 16.3 relates to partial refunds pursuant to the clause in the agreement between the Australian Patent Office (in its capacity as an International Searching Authority) and WIPO which states:

“Where the Authority benefits from an earlier search, 25% or 50% of the search fee shall be refunded, depending on the extent to which the Authority benefits from that earlier search.”

If earlier search results are available, a partial refund under Rule 16.3 should be considered regardless of whether a specific reference is made in item VII - 2 in the Request to use the results of an earlier search performed by any International Searching Authority or national Office. In the case of an earlier search which is not carried out by the Australian Patent Office, the earlier search results or a reference to where the search results can be accessed must be furnished at the time of filing or indicated in the request form, respectively. Additionally, in the case of an earlier search which is not carried out by the Australian Patent Office, if considered necessary the applicant may be invited to provide:

a copy of the earlier application
a translation of the earlier application if not in English
a translation of the search results if not in English; or
a copy of any document(s) cited in the earlier search report and considered by the examiner to be likely to be particularly relevant. However, before ordering copies of citations from the applicant, the examiner should attempt to access the cited documents by the usual techniques, namely from the internet or by requesting the library to obtain the document(s), If this proves unsuccessful, then the applicant should be invited to provide the document(s) in question, except in the case when the earlier search was carried out by the USPTO and the applicant has marked the checkbox in Item VII-2 of the Request requesting the receiving Office to prepare and transmit copies of the citations to the ISA. In this case PCT unit should be requested to ask the USPTO to supply the document(s).

The invitation should be made by the examiner using PCT form PCT/ISA/238 for subsequent dispatch by the PCT Unit.

Apart from the refunds mandated by PCT Rules 16.2 and 16.3, another situation in which the Australian Patent Office may partially refund the international search fee is if it declares that the PCT application relates to subject matter excluded from the search and/or is unsearchable.

4. Guidelines for the quantum of refund under Rule 16.3, or where a PCT application is declared to relate to excluded subject matter and/or is unsearchable, or where a new search with significant effort is required

a. Rule 16.3 - Refund 50%:

Applicable in circumstances where the search report is wholly based on the results of an earlier search (where only a top up search of the intervening period may be required) and no significant categorising of citations is needed.

b. Rule 16.3 - Refund 25%:

Applicable in circumstances where:

i. the search report is substantially based on the results of an earlier search, but additional searching effort in addition to a top up search for the intervening period is required; or

ii. the relevance of the earlier search results upon which the search report is wholly based needed to be reconsidered due to significant changes in scope of the invention claimed

For the purposes of determining the quantum of refund to be granted under Rule 16.3, where the subject matter is the same as that for the earlier search, the earlier search was conducted by the Australian Patent Office and the earlier search conducted was clearly inadequate in respect of that subject matter, no account should be taken of the additional searching effort arising from the inadequacy of the earlier search. This does not apply in the case of earlier searches conducted by other offices. Reliance on these searches is discretionary.

c. Excluded or Unsearchable Subject Matter - Refund of up to 75% of the search fee:

Applicable in circumstances where all claims of the international application are directed to subject matter excluded from the search under Rule 39.1 and/or the international application fails to comply with prescribed requirements, e.g. where the description, the claims or the drawings are totally unclear, to such an extent that none of the claims can be meaningfully searched. (See 6.1.6 Subjects to be Excluded from the Search). In these circumstances no search is carried out and a declaration of non-establishment of the international search report is issued pursuant to PCT Article 17(2)(a).

d. New search with significant effort is required – No Refund:

Applicable in circumstances where, for example, an entirely new search with significant effort is required and/or negligible benefit has been obtained from the earlier search.

For information where an application includes more than one invention and at least one of the inventions is covered by an earlier search, see 6.1.4.9 Issuing the Invitation to Pay Additional Search Fees last para.

For information on completing the relevant Refund forms, see RIO for Patents Manual (Create Correspondence task)

5. Preliminary Actions

5.1	The PCT Unit will place a copy of any Art 15(5) search and, where apparent to the PCT Unit, a copy of any other earlier search conducted by the AU Patent Office, on the case file before it is sent to the relevant examination section.

6. Search Examiner Actions

6.1	The search examiner should as a precaution check the PCT request form to see if there is a notification of an earlier search. If the earlier search was carried out by another International Authority or national Office, the examiner should assess whether it is necessary to invite the applicant to provide any of the following: a copy of the earlier application a translation of the earlier application if not in English a translation of the search results if not in English copy of any documents cited in the earlier search reports When the earlier search results are available, the examiner should then find the details of the earlier search to determine how much (if any) new searching is required and, consequently, the quantum of refund due. If no specific reference is made in item VII - 2 in the Request and the examiner considers that a refund is applicable under Rule 16.3 (i.e. they have made some use of the earlier search results), examiners are encouraged to contact the attorney/applicant to check why they did not complete item VII – 2 in the Request.
6.2	The search examiner formulates the proposed search for the PCT application. In formulating the proposed search, the claims and/or search statements of both applications should be carefully compared to determine whether the proposed search is to differ from the earlier search. Where the earlier search was conducted in the correct field and covers the claims of the PCT application, the search examiner should determine whether an update of the earlier search need be conducted. If the earlier search is found to be inadequate (e.g. was carried out in the wrong area or in respect of different claims), the search examiner in conjunction with a three person team should determine whether and to what extent the search for the PCT application need be extended beyond the earlier search. In formulating the proposed search, the claims and/or search statements of both applications should be carefully compared to determine whether the proposed search is to differ from the earlier search.
6.3	On completion of the search, if specific reference is made in item VII - 2 in the Request to use the results of an earlier search performed by any International Searching Authority or national Office, the examiner should complete either form PCT/ISA/213 (to recommend a refund) or form PCT/ISA/224 (if a refund is not appropriate). If no specific reference is made in item VII - 2 in the Request and a refund is applicable under Rule 16.3, the examiner should complete form PCT/ISA/213 (to recommend a refund). If a refund is not applicable under Rule 16.3, the examiner is not required to complete form PCT/ISA/224 (if a refund is not appropriate). A brief file note (see 6.1.12.8 Refund Due) as to the extent of the search, in the light of the earlier search, and advising as to the quantum of refund to be granted may be included in the file to assist the Supervising Examiner in deciding the amount of refund, if any.
6.4	If the examiner has completed form PCT/ISA/213, the examiner should click Submit task to assign the QA task to their Supervising Examiner. The Supervising Examiner will consider whether a refund is appropriate and complete their decision in the Approval tab of the QA task to establish their decision.
6.5	If the examiner is to complete form PCT/ISA/224, it should include reasons why no portion of the search fee is to be refunded, eg: “Reference is made at item VII-2 of the Request accompanying PCT/AU199x/xxxxxx to an earlier search carried out on Australian Provisional Application No. YYYYXXXXXX. The results of the earlier search were taken into account when preparing the search report on the PCT application but an entirely new search with significant effort had to be performed. Since this Office as the International Searching Authority obtained negligible benefit from the prior search, the payment of a refund is not appropriate.” Upon completing the PCT/ISA/224 form, a QA task will be assigned to the Supervising Examiner for their approval.
6.6	Cases involving circumstances which are out of the ordinary and which the Supervising Examiner is unable to resolve should be referred to AGM ELEC.
6.7	If a refund has been approved, PCT Unit completes a Treasury claim for refund and arranges for the refund and notification (form PCT/ISA/213) to be sent with the ISR to the applicant or its agent.
6.8	If a refund has not been approved, PCT Unit arranges dispatch of form PCT/ISA/224 together with the ISR to the applicant or its agent.

Amended Reasons

Amended Reason	Date Amended
Page updated as to amount of refund allowable for excluded or unsearchable matter	30 Sep 2024
	18 Oct 2023
Publishing for testing	06 Jun 2023