Results from an earlier search can give refunds

Nordic Patent Institute takes into account results from earlier search and refunds part of the search fee.

In certain cases Nordic Patent Institute as an International Search Authority (ISA) will refund part of the search fee paid by the applicant in connection with the international application.

The applicant may request, in Box No. VII in the request form PCT/RO/101, that Nordic Patent Institute take into account the results of an earlier search. The search report must be enclosed and concern the same invention. If the said search report can be used to reduce the extent of the ISA search under PCT Chapter I, then Nordic Patent Institute shall refund 25% or 50% of the search fee (Rule 16.3 and Rule 41) dependent on the type of report and under certain conditions. Normally, the applicant has claimed priority based on the earlier application.

Relevant earlier search reports are:

1. Search report issued by a national authority for an earlier application, for which priority is claimed:

  1. If the report for the earlier application is issued by the national authority of DK, NO, IS, SE, or by the EPO, the international application and the earlier application must concern the same invention and the claims of the international application and the earlier application must be essentially the same or corresponding.If the Danish Patent and Trademark Office in DK or the Norwegian Industrial Property Office in NO has performed the search for the earlier application, it is not necessary for the applicant to submit the search report to the Institute.

    If the conditions are met, the refund is 25% of the search fee.
     
  2. If the report for the earlier search is issued by a national authority other than DK, NO, IS, SE or the EPO, the international application and the earlier application must concern the same invention and the claims of the international application and the earlier application must be essentially the same or corresponding. In addition the search report must contain information regarding the field of search and an indication of relevance for the cited documents in relation to the separate claims (in the earlier application).In each individual case it is left to the examiner conducting the search of the international application to decide whether the earlier search report can be used to an extent which justifies a fee refund.

    The refund for making use of earlier search is 25% of the search fee.

2. International Search Report (ISR) or International Type Search (ITS) report issued by Nordic Patent Institute or another ISA:

    The conditions for refund are that the international application and the earlier application must concern the same invention and the claims of the international application and the earlier application must be essentially the same or corresponding.

    If the ISR or the ITS is issued by Nordic Patent Institute, it is not necessary for the applicant to submit the search report to the Institute, and it is sufficient that the applicant refers to the ISR or the ITS. If the conditions are met, the refund is 50% of the search fee.