Provisional translation of the question into English:
If notice of appeal is filed and/or the appeal fee is paid after expiry of the two month time limit under Article 108 EPC, is the appeal inadmissible or is it deemed not to have been filed, and must the appeal fee be reimbursed?
http://www.epo.org/law-practice/case-law-appeals/communications/2018/20180625.html
Key points
- The President referred a question (point of law) to the Enlarged Board under Article 112(1)(b) EPC.
- Essentially the same question was asked in the referrals G 1/14 and G 2/14. However, both cases terminated before the Enlarged Board without a decision on the question asked.
- The present referral G 1/18 is triggered by the recent decision T 1897/17.
- The practical relevance of the question is that if the appeal is inadmissible, the appeal fee is not reimbursed. If the appeal is deemed not to have been filed, the appeal fee is reimbursed.
- The language of the proceedings will be French.
- Update 04.07: I have added a machine translation of the referral below. I've OCR'ed the PDF on the EPO website, converted to plain text, fed the plain text to Google, and reapplied formatting and removed numerous hard returns (inherited from the page formatting of the original PDF) in order to get flowing text. So there are clearly errors in formatting and translation. But the translation into English of referral G1/18.
Machine Translation of the Referral G1/18
Referral to the Enlarged Board
of Appeal
- Interpretation of Article
108 EPC -
A. Question of law submitted
Where the lodging of an appeal
and / or the payment fee take place after the expiry of the two-month period laid
down in Article 108 ESC, is the appeal inadmissible or deemed not to have been
filed, and must the appeal fee be refunded?
1. It should
be recalled in this context that the present question of law had already been
submitted to the Enlarged Board of Appeal (GCR) in 2014 in cases G 1/141 and G
2/14. The DGC did not answer the question in case G 2/14
because the patent application had been abandoned in case G 1/14 because the
referral was inadmissible.
2. The
comments of the President of the Office in those cases had strongly
argues in favor of maintaining the interpretation given by this majority
jurisprudence, as well as observations 2 (Amicus Curiae)
submitted by three thirds: FICPI, Onno Griebling and Cabinet Bardehle
Pagenberg.
B. Relevant legal provisions
3. In
accordance with Article 108, first sentence EPC, the appeal must be filed
within two months of service of the decision. The second sentence states that
the appeal shall be deemed to be effective only after payment of the appeal
fee.
4. Rule 101
(1) EPC provides inter alia that if the appeal does not comply with Articles
106-108 EPC, the Board of Appeal dismisses it as inadmissible.
Provisions
of the EPC having the same as in Article
1b EPC
5. These
are:
- Article 94
(1) 2nd sentence EPC - Request for examination,
99 (1) 2nd
sentence EPC - Opposition,
- Rule 89
(2) last sentence EPC - Intervention of the alleged infringer,
- Article
1OSbis (1), last sentence EPC - Request for limitation or revocation,
- last
sentence of Article 112a (4) EPC - Request for revision by the Enlarged Board
of Appeal.
C. Admissibility of referral
C.I Requirements under Article 112 (1) (b) ESC
6. In
accordance with Article 112 (1) (b) EPC, the President of the Office may submit
a question of law to the DGC (i) with a view to ensuring
uniform
application of the law or (ii) when two Boards of Appeal have made divergent
decisions on this issue.
7. The
President of the Office considers that the conditions of Article 112 (1) (b)
EPC are met for the reasons set out below.
C.II Analysis of Diverging Decisions of the Boards of Appeal
C.II.1 Decision T 1897/173 (Minority case law)
8. Decision
T 1897/17 made by the Chamber 3.4.01 dated 14 February 2018 considers that a
notice of appeal filed after the expiry of the two-month period is
inadmissible. It is reputed forms and thus has a legal existence; the appeal
fee can not therefore be refunded.
9. In
support of its argument in the decision under review, the Chamber
3.4.01
considers that the wording of Rule 101 (1) EPC is very clear: if an appeal does
not meet the requirements of Articles 106-108 EPC, the board rejects it as
inadmissible. In the Chamber's view, the legal fiction contained in the second
sentence of Article 108 - that the notice of appeal is only available after
payment of the appeal fee - can only be understood as setting an additional
condition (implicit)
of the admissibility of the notice of appeal, namely the payment of appeal fee.
10. The
Chamber also submits that the procedural consequences attached to this fiction
do not appear in Article 108 but are governed
exclusively by Rule 101 (1): inadmissibility of the action.
11. The
Chamber recalls the arguments developed in the two decisions 2014 referrals (T
2017/124 and T 1553/135 and the arguments
the two Chambers, in particular the fact that, in accordance with the
principles established by the Vienna Convention on the Law of Treaties, the EPC
was to be interpreted in good faith in accordance with the ordinary meaning of
the terms of the EPC in their context and light of its object and purpose. It
also recalls the preparatory work (IV / 6.514 / 61-D).
12. The
Chamber criticizes the arguments and conclusions developed in later decisions T
1325/156 and T 2406/167 (see below).
13. The
Chamber also refers to the RGD decision R 4/158 of 16 September 2016, which
concluded that an application for revision under the third sentence of Article
112a (4) EPC was deemed not to have been filed. if the corresponding fee had
been paid after the expiry of the period. The DGC had also concluded that
Articles 108 second sentence and 112bis (4), third sentence, having essentially
the same wording should be interpreted in the same way. This line of
argumentation had, moreover, been followed in decision T 2406/16.
14. The
Chamber considers that this line of argument does not give any convincing
reason to question the conclusion that a notice of appeal is deemed to have
been filed on the day of payment (belated) of the
appeal fee with the result that the appeal, which has legal existence only on
the (late) day of payment, will be rejected as inadmissible.
15. The
Board accepts that the wording of Article 108 2nd sentence is also used in
other provisions of the EPC (Article 112a (4) last sentence and 99 (1) EPC).
The fundamental difference between these three provisions and other provisions
of the EPC is that in these three provisions specific procedural rules are laid
down, namely Rules 101 (1), 77 (1) and 108 (1) EPC. These rules confirm and
complete the clear wording of Article 108 2nd sentence, Article 99 and 112a (4)
EPC, namely the inadmissibility of an appeal, opposition or request for
revision if the conditions of the admissibility, which in the EPC includes the
payment of a fee within the time limit, are not fulfilled. Rejection of a legal
remedy considered inadmissible is a requirement to ensure the security of the
law.
16. The
Chamber concludes that the assumption that the remedy is deemed not to have
been formed is without foundation. It must therefore be rejected as
inadmissible.
17. With
regard to the reimbursement or not of the appeal fee, the Chamber recalls that
a tax can only be refunded if it is provided for or if it has been paid without
a legal basis. In the present case, the fee was paid in accordance with
Articles 108 EPC and 2 (1) No. 11 RRT for the purpose of bringing an action.
Its payment is therefore based on a legal basis and can not therefore be
reimbursed.
18. The
conclusions of decision T 1897/17 have been in conflict with the dominant jurisprudence
of the Boards of Appeal for almost 40 years and with the consistent and
harmonized practice of the Office, anchored in the Directives. This majority
jurisprudence clearly considers, as do the T 1325/15, T 1946/159, T 2406/16 and
T 0198/1610 which will be detailed below, only if the lodging of an appeal and
/ or payment shall take place after the expiry of the period of two months 108 EPC, the
appeal is deemed not to be filed and the appeal fee is to be refunded.
C.II.2 Decision 1325/15 (Majority jurisprudence)
19. Decision
1325/15 issued by the Chamber 3.5.07 dated 7 June 2016 recalls the decisions
underlying the 2014 referrals and considers that the
situation in the present decision is similar.
20. The
Chamber explains that in a large number of decisions, the boards of appeal
interpreted the second sentence of Article 108 EPC to mean that an appeal was
non-existent and that the notice of appeal was deemed not to have been if he
was deposed after the expiry
of the period of two months and / or if the appeal fee was paid after that
period. It also refers to some divergent decisions where the Chambers had
considered that the appeal was validly formulated but inadmissible.
21. The
Chamber reaffirms clearly that the principles of legal certainty and uniform
application of the law requires a Board of Appeal, which has to decide a
question of law, to take into account how this question has been answered in
other cases. decisions.
22.In this
respect, the Chamber is of the view that where case law is constant and has
been considered for years as a solution Satisfactory
and predictable, there must be a compelling reason to justify and give
preference to a different interpretation.
23. However,
in the decision under review, the Chamber sees no compelling reason to deviate
from the well-established approach of considering an appeal filed out of time
as not having been filed.
24. This
approach is in line with an interpretation of the EPC in accordance with the
principles of interpretation codified by the Vienna Convention on the law of
the drafts. In accordance with these principles, the starting point of the
interpretation of a provision is its formulation.
25. The
Chamber notes in this respect that several provisions of the EPC provide that a
certain document must be filed on time OR in certain
time. As a rule, the late filing of a document is treated in the same way as if
it had not been filed.
26. Article
108, first sentence EPC, requires the notice of appeal to be filed within two
months of service of the decision. The The Chamber
therefore concludes that if the notice of appeal is not filed within that time,
it has no legal existence.
27. This
approach is further in line with the arguments contained in clearly-established
case-law of the Boards of Appeal.
28.
Accordingly, the Chamber considers that in this case the appeal is deemed not
to have been filed and the appeal fee is to be refunded.
C.II.3 Decision T 2406/16 (Majority jurisprudence)
29. In
decision T 2406/16 issued by the Appeals Chamber 3.3.05 of 21 September 2016,
the appeal fee had been paid after the expiry of the two-month period. The
Chamber followed the conclusions of the decision T 1325/15 of 7 June 2016. It
also referred to the decision R 4/15 of 16 September 2016 of the DGC which had
concluded that an application for revision under the third sentence of Article
112a (4) EPC was deemed not to have been filed if the relevant fee had been
paid after the deadline. The DGC had also concluded that the second sentence of
Article 108 and the third sentence of 112a (4) should be interpreted in the
same way.
30. Lastly,
the Chamber recalled the final decision taken in referral decision T 1553/13 1
on 23 November 2016, which precisely follows the conclusions of decision R
4/15.
31. In the light
of this case-law, the Chamber concludes in the case under review that the
appeal is deemed not to have been filed, that the appeal fee was thus paid in
an undue manner and that it should be refunded.
32. Finally,
two other decisions having adopted the same approach, T 1946/15 and T 0198/16,
should be mentioned.
33. In the
light of the foregoing, the necessary conditions for the admissibility of the
referral pursuant to Article 112 (1) (b) EPC are thus satisfied.
D. Importance of the legal question submitted to the DGC
34. The
question it is proposed to submit is important because the answer to it will
have a definite impact on the practice of the Office's first-instance
departments (e. opposition); indeed several provisions of the EPC
present a
similar Iibelle to that of Article 108 EPC and the practice
in force
provides for clear legal consequences in the event of the late filing of a
petition or the late payment of a fee accompanying the petition, which is
generally reflected in the refund of the fee, the petition being considered
unformed .
35. In the
first part (D.I), we will present a detailed analysis Article 108
EPC. In a second part (D.11), we will enumerate the provisions of the EPC whose
wording is similar to that of the article 108 EPC and some decisions of the
boards of appeal concerning
the provisions in question. In a third part (D.111), we will be interested in
the regulations in force within EUIPO on this subject is dealt with in this
document.
36. In our
conclusion (D.IV), we will examine the consequences of the DGC's response in
the event that it decides that a notice of appeal is inadmissible, whether it
is filed after the prescribed deadline or that the tax appeal has been paid
late and that in both cases, the appeal fee can not be reimbursed.
D.I Interpretation of Article 108, 1st and 2nd sentence EPC
37. To
interpret a rule of law is to determine its meaning. Different methods of
interpretation have been developed by doctrine and jurisprudence. The most
commonly used methods are the literal method, the historical method, the
systematic method and the method [fn 12]
• Their
principles are reflected in the Convention of Vienna on the Law of Treaties,
Articles 31 and 32 (hereinafter Vienna Convention). Although the European
Patent Organization is not
party to the
Vienna Convention, the principles governing the application of Articles 31 and
32 of the said Convention must be applied to interpretation of the EPC. In G
2/08 [fn 13], the Grand Chamber found that it follows from the joint reading of
Articles 31 and 32 of the Vienna Convention that the provisions of a treaty, in
this case the EPC, must first be interpreted along the the terms in their
context and in the light of the object and purpose of the treaty. The judge can
not therefore deviate from the clear provisions of the law, this principle
being linked to good faith.
[Footnotes 1-12 are simply the case
number of the cited decision, with OJ publication if applicable; and are
omitted in this translation]
12 A.
Grisel, Administrative Law Treaty, Vol. 1 p. 122-142, Editions Ides and
Calendes, Neuchatel I Switzerland, 1984.
13 G
2/08, OJ EPO 2010, 456, point 4 of the Reasons; see also G 6/83, OJ EPO 1985,
67, points 3s. motifs.
38.
Furthermore, it may be inferred from Article 32 of the Vienna Convention that
preparatory work is first of all to be taken into account in order to confirm a
meaning or to determine a meaning when the first interpretation following the
ordinary meaning would lead to an ambiguity. "ite or has a
absurd
result 14.
D.I.1 The literal interpretation
39. As the
name implies, literal interpretation is attached to the letter of the rule of law.
It thus releases from the text of this rule its meaning. The most obvious way
to understand a rule of law is to decipher and to
define the words that compose it.
40. According
to Article 108 1st and 2nd sentence EPC, the appeal must be brought,
in accordance
with the Regulations, with the EPO, within two months of service of the
decision. The appeal is deemed to be effective only after payment of the appeal
fee. Rule 99 (1) EPC enumerates the elements to be included in the notice of
appeal and Rule 101 (1) EPC explains that if the appeal is not in conformity,
in particular Article 108 EPC or Rule 99 ( 1) (b) and (c) EPC, the application
is dismissed as inadmissible on the grounds that the defects were not remedied
before the expiry of the applicable time limit under Article 108 EPC.
41. From the
literal interpretation of Article 108 EPC, it can be deduced that the notice of
appeal, which must be identifiable as such (Rule 99 EPC), must be filed within
two months after service of the decision. The legal sanction of failure to
comply with the time limit for filing the appeal is found in Rule 101 (1) EPC:
the appeal is dismissed as inadmissible. However, the condition sine qua non
for the appeal to be considered as form is the payment of the appeal fee. On
the other hand, if the appeal fee is not paid or is paid late, the appeal is
not deemed to be in form, and therefore is legally non-existent.
42. Article
108 EPC thus contains both the condition precedent to the lodging of the
appeal, which is the payment of the appeal fee and the ensuing legal
consequence if that condition is not fulfilled, namely the remedy is deemed not
form. Since the legal consequence of the non-payment of tax is already
contained in Article 108 EPC, there is no need to resort to any additional
regulation in the Implementing Regulations, in this case Rule 101 EPC.
43. That
being so, the question of the reimbursement of the appeal fee which inevitably
arises in such a case is not settled by Article 108 EPC and indeed by Rule 101
(1) EPC. However, in accordance with the general principles of law (Article 125
EPC), it is clear that where the appeal is non-existent as a result of the late
payment of the appeal fee, reimbursement of the appeal fee is necessary.
14 Case
Law of the Boards of Appeal of the EPO, 811th edition 2016, 111.H.1, pp.
800-807.
44.
Furthermore, this approach is in line with the practice of the Office with
regard to the application of legal provisions similar to Article 108 EPC (see
Part D.11 below). This is also the conclusion to which
received a
majority of the decisions of the boards of appeal, supported by the doctrine.
Doctrine
46. For
Moufang 16 the payment of the appeal fee is not a condition admissibility
of the notice of appeal, but, by virtue of the fiction contained in Article 108
2nd sentence EPC, a prerequisite for the existence of the
recourse. As
long as the appeal fee is not paid, the appeal does not exist, even if the
notice of appeal and the memorandum have been filed. Moufang adds that a refund
of the appeal fee takes place when the tax has been paid without legal basis;
for example, when the notice of appeal has not been filed or the appeal fee has
been paid after the expiry of the two-month period. In the latter case, the
remedy is considered as not having been formed; an appeal deemed not to have
been filed does not exist and is therefore not subject to the payment of a fee.
As a result, the appeal fee must be refunded.
47. Moufang
then observes that if the appeal fee is paid within two months, but the notice
of appeal is filed after that time, then the 2nd stage of Article 108 EPC is
not permissible. . The late filing of the notice of appeal is not included in
the first sentence of Article 108 EPC and the
appeal must therefore be dismissed as inadmissible in accordance with Rule 101 (1)
EPC. In this case, the appeal fee can not be refunded because an inadmissible
appeal is not tax-free.
48. Moufang
considers it unsatisfactory that a late appeal fee for a notice of appeal filed
within the time limit may be refunded even though a fee paid within the time
limit for a notice of appeal filed out of time may be refunded. is not refunded
because the appeal is then considered inadmissible. Moufang pleads for a refund
of the tax of
15 Buhler in Singer / Stauder, Europaisches PatentObereinkommen, 7. Auflage
2016, Art 108, points 26-31, p. 985- 986.
16 Moufang in Schulte,
Patentgesetz with EPO Commentary, 10. Auflage 2017, Art
108, points 12-13, p. 1418-1419.
recourse
also in this case, in the name of the principle of equal treatment of similar
procedural situations.
D.1.2 Historical interpretation
49. The
historical method is based on the genesis of the rules of law, in particular
the travaux préparatoires. It deduces their sense of the intention of the
legislator.
Preparatory work
50. Article
108 EPC was already present in the first draft of the EPC in 1961 17 •
It should be noted, however, that the provisions and initially
envisaged were different from those subsequently adopted. In particular, the
draft article explicitly defined a remedy for which the appeal fee had not been
paid on time as deemed not to have been filed. This definition does not exist
in the formulation finally adopted.
51. The
fiction that an appeal is deemed not filed in the event of late payment of the
appeal fee has been raised. For example, at the meeting of the working group in
Brussels in September 1961, the working group noted that:
"Paragraph
2 of Article 93 deals with the payment of the appeal fee which is necessary to
reduce the number of arbitrary appeals. The finding that an appeal is
considered to be for lack of payment of the appeal fee within the prescribed
period must be served on the applicant by a decision which may itself be
appealed. It does not seem necessary to state this principle in the Convention
itself. It will be necessary to decide later whether provision
for this purpose in the Regulations for the implementation of the Convention.
"
52. A little
further on, during the discussion of Rule 97 - Decision on the appeal, the
Chairman of the group explained that the first three paragraphs of this article
sets out the five possible ways for the board of appeal to rule on the appeal;
in particular, the Chamber may find that the application is inadmissible as a
result of the non-payment of the appeal fee.
53. In the
Notes concerning the first preliminary draft Convention on European Patent
Law19 concerning the provisions procedural costs and thus also the appeal
procedure, ii It is
interesting to note in point 3 (b) the following remark:
"In general, it may be
held that the European Patent Office will not act before the fee prescribed for
the act or costs resulting from the act has been paid to it. "
17 K.
Haertel, First Preliminary Draft Convention on European Patent Law, Document IV
/ 5569/61-E ad Article 93, p.9. The last sentence of Article 93 (2) of the
first draft presented at the third session of the "Patents" working
group in Brussels in September 1961 provides that: "If the appeal fee is
not paid in! Edit delai ( two months), the appeal is considered as not Article
93 as adopted at the end of the said meeting
The last sentence of the provision
reads as follows: "The appeal shall be considered as a form only after
payment of the appeal fee prescribed by the Regulations relating to Fees Im-
this Convention ".
18 Document
IV / 6514/61-E, p.6-7, Results of the third session of the "Patents"
working group, Brussels, 25.09- 06/10/1961.
19 Document 1416 /
IV / 62-E, p.2-6.
54. This
means very clearly that the payment of the prescribed fee is a condition sine
qua non for the legal existence of the act which it accompanies and that
consequently the Office does not take any action until the fee is not paid.
55.
Nevertheless, there is no trace in the travaux préparatoires of a discussion of
the reimbursement of the appeal fee in the event of late payment of the appeal
fee. On the other hand, it should be noted that the legal consequenc es that
would follow if the grounds of appeal were not
submitted in due course were clearly discussed and resulted, at the Munich
Diplomatic Conference in 1973, in the following
common position: the appeal should be declared inadmissible and the appeal fee
should not be refunded20.
D.I.3 Systematic interpretation
56. Taking
its name from the word system, the systematic method considers the rules of law
in relation to one another.
57. In this
case, it is necessary to examine to this end the provisions of the EPC
governing other cases in which an application is deemed to be filed / presented
only if the accompanying fee has been paid within the prescribed period.
prescribed. These include the following provisions: Article 94 (request for
examination), Article 99 (opposition), Article 105a (application for limitation
/ revocation), Article 112a (application for revision by the Enlarged Board of
Appeal), Rule 89 (intervention of the presumed counterfeiter), rule 136
(request for restitutio).
58. As will
be discussed in more detail in Part Two (D.11), the practice of the Office,
which is generally based on the Guidelines and case law, supports the view that
the payment of a fee is a formative fee. of the act or application that it
accompanies and that it must therefore be refunded in the event of late
payment.
20 Minutes
of the Munich Diplomatic Conference, Document M / PR / I, Article 107 (108),
paragraphs 447-465, p.55-56.
D.I.4 Teleological interpretation
59.
Teleological designates what relates to a goal. It is therefore according to
the purpose of the rule of law that the teleological method determines its
meaning. The teleological method applies in particular according to the
practice, that is to say the manner in which the rule has been put into
practice, applied.
60. The
constant and majority of the case-law of the Boards of Appeal has, since 1978
and until 2018, held that an appeal fee paid after the expiry of the prescribed
period has the effect of rendering the notice of appeal non-existent since it
is not form and therefore had to be repaid. The boards of appeal have also
followed this approach in cases of late payment of the opposition fee,
restitution
or other
taxes in provisions similar to Article 108 EPC. This approach is also the
practice of the Office and is included in the Guidelines for Examination.
61.
Admittedly, another, minority, approach of the Boards of Appeal is found,
namely that a late appeal fee would render the appeal inadmissible and
therefore could not be reimbursed.
62. At the
same time, however, it can be observed that, thanks to the amendment of Rule
103 EPC, the possibility of a refund of the appeal fee in the event of
withdrawal of the appeal has been extended21 •
63. In fact,
as of 1 April 2014, Rule 103 EPC provides for the reimbursement of 50% of the
appeal fee if the appeal is withdrawn at a later stage of the proceedings. In
the statement of reasons for the proposed amendment to Rule 103 EPC22, it is
emphasized that
11 Since the
Board of Appeal has already begun to examine the appeal later withdrawn and
has, where appropriate, made a notification, the reimbursement of half of the
fee appears appropriate. It is also added that a 50% refund should be
sufficient to give the parties a strong incentive to consider whether or not
they should continue the proceedings.
64. The 50%
refund applies when the appeal is withdrawn after the filing of the appeal
notice or after the expiry of the four-month period prescribed for the lodging
of the appeal (Article 108 EPC).
65. Thus, an
applicant who fails to observe the four-month time limit prescribed by Article
108 EPC may be confronted with two legal consequences depending on
whether or not he withdraws his appeal after that time. In the first case, the
appeal fee is reimbursed at 50%, but in the
second case, it is not reimbursed because his appeal is considered inadmissible.
21 Decision
of the Administrative Council of 13 December 2013 amending Rule 103 of the
Implementing Regulations to the EPC, OJ EPO 2014, A3.
22 CA
/ 90/13 Rev. 1 f.
66. The
applicants can not be encouraged on the one hand to withdraw their appeal even
after the expiry of the four-month period, that is to say at a time when the
appeal is already considered inadmissible. reimbursing half the tax, and
secondly, excluding any refund of the tax if the applicant fails to observe the
four-month period but does not withdraw his appeal. In this respect, the Office
finds a degree of inconsistency as well as unequal treatment which will not
fail to be reinforced if a future approach in the event of late payment of the
appeal fee must involve the inadmissibility of the action and, consequently,
the lack of reimbursement of tax.
D.II Provisions of the EPC with a similar wording to Article 108 EPC
67. In this
second part, we wish to present the different provisions of the ESC and its
Regulations which are similar to Article 108 ESC, in the light, if any, of the
case law and the Guidelines. The common denominator of these provisions is that
the tax which accompanies the application constitutes the said application; in
other words, the tax makes the petition legally existing. His late acquittal
results in the petition being deemed not to have been presented or filed. As a
rule, the tax is refunded.
D.II.1 Article 94 (1) 2nd sentence EPC - Reguete in examination
68. In
accordance with the 29th sentence of Article 94 (1) ESC, the request for
examination is deemed to have been filed only after payment of the examination
fee. If the applicant fails to submit the request for examination accompanied
by the payment of the examination fee within the prescribed period, the
application shall be deemed withdrawn.
69. If it
decides, after receiving the European search report, not to continue the
procedure relating to the application and does not respond to the
invitation under Article 70 (2) ESC, the application is deemed withdrawn, in
accordance with Rule 70 (3) ESC, and the examination fee is refunded in full
(Article 11a) RRT) 23 •
70. The
Boards of Appeal also had to deal with the issue of late payment of the
examination fee; ii s'agit en regle generale de cas ou la requete en examen et
le paiement de la taxe correspondante ont ete effectues apres le delai
prescrit. Le remboursement de la taxe d'examen a ete ordonne. On peut citer a cet
egard les decisions J 04/83 et J 13/98.
23 Directives
A Vl-2.3-2.5
D.11.2 Article 99 (1) 2nd sentence EPC - Opposition
71.
According to the second sentence of Article 99 EPC, the opposition is deemed to
have been filed only after payment of the opposition fee. If the tax
opposition
has not been filed within the opposition period, the opponent is informed that,
in accordance with Article 119 EPC, the opposition is deemed not to have not
been formed and a decision may be required on the basis of Rule 112 (2) EPC. If
no such request is presented, in the case of legally
prescribed period of two months from the service of this notification,
and that no other valid opposition has been the
proceedings are terminated and the parties are informed. Opposition fees that
have been paid are refunded24 •
72. Several
decisions of the Boards of Appeal have been issued in this respect. Among them
is Decision T 161/9625. The The Chamber
concluded that the time limit for payment of the opposition fee had not been
respected, the opposition was deemed not filed and the opposition fee was to be
refunded. It is also interesting to note the reasoning followed by the board in
consideration 12 of that decision; indeed, the board clearly stated that an
opposition that was not formed did not exist. A non-existent opposition can not
therefore be inadmissible, as the Opposition Division had held. As a result,
the board annulled the decision to dismiss
opposition
for inadmissibility. In addition, it ordered the repayment of the amount paid
in respect of the opposition because this amount had been paid for a
non-existent opposition.
73. In T
152/8526 the board held that the payment of the opposition fee within the
nine-month period fixed by Article 99 (1) EPC was a condition sine qua non for
the formation of! 'opposition. Accordingly, if the opposition fee is paid after
the deadline, the
opposition is deemed unformed and the fee must therefore be refunded because it
was paid without legal basis. On the other hand, if an opposition deemed
validly filed is then dismissed for inadmissibility, the opposition fee is in
that case not refunded2.
D.II.3 Rule 89 (2) last sentence EPC - Intervention of the alleged infringer
74.
According to Rule 89 EPC, the alleged infringer can file a statement of
intervention in the opposition proceedings in a three months
from the date on which the action for infringement was instituted or the action
to which notice was brought judicially
that he is not a counterfeiter. In accordance with paragraph 2, last sentence
of that rule, the statement of intervention takes effect only after payment of
the opposition fee, the amount of which is fixed by the fees
regulations relating to the EPC28.
24 Directives
D 111-2: D IV-1.2.1; 1.4.1.
25 OJ
EPO 1999, 331.
26 OJ
EPO 1987, 191.
27 See
also Podbielski in Singer / Stauder, Europaisches PatentObereinkommen, 6. Auflage 2013, Art 99, points 32 to 37, while Bostedt, in the
following edition (7. Auflage
2016, Art 99, paragraphs 37-42), addresses the problem
of the legal question submitted in the context of this proposal for referral by
referring to G 1/14.
75. If the
opposition fee is paid late, the statement of intervention is without effect
and the opposition fee is refunded. If, however, the statement of intervention
is filed after the three-month period but the opposition fee has been paid
within the prescribed period, the intervention shall be considered
valid but nonetheless inadmissible. In this case the speaker will be invited to
provide evidence on the admissibility
of his intervention and if that evidence is not the
intervention will be rejected definitively for inadmissibility, but the
opposition fee will not be refunded29.
76. The case
law of the Boards of Appeal on the late payment of the opposition fee is also
relevant in this context of intervention
(see above, part D.11.2). In addition, decision T 188/97, by which the board,
in paragraph 18, stated that: "An intervention when admissible is to be
treated as an opposition to the payment of an opposition fee is required. In
analogy with an opposition which is declared ineligible, this fee is only to be
reimbursed if the opposition-action is deemed to have been filed. "
D.II.4 Article 105bis (1), last sentence EPC - Request for limitation or revocation
77. In
accordance with Article 105bis, last sentence, EPC, an application for
limitation or revocation of a patent shall be deemed to have been filed only
after the payment of
the limitation or revocation fee. If he is not satisfied with this
requirement, the application is deemed not to have been presented and the tax
is refunded. Otherwise, the application is considered as presented and the
procedure for limitation or revocation begins30
This
provision is therefore in keeping with the usual approach provided for in CBE, that
the validity of the limitation / revocation application is dependent on the
payment of the relevant fee31 •
D.II.5 Article 112bis (4) last sentence EPC - Regulatory review by the Enlarged Board of Appeal
78. Pursuant
to this provision, the application for revision shall be deemed to have been
filed only after payment of the prescribed fee. In this context, the decision
of the Enlarged Board of Appeal R 18/10 who had to
deal with a matter in which the application fee for revision had not been
paid within the prescribed period. The Grand Chamber reminded that pursuant to
section 7 (3) (b) RRT, a payment made during the
28 Directives
D Vll-6.
29 Vair also
Breadcrumbs ad Opposition / Intervention
30 Directives D X-2.1
31 Schafers in Benkard EPO, 2.
Auflage 2012, Art 105bis, points 41-43.
The period
during which it should have been intervened may be considered to have been
carried out if the proof is furnished that the person making the payment has
paid a surcharge of 10% of the said fee. However, in the case in point, no
surtax had been paid. The Grand Chamber therefore concluded that the
application for revision was deemed not to have been filed in accordance with
Article 112bis (4) EPC together with Article 7 (4) RRT, which provides that if
the requested surcharge is not paid in due course, the payment period is
considered not to have been respected.
79. It is
interesting to note the precision which the Grand Chamber wishes to add in its
last consideration, when it states that "the petition for review is not
inadmissible but is not worth to have been filed, the fee has to be reimbursed.
"
D.II.6 Rule 1 36 (1) last sentence EPC - Restitutio in i ntegrum
80. The
application for restitutio is deemed to have been filed only on the condition
that the prescribed fee, the amount of which is fixed by the RRT, has been
paid.
81. The
case-law of the Boards of Appeal in this area is often linked to the
restoration of the time limit for lodging an appeal, as mentioned above. In
this context, there is also sometimes divergent case law regarding the refund
of the refund tax when it has been paid late.
82. Thus, in
a large number of cases, including decisions T 46/07 and T 1486/11 quoted
previously, the board held that if the restitutio tax is paid after the expiry
of the two-month period, the application for restitutio does not exist and the
fee must be refunded even without request in this regard.
83. In decision
J 26/95, the Legal Board of Appeal stated in recital 7 that when payment of the
renewal fee is made after the expiry of the applicable time limit, it no longer
has the effect of valid request. From then on, a payment made after the expiry
of the period may be refunded.
84.
Nevertheless, in decision T 1026/06, the Board of Appeal considered that a tax
is only refundable if it has been paid without a legal reason or if there are
specific legal conditions for reimbursement. . In the opinion of the board, the
fact that the application for restitutio is deemed to have been filed only on
the condition that the restitutio tax has been paid, means that the fee must be
paid in order for the application to be valid; consequently, the restitutio tax
was paid for legal reasons and no special conditions justified repayment.
32 Directive E
Vlll-3 .1.3
D.II.7 Other provisions
85. Some
other provisions with similar wording Article 108
EPC. This is Article 135 (3) 2nd sentence EPC, under the terms of of which the
application for conversion is deemed to have been presented only after the
payment of the processing fee, of Rule 22 (2), first sentence, EPC, according
to which the request for recordal of transfers is deemed to have been filed
only after the payment of the administration fee, the
Rule 88 (3),
3rd sentence EPC, according to which the request for costs is deemed to have
been filed only after the payment of the prescribed fee and finally Rule 123
(3) EPC that the request for retention the evidence is deemed to be presented
only after payment of the prescribed fee.
86. In
addition, other provisions of the EPC contain the same legal
fiction that an act is deemed not to have been done, but this time without the
payment of a fee which gives the act in question his
existence.
87. Thus, an
application for limitation / revocation is deemed not to have been made if
opposition proceedings are pending against the patent on the date on which the
application is made (Rule 93 (1) EPC). Of even under
Article 14 (4) EPC, if a part other than the component parts of the European
patent application is not produced in the prescribed language or if the
required translation is not filed within the time limit, the piece is deemed
not to have been produced. As a result, an application for limitation /
revocation which is not filed in the language prescribed under Article 14 (4)
EPC or if the translation requirement
is not produced within the time limit under Rule 6 (2) EPC, the request for
limitation / revocation is deemed not to have been filed. In accordance with
Rule 152 (6) EPC, if the required power is not laid in due
course, the acts performed by the mandatary are deemed to be null and void.
88. In the
light of the foregoing, it must be stated that if the minority opinion were to
be followed by the Grand Chamber, this would necessarily give rise to
considerable imbalance and inconsistency in the terminology used in the EPC.
D.III Regulations in force in the Office of the European Union for Intellectual Property CEUIPOl
89. It
seemed interesting to us to consider the regulations in force EUIPO, as
this legislation is close to the EPC for the subject dealt with in this
document, with the difference Trademark Law expressly provides for the legal
consequence of late payment of a fee.
90. Thus, an
appeal is considered as form only after the payment of the appeal fee (Article
68 (1) of the Trade Mark Regulation of the European Union European
33). If the appeal fee is paid after the expiry of the appeal period, Article
23 (3) together with Article 33 (a) of the Rules of Procedure delegate34
expressly provide that the appeal is deemed not to be filed and the appeal fee
is refunded to the applicant.
91. It is
the same for the notice of opposition. Pursuant to Article 5 (1) of the
Delegated Regulations, if the opposition fee is not paid before the expiry
of the opposition period, the notice of opposition is deemed not to have been
filed. If the opposition fee is paid after the expiry of the opposition period,
it shall be refunded to the opponent.
D.IV Conclusion
92. The
question submitted to the Grand Chamber is of fundamental importance from a
legal and practical point of view because the answer to it will have a
significant impact for the users and the practice of the first instance
departments of the Court. EPO. For this reason, it is desirable that the Grand
Chamber give clear guidance to all interested parties regarding the
interpretation of Article 108 EPC.
93. The
current system has for many years been based on the predominantly consistent
jurisprudence of the Boards of Appeal and on a consistent and harmonized
practice of the Office, anchored in the Directives.
94. However,
this system is regularly challenged by a minority case law whose impact affects
not only the legal security but also the clarity of the Office's communication
to users. This is evidenced, for example, by the inconsistency contained in
point 11 of the Office Communiqué of 18 December 2017 on the
Reduction of
the appeal fee for an appeal brought by a natural person or an entity referred
to in Rule 6 (4) EPC35 • Under the terms of this Communique, it is stated that
in the case of an erroneous declaration, false or missing with payment of the
fee, the notice of appeal may be deemed not to have been filed OR the appeal
may be considered inadmissible. Such an assertion is clearly likely to cause
the greatest confusion to users.
95. In the
event that the Grand Chamber were to follow the minority opinion of the Boards
of Appeal, that is to say, to decide that a notice of appeal is inadmissible,
that it be filed after the prescribed time or that the The appeal fee was paid
late and, consequently, in both cases In this
case, the appeal fee can not be refunded, the entire current system will be
questioned.
33 Regulation (EU)
2017/1001 of the European Parliament and of the Council of 14 June 2017 on the
European Union mark in OJ EU, N • L 154, 16.6.2017, p.1-99.
34 Commission
Delegated Regulation (EU) 2018/625 of 5 March 2018 complementing Regulation
(EU) 2017/1001 of the European Parliament and of the Council on the EU Trade
Mark and repealing Delegated Regulation (EU) 2017 / 1430 in OJ EU No L 104,
24.4.2018, p. 1-36
35 OJ EPO 2018, AS.
96. The
consequences that will follow will have a "snowball effect": In effect,
they will have repercussions on the application of the provisions similar to
Article 108 EPC and thus on the current practice. in force
within the Office. Changes will be required in the Regulations as well as in
the Directives and adaptations of the computer systems will be necessary.
97. But it
is above all the users of the patent system who will be severely and unfairly
affected by a change in practice. They will thus be deprived of the full
reimbursement of their appeal fee, whereas if, for example, they had withdrawn
their appeal within the period allowed by the new Rule 103 EPC, half of that
fee would have been refunded (see above D. 1.4, point 63). Moreover, in the
event of late payment of a "founder" fee for the
accompanies,
users will also be denied, for example, the reimbursement
of the opposition fee, the restitutio tax and other taxes contained in the
provisions of article 108 EPC. It is also clear that such a change will have a
negative impact on the public.
98. Lastly,
questioning the existing system would also be in contradiction with certain
principles set out in the decision J 25/10 36. Admittedly, this decision does
not directly concern the subject
here, but it
is interesting to note that the Legal Board of Appeal considers at point 12 of
its reasons that "to the extent that the decision which the Office is
required to make, through the Examining Division, has consequences for its own financial
interests, it is important that the decision-making process be transparent in
order to public
confidence in the EPO ".
36 JO OEB 2011,
624.
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