2 Jul 2018

G 1/18 - New question for Enlarged Board





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.
EPO G 0001/18 -   EPO G1/18 -  EPO G 1/18.




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


 
45. In its analysis of Article 108 EPC 15 Buhler considers "that Article 108 2nd sentence EPC means that a notice of appeal without payment the appeal fee is nothing more than a piece of paper without any legal effect ". If the appeal fee is not paid on time, the appeal It is not considered inadmissible as in other cases of irregularities, but it is reputed not to exist legally. Accordingly, an appeal fee paid after the expiry of the time limit will be refunded by the EPO, without the need for a request: the filing of the notice of appeal was not valid and therefore the fee appeal was filed without a legal reason ".


 


 


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 ".


 
99. For this reason, we are very much in favor of maintaining the system in force whereby a late appeal fee is to be refunded because the application it accompanies is regarded as not filed. Similarly, where the notice of appeal is filed after the prescribed time, the appeal fee paid within the time must also be refunded.


 


36                JO OEB 2011, 624.





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