J 0004/18 - Rule 6

Key points

• In this examination appeal, the applicants are a French and a Dutch natural person. They appeal against the decision to refuse the 30% refund of the appeal fee.
• According to the Examining Division, " Rule 6(7) EPC had to be read in relation to Rule 6(3) and (4) and Article 14(4) EPC. It resulted therefrom that in case of multiple applicants, all applicants must fulfil the requirements of Article 14(4) EPC in order to be entitled to a fee reduction. As one of the applicants had his residence in France, he did not fulfil those requirements." (This is already in the EPO FAQ about Rule 6 (here).
• The Board: "The question to be decided is whether paragraph 7 means that in case of multiple applicants all of them must -as in the present case- be natural persons (a) or that all must be natural persons and must additionally fulfil the requirements of Article 14(4) EPC (b)," 
• The argument of the Examining Division "is based on an erroneous interpretation of Rule 6(4)." 
• "The only thing Rule 6(4) does is to define certain categories of applicants for whom the reduction is available. It does not express any other limiting condition to the fee reduction entitlement as defined in Rule 6(3) EPC. A reference in Rule 6(7) EPC to Rule 6(4) EPC can therefore not refer to anything else then [sic!] the categories for whom the fee reduction is available. In other words, Rule 6(7) cannot by referring to Rule 6(4) EPC change the conditions for entitlement in Rule 6(3) EPC." 
• Clearly, in this case, the amount of the appeal fee is higher than the amount of the refund. The appellants had requested a refund of the appeal fee on the ground of a substantial procedural violation. However, the mistake of the Examining Division was a substantive one. "  It certainly did not fail to apply a clearly defined procedural rule under the EPC, as is required for establishing a procedural violation" 
• " the appeal fee is also not to be reimbursed on the ground that the appealed decision, as the Board has noted in its communication of 19 November 2018, does not state the names of and is not signed by the responsible employees." 
• The Board finds this a substantial procedural violation (agreeing with J16/17). "As the decision at hand was individually reasoned and was not created automatically by a computer, the exceptions under Rule 113(2) EPC do not apply. However the decision under appeal did not bear the names of the members of the examining division. At the end of the decision only the phrase "For the Examining Division" appears, followed by an anonymous EPO-stamp. The decision therefore does not bear the names of the employees that have taken the decision nor their signature and thus does not comply with the requirement of Rule 113(1) EPC. This omission must be classed as a substantial procedural violation, for the reasons cited above." 
• However, reimbursement on this ground would not be equitable, because the appeal was not caused by those formal errors.  "As a matter of fact the issue was not raised by the appellants in their appeal, but by the Board. There is no causal link between the refusal to refund part of the examination fee and the non-compliance with Rule 113(1) EPC." 
• In my view, it is a clear weakness of the EPC that in case the EPO makes a mistake about fees, the appeal fee can be higher than the possible refund. This makes that the EPO first instance practice about fee refunds is in effect outside the scope of review by the Boards. I wonder if the EPO FAQ would also have taken such a clear and applicant unfriendly position (without any clear legal basis) if the matter was not extremely unlikely to be appealed because any appeal would cost the applicant money even if the applicant was right and the EPO was wrong. I would also like to praise the representative of the applicants (Mr. Griebling) to bring the case in appeal; I guess as a matter of principle. 
• Perhaps the fact that Rule 103 EPC is not an exclusive basis for a refund of the appeal fee (see T0613/14) can be used to address this. 

EPO J 0004/18 - J4/18 -  link