T 0551/15 - Answering G1/18 (differently)

Key points

• The patentee filed only a debit order for the appeal fee (in the EPO Form 1038 accompanying letter). The question is firstly if this is a Notice of appeal (Board: no). The second question is what the sanction is (Board: deemed to not have been filed). The third question is if the appeal fee is to be refunded (Board: yes).
• "It clearly follows from the wording of Article 108, first and second sentences, EPC that filing notice of appeal and payment of the appeal fee are two distinct requirements, each of which has to be fulfilled separately"
• "Even though the board agrees with the patent proprietor in that the two acts - filing notice of appeal and paying the appeal fee - do not necessarily have to be performed via separate documents, the mere payment of the appeal fee still cannot replace the filing of notice of appeal."
• "The declaration of the intent to file an appeal must be clear and unambiguous (see also J 19/90[]".
• "The board accepts, in line with established case law, that the request under Rule 99(1)(c) EPC can be implicit. What may be implicit in this context, however, relates only to the indication of whether the impugned decision is to be set aside in whole or only in part [...]. It does not mean that a clear and unambiguous declaration of intent that an appeal is filed, constituting notice of appeal within the meaning of Article 108 EPC, is not required. "
• "In particular, the [EPO Form 1038] letter does not represent a clear and unambiguous declaration of intent that an appeal is being filed at the moment of its submission. Considered objectively from the point of view of the adverse party, the EPO and the public, the sending of a debit order for the payment of the appeal fee implies, at most, that the party envisages filing an appeal. It still leaves the party the choice of whether, or at what point in time, to file notice of appeal as the necessary second act for an appeal to come into existence."
• "When making its decision, the board was well aware of a point of law referred to the Enlarged Board of Appeal and pending as referral G 1/18. [...]" However, there was also the appeal of the opponent, so no ground for staying the proceedings. The Board also decides to refund the appeal fee, hence in favor of patentee. Therefore there is no need to stay the proceedings.
• About the refund of the appeal fee: "The board bases its conclusion, which is that the patent proprietor's appeal should be deemed not to have been filed, on Article 108, first and second sentences, EPC read together [...]. Only notice of appeal filed on time can trigger the falling due of the appeal fee pursuant to Article 4(1) RFees, payment of which in turn leads to the consequence that the notice of appeal is deemed filed."
• "Accordingly, for an appeal to come into existence, in the board's opinion the two acts - filing notice of appeal and payment of the appeal fee - must take place within the two-month time limit under Article 108 EPC. If, as in the present case, the notice of appeal is filed after expiry of the two-month time limit, it cannot be deemed to have been filed because the appeal fee, even if paid within the two-month time limit, has not in fact fallen due in the absence of notice of appeal being filed on time. Thus, the appeal fee has been paid without a legal basis."
• The Boards reasoning that only the filing of a notice of appeal "can trigger the falling due of the appeal fee pursuant to Article 4(1) RFees", such that the appeal fee is to be refunded, makes sense to me.

EPO T 0551/15 - link

Reasons for the Decision

1. The opponent's appeal complies with Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

2. Patent proprietor's appeal

No appeal was validly filed by the patent proprietor. The appeal fee was duly paid, but nothing had been received within the two-month time limit under Article 108, first sentence, EPC which could be considered a notice of appeal.

2.1 Mere payment of the appeal fee within the two-month time limit under Article 108, first sentence, EPC does not constitute the valid filing of an appeal.

According to Article 108, first sentence, EPC, notice of appeal has to be filed within two months of notification of the decision. The second sentence of this provision stipulates that notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid.

It clearly follows from the wording of Article 108, first and second sentences, EPC that filing notice of appeal and payment of the appeal fee are two distinct requirements, each of which has to be fulfilled separately (see also T 778/00, OJ EPO 2001, 554, point 2.2 of the reasons). This did not change in the course of the revision of the EPC in the year 2000 (see also T 861/12, point 4.4.1 of the reasons; Special edition No. 4, OJ EPO 2007, pages 100, 120), in contrast to, for instance, the legal remedy of further processing, which, since the entry into force of EPC 2000, can be requested by mere payment of the prescribed fee (see Article 121(1) and Rule 135(1) EPC).

Even though the board agrees with the patent proprietor in that the two acts - filing notice of appeal and paying the appeal fee - do not necessarily have to be performed via separate documents, the mere payment of the appeal fee still cannot replace the filing of notice of appeal.

2.2 The "Letter accompanying subsequently filed items" submitted on 17 March 2015 ("the letter") being the sole document received by the EPO from the patent proprietor before the expiry of the two-month time limit under Article 108 EPC, does not, however, qualify as a notice of appeal.

2.2.1 A notice of appeal is a declaration directed to the EPO of the intention to challenge a particular decision by means of an appeal. The declaration of the intent to file an appeal must be clear and unambiguous (see also J 19/90, Headnote and point 2.1.3 of the reasons; T 371/92, OJ EPO 1995, 324, point 3.5 of the reasons; J 16/94, OJ EPO 1997, 331, point 4 of the reasons; T 460/95, OJ EPO 1998, 587, 594, second paragraph; T 445/98, point 3 of the reasons; T 778/00, supra, point 2.1 of the reasons; T 377/11, point 5.1 of the reasons; T 620/13, point 5 of the reasons). This prerequisite is also reflected in Rule 99(1)(c) EPC, according to which the notice of appeal must contain a "request for defining the subject of the appeal".

The board accepts, in line with established case law, that the request under Rule 99(1)(c) EPC can be implicit. What may be implicit in this context, however, relates only to the indication of whether the impugned decision is to be set aside in whole or only in part (see also T 620/13, point 7 of the reasons with reference to T 358/08). It does not mean that a clear and unambiguous declaration of intent that an appeal is filed, constituting notice of appeal within the meaning of Article 108 EPC, is not required. Accordingly, the patent proprietor's reference to decision T 620/13 provides no support for its case.

Nor can decision T 925/91 (OJ EPO 1995, 469) be of assistance to the patent proprietor, since, in the situation underlying that decision, an explicit declaration expressing the definite intention to contest a particular decision by means of an appeal, and consequently a statement qualifying as notice of appeal, had in fact been filed ("Gegen die Entscheidung... legen wir... hiermit... Beschwerde ein"; see letter of 3 December 1991 referred to in T 925/91, point 1.1 of the reasons; translation by the board: "Against the decision ... we ... herewith file ... notice of appeal").

Furthermore, the changes introduced by the EPC 2000 revision into the provisions governing the filing of an appeal as referred to by the patent proprietor (see section XI above) did not change the concept of what constitutes notice of appeal under Article 108 EPC (see first paragraph of this point; also e.g. T 1943/09, point 4 of the reasons; T 377/11, point 5.2 of the reasons). Therefore these changes need not be further addressed.

2.2.2 The letter received on 17 March 2015 indicates the particulars necessary for the payment to be effected via debiting of the appeal fee from a deposit account in accordance with point 6.3 of the Arrangements for Deposit Accounts (in the version of 1 April 2014, Supplementary publication 4, OJ EPO 2014, 5), and provides information concerning any re-payments. In the absence of any further statement in it, the letter cannot be considered as going beyond a mere debit order.

In particular, the letter does not represent a clear and unambiguous declaration of intent that an appeal is being filed at the moment of its submission. Considered objectively from the point of view of the adverse party, the EPO and the public, the sending of a debit order for the payment of the appeal fee implies, at most, that the party envisages filing an appeal. It still leaves the party the choice of whether, or at what point in time, to file notice of appeal as the necessary second act for an appeal to come into existence.

2.2.3 It is also established case law that filing the form for the payment of fees and costs (EPO Form 1010) or filing a "Letter accompanying subsequently items" that contains nothing more than a debit order for the payment of the appeal fee does not qualify as filing notice of appeal (see in particular J 19/90, Headnote; T 371/92, supra, point 3.6 of the reasons; T 445/98, point 3 of the reasons; T 778/00, supra, points 1 and 2.4 of the reasons). Further, it has been explicitly confirmed in decisions analysing the EPC 2000-related changes that this case law continues to be relevant following the entry into force of the EPC 2000 (see T 1479/09, point 4 of the reasons; T 1943/09, point 4 of the reasons; T 377/11, point 5.2 of the reasons; T 861/12, point 4 of the reasons).

2.2.4 In contrast to the patent proprietor's opinion, it is of no relevance to the present case that the board's registrar had been able to identify the letter as associated with a potential appeal, which resulted in the issuance of EPO Form 3204 informing the parties of the commencement of proceedings before the board and the allotted appeal number. This is the sole, stated purpose of this communication. In no way does such a communication reflect on whether or not an appeal has been validly filed or is well founded (see also T 620/13, point 6 of the reasons; J 5/15, point 2 of the reasons).

2.2.5 It is true that where notice of appeal has been filed, it is only after expiry of the four-month time limit for filing the statement of grounds of appeal pursuant to Article 108, third sentence, EPC, that there can be legal certainty as to whether there might be an admissible appeal. However, it is not this kind of consideration which matters here. It is simply the application of the legal concept as established by the EPC legislator for the initiation of admissible appeal proceedings (as to the legislative history, see T 778/00, supra, point 4 of the reasons).

3. Referral G 1/18

Even though the appeal fee had been paid on time, no notice of appeal was filed by the patent proprietor within the two-month time limit under Article 108, first sentence, EPC. Thus, the patent proprietor's appeal did not come into existence and, accordingly, the patent proprietor's appeal is deemed not to have been filed.

3.1 When making its decision, the board was well aware of a point of law referred to the Enlarged Board of Appeal and pending as referral G 1/18. The referred question comprises several alternatives one of them directed to the issue of whether the filing of the notice of appeal after expiry of the two-month time limit under Article 108 EPC results in the appeal being inadmissible or deemed not filed.

The present case may be considered as falling under this alternative because the patent proprietor's statement of grounds of appeal comprises all the necessary elements of a notice of appeal pursuant to Article 108, first sentence, and Rule 99(1) EPC, and thus it can be said that notice of appeal was filed late.

Where a referral under Article 112(1) EPC is pending before the Enlarged Board of Appeal and the outcome of an appeal case entirely depends on the outcome of the referral, a board can stay its proceedings at the request of a party or ex officio. Even though there is no explicit legal provision in this regard, the board considers it as established practice amongst the boards of appeal that a stay of proceedings may, inter alia, be based on considerations relating to the binding effect of opinions or decisions of the Enlarged Board as provided for in Article 21 RPBA and a uniform application of the law.

In the present case, the board did not stay the appeal proceedings because the outcome of the case did not depend entirely on the outcome of the referral - except for the question of whether the board's order regarding the patent proprietor's appeal was correct. Whether the patent proprietor's appeal is to be considered as inadmissible or deemed not filed leads, in both situations, to the same procedural consequence, which is that the patent proprietor is limited to defending the patent in amended form as considered allowable by the opposition division.

The point in relation to which the outcome of referral G 1/18 is indeed relevant concerns the question of the refund of the appeal fee paid by the patent proprietor (see point 3.2 below). However, the board's decision is favourable for the patent proprietor, who is the sole person concerned by this question. No other person - be it the opponent or any third party - can be affected by the outcome of the board's decision on the refund of the patent proprietor's appeal fee. Furthermore, neither of the two parties to the proceedings had requested a stay of proceedings in view of referral G 1/18, nor had they any objections to the way the board intended to proceed as indicated at the oral proceedings.

3.2 The board bases its conclusion, which is that the patent proprietor's appeal should be deemed not to have been filed, on Article 108, first and second sentences, EPC read together (see also J 16/82, OJ EPO 1983, 262, point 9 of the reasons; T 778/00, supra, point 2.2 of the reasons). Only notice of appeal filed on time can trigger the falling due of the appeal fee pursuant to Article 4(1) RFees, payment of which in turn leads to the consequence that the notice of appeal is deemed filed. Accordingly, for an appeal to come into existence, in the board's opinion the two acts - filing notice of appeal and payment of the appeal fee - must take place within the two-month time limit under Article 108 EPC. If, as in the present case, the notice of appeal is filed after expiry of the two-month time limit, it cannot be deemed to have been filed because the appeal fee, even if paid within the two-month time limit, has not in fact fallen due in the absence of notice of appeal being filed on time. Thus, the appeal fee has been paid without a legal basis.

Non-compliance with any of these two requirements leads, in the board's opinion, to a finding of the appeal being deemed not filed and to a corresponding order by the board (see also T 445/98, point 5 of the reasons).

The legal consequence of the appeal being deemed not filed is defined in Article 108 EPC itself. Rule 101(1) EPC, which provides for a rejection of an appeal as being inadmissible, is construed by the board as relating to situations in which an appeal had already come into existence (i.e. decision T 489/93, point 9 of the reasons, is not followed by this board).