G 0001/18 - Late appeal fee

Key points

• The Enlarged Board decides that in cases wherein the Notice of appeal is filed late, cases wherein the appeal fee is paid late, and cases wherein both the Notice of appeal is filed late and the appeal fee is paid late, the appeal is deemed to not have been filed (and not inadmissible). The appeal fee is to be reimbursed. If only the appeal fee is paid but no Notice of appeal is (actually) filed at all, the appeal fee is to be reimbursed.
• The established case law is hence confirmed (starting from J 2/78, J21/80, further including R4/15), the "minority opinion" case law of e.g. T 1897/17, proposing that the appeal is inadmissible, is rejected.
• The key question is the interpretation of the second sentence of Article 108: "Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid."  The Enlarged Board combines this with the first sentence of Article 108 EPC (Notice of appeal shall be filed [...] within two months of notification of the decision.) to conclude that if a Notice of appeal is filed in time but the appeal fee is paid late or not at all, the appeal is deemed to not have been filed (r. IV.1.(2)(b) - the Enlarged Board does not use consecutive paragraph numbering). The Enlarged Board acknowledges that an alternative literal interpretation of Art.108(s.2) is also possible, namely that the fiction of "deemed to not have been filed" no longer applies if the appeal fee is paid, even if the payment is after the two-month appeal period; however this interpretation is not the one adopted by the Enlarged Board.
• The Enlarged Board analyses the travaux préparatoires and concludes that the legislative intent was that in case of non-payment or late payment of the appeal fee, the procedure of Rule 112 is followed.
• The Enlarged Board explains that the reference in Rule 101(1) EPC to the appeal being inadmissible, presupposes that an appeal exists. Hence, the phrase "if the appeal does not comply with Articles 106 to 108" in Rule 101 EPC refers only to existing appeals and not to appeals which are deemed to not have been filed (r. VII)
• The Enlarged Board explains that in case the appeal fee is paid within the time limit, but the Notice of appeal is filed after the expiration of the time limit, the appeal fee was paid before it was due (i.e. payable) under Rfees 4 (since the appeal fee becomes due upon filing of the Notice of appeal). Hence, the date of payment of the appeal fee is postponed until the date of filing the Notice of appeal. Because the Notice of appeal is late and hence deemed to not have been filed, the appeal fee is reimbursed. In the same way, the Notice of appeal is deemed to not have been filed if the appeal fee is not paid by the time limit and, therefore, any late paid appeal fee was paid while it not due and is accordingly refunded. 

Headnote

1. An appeal is deemed not to have been filed in the following cases:

(a) where notice of appeal was filed within the two‑month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two‑month time limit;

(b) where notice of appeal was filed after expiry of the two‑month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two‑month time limit;

(c) where the appeal fee was paid within the two‑month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND notice of appeal was filed after expiry of that two‑month time limit.

2. In the cases referred to in answers 1(a) to (c), reimbursement of the appeal fee is to be ordered ex officio.

3. Where the appeal fee was paid within or after the two‑month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND no notice of appeal was filed at all, the appeal fee is to be reimbursed.

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

Machine Translation

Table of Contents

A SUMMARY OF THE PROCEDURE

I Referral under Article 112 (1) (b) EPC

1. T 1897/17 - 3.4.01 dated 14 February 2018 - " Minority " case law  

2. T 1325/15 - 3.5.07 dated June 7, 2016 - " majority " case law  

3. T 2406/16 - 3.3.05 dated 21 September 2017 - " majority " case law 

 4. T 1946/15 - 3.2.02 dated 19 October 2016 and T 198/16 - 3.5.04 dated 20 March 2018 - " Majority " case law   

II Third party observations

B REASONS FOR THE OPINION

I Admissibility of referral

1. Corrected reading of the question asked

2. Conditions of admissibility - Article 112 (1) (b) EPC

II Application of Article 108, first and second sentences, EPC by the Boards of Appeal and the Enlarged Board of Appeal 

1. Article 108, first and second sentences EPC - case scenario

2. Jurisprudential stream known as " majority " 

(1) Case 1 - The appeal is lodged WITHIN the two-month period required AND the appeal fee has been paid AFTER the expiry of the said two-month period

(2) Case 2 - The appeal is lodged AFTER the expiry of the two-month period AND the appeal fee is paid AFTER the expiry of the said two-month period

(3) Case 3 - The appeal fee is paid within the period of two months AND the appeal is lodged AFTER the expiry of the two-month period 3. Jurisprudential stream known as " minority " 

4. Literature / Doctrine

III Rules of interpretation of the EPC

IV Application of the rules of interpretation

1. Literal interpretation

2. Systematic interpretation

3. Teleological interpretation

V legal consequence in case of non-fulfillment of the two acts or from one of the two acts in the period of two months of Article 108 EPC   

VI Scenarios 1 and 2 - Intermediate conclusions

VII Appalled as unformed - inadmissible appeal and Rule 101 (1) EPC

VIII Reimbursement of the appeal fee

IX Scenario 3 - intermediate conclusions

X " Preparatory work " of Article 108, first and second sentences EPC 

XI Case law of the Boards of Appeal in case of non-payment of the opposition fee

C Conclusion

A SUMMARY OF THE PROCEDURE

I Referral under Article 112 (1) (b) EPC

In a referral under Article 112 (1) (b) EPC, the President of the European Patent Office (EPO), by letter dated 7 June 2018, submitted to the Grand Chamber of resort to the following question :

" When the lodging of an appeal and / or the payment fee takes place after the expiry of the two-month period provided for in Article 108 EPC, is the appeal inadmissible or deemed to be unformed, and the appeal fee should she be reimbursed ? "  

In the above-mentioned letter, the President of the EPO indicated that the conditions of Article 112 (1) (b) EPC were fulfilled, namely that divergent decisions on this issue had been issued by the Boards of Appeal and that the answer to this question was necessary " in order to ensure the uniform application of the law ". In order to justify the divergence between decisions, the referral memorandum accepts decision T 1897/17 as representing the so-called " minority " case-law which finds that the appeal is inadmissible and T 1325/15 and T 2406/16 another line of case law, known as the " majority ", which holds that the appeal is deemed to be unformed. On the other hand, the President explained that the answer " will have a definite impact on the practice of the Office's departments of first instance ", as several provisions of the EPC have similar wording.          

The divergent decisions of the Boards of Appeal that the President of the EPO analyzed in his referral brief were summarized as follows :

1. T 1897/17 - 3.4.01 dated 14 February 2018 - " Minority " case law  

In the present case, the notice of appeal had been filed and the fee paid after the expiry of the two-month period provided for in the second sentence of Article 108 EPC. The Chamber, after dismissing the applicant's request for re-establishment of the applicant for reinstatement within the two-month time limit, decided that the appeal should be dismissed as inadmissible (and not " deemed unformed ") and that there was no need to refund the appeal fee. The board considers that the wording of Rule 101 (1) EPC is very clear: if an appeal fails to meet the requirements of Articles 106-108 EPC, the board rejects it as inadmissible. The legal fiction contained in the second sentence of Article 108 - that the notice of appeal is deemed to be formed only after payment of the appeal fee - can only be understood as setting an additional (implicit) condition of admissibility of the notice of appeal, namely the payment of the appeal fee. The board also submits that the procedural consequences attached to this fiction do not appear in Article 108 EPC, but are governed exclusively by Rule 101 (1) EPC, namely the inadmissibility of the action. Recalling the arguments developed in the 2014 referral decisions, namely decisions T 2017/12 (OJ EPO 2014, A76) and T 1553/13 (OJ EPO 2014, A84), it considers that this interpretation is in line with the principles established by the Vienna Convention and the analysis of subsequent decisions in this area, namely T 1325/15 and T 2406/16 (see below) and R 4/15 of 16 September 2016 of the Enlarged Board of Appeal gives no convincing reason for calling into question the above conclusion, namely the inadmissibility of the appeal. The board notes that the wording of Article 108, second sentence, EPC is also used in other provisions of the EPC (Articles 99 (1) and 112bis (4) last sentence EPC). The fundamental difference between these three articles and other provisions of the EPC is that in these articles and provisions specific procedural rules are attached to them, namely Rules 101 (1), 77 (1) and 108 (1). EPC. These rules confirm and complement the clear wording of Article 108, second sentence, and Articles 99 and 112a (4) EPC, namely the inadmissibility of an appeal, opposition or request for review, if the conditions of admissibility, which according to the EPC includes the payment of a fee within the time limit, are not fulfilled. The rejection of the appeal as inadmissible must therefore be considered as a requirement to ensure the security of the law. The board concludes that the assumption that the appeal is deemed not to have been filed has no legal basis, and therefore must be dismissed as inadmissible.     

2. T 1325/15 - 3.5.07 dated June 7, 2016 - " majority " case law  

In T 1325/15 the appeal was lodged together with the appeal fee paid after the required two-month period. Firstly, 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, so that the notice of appeal was deemed to be not have been filed if it had been filed after the expiry of the two-month period and / or if the appeal fee was paid after that period. It reiterates that the principles of legal certainty and uniform application of law require a Board of Appeal, which has to decide a question of law, to take into account how this question has been answered in other decisions. In this regard, it is of the opinion that where case law is consistent and considered for years to be a satisfactory and foreseeable solution, there must be a compelling reason to justify and give preference to a different interpretation leading to a different solution. In the case in point, the board concluded that there was no compelling reason to depart from the well-established approach of treating a late appeal as untrained. This approach is consistent with an interpretation of the EPC in accordance with the principles of interpretation codified by the Vienna Convention on the Law of Treaties. In accordance with these principles, in order to interpret a provision it is first necessary to start from its formulation. The board also states that several provisions of the EPC provide that a certain document must be filed in time or within a certain time. As a general rule, the late filing of a document is treated in the same way as if it had not been filed. Article 108, first sentence, EPC requires the notice of appeal to be lodged within two months of service of the decision. The board concludes, in accordance with the argument developed by the clear majority of the Boards of Appeal, that if the notice of appeal is not lodged within that time, it has no legal existence and that consequently the appeal fee must be refunded.

3. T 2406/16 - 3.3.05 dated 21 September 2017 - " majority " case law  

In T 2406/16, the notice of appeal had been lodged within the required two-month period, although the appeal fee had been paid after the expiry of the two-month period. The board followed the conclusions of T 1325/15, cited above. She also referred to R 4/15, cited above, of the Enlarged Board of Appeal, which concluded that a request 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 Enlarged Board of Appeal had also clarified that Articles 108, second sentence and 112bis (4), third sentence, EPC having essentially the same wording should be interpreted in the same way. The board also noted that the final decision taken by the Board of Appeal in the aforementioned case T 1553/13 following the decision of inadmissibility of the referral to the Enlarged Board of Appeal (G 1/14, OJ EPO 2016, A95) followed precisely the conclusions of R 4/15. In the light of these decisions, the board concludes that the appeal is deemed not to have been filed, that the appeal fee was therefore unduly paid and that it should be refunded.  

4. T 1946/15 - 3.2.02 dated 19 October 2016 and T 198/16 - 3.5.04 dated 20 March 2018 - " Majority " case law   

The referral also mentions these two decisions that followed the so-called " majority " jurisprudence . 

II Third party observations

In accordance with Article 10 of its Rules of Procedure, the Enlarged Board of Appeal invited the public to submit written comments on the referral by the President (OJ EPO 2018, A71). Following this invitation, the EPO received nine written comments which can be found on its website in the section on the Enlarged Board of Appeal. Most amicus curiae have expressed themselves in favor of the solutions adopted by so-called " majority " case law , that is to say that if the notice of appeal and / or the payment of the appeal fee takes place after the deadline two months provided for in the second sentence of Article 108 EPC, the appeal shall be deemed to be unsuccessful and the fee paid shall be refunded. 

REASONS FOR THE OPINION

I Admissibility of referral

1. Corrected reading of the question asked

The wording of the question in its first part, namely "When the formation of an appeal and / or the payment ... ", and the use of the words " the payment fee " are unclear and seem wrong. As it was rightly pointed out in a letter received as third party observations, a " payment fee " (translation proposed in the amicus curiae, " Zahlungsgebühr " or " Auftragsgebühr ") is neither in the EPC and the Rules on Fees. However, the Enlarged Board of Appeal considers that this is an error that can easily be corrected by simply reading the entire text of the referral, the words " the payment fee " meaning " the payment of the appeal fee ". It is in this sense that a correction of the question was made for the publication of the question in the EPO Official Journal (OJ EPO 2018, A71), a footnote stating the read by the Enlarged Board of Appeal for purposes of the translation. Therefore, the question before the Enlarged Board of Appeal must read as follows :              

" When the lodging of an appeal and / or the payment of the appeal fee takes place after the expiry of the two-month time-limit laid down in Article 108 EPC, is the appeal inadmissible or deemed to be unformed, and appeal fee to be refunded ? "  

2. Conditions of admissibility - Article 112 (1) (b) EPC

Article 112 (1) (b) EPC provides that in order to ensure a uniform application of the law or if a question of law of fundamental importance arises, the President of the EPO may submit a question of law to the Board of Appeal when two boards of appeal rendered divergent decisions on this issue.

The Enlarged Board must therefore consider whether the question submitted is receivable under Article 112 (1) (b) EPC, namely

(i) whether an answer is necessary to ensure a uniform application of the law, or if it concerns questions of law of fundamental importance

and

(ii) if two boards of appeal have ruled against the questions submitted.

(1) As regards the first condition of admissibility to which any referral must comply, whether it was brought by a Board of Appeal under Article 112 (1) (a) EPC or by the President under Article 112 (1) (b) EPC, the referral memorandum states in paragraph 34 that the " answer ... [to the question] will have a definite impact on the practice of the Office's departments of first instance (inter alia Examining Divisions, Opposition Divisions); indeed, several provisions of the EPC have a wording similar to that of Article 108 EPC and the practice in force provides clear legal consequences in the event of the late filing of a request or the late payment of a fee accompanying the request, consequences which generally result in the reimbursement of the corresponding fee, the request being considered as unformed. ". In paragraph D.II of the memorandum, the various provisions of the EPC, the wording of which is similar to that of paragraphs 1 and 2 of Article 108 EPC, have been analyzed, as well as the practice and jurisprudence of the Boards of Appeal in this area.  

The Enlarged Board shares the opinion of the President of the Office. The answer given is " an issue of fundamental importance ", because not only will it, as the President has pointed out, (a) have an impact that goes beyond the question asked, but also (b) this question of law is likely to be relevant in a large number of similar cases. 

(a) The same wording as in the second sentence of Article 108 EPC, with the consequence that Rule 101 (1) EPC was retained by the legislator in Article 99 (1), second sentence, EPC (Act of opposition / payment of opposition fee), together with Rule 77 (1) EPC and Article 112a (4), fourth sentence EPC (application for review / payment of the application fee for revision), together with the rule 108 (1) EPC. 

Because of the similarity of the wording retained by the legislator, it goes without saying that the answer given to the question asked, including that of the refund of the tax paid, will have a direct impact on the other legal situations mentioned above.

(b) The question of the legal effect in the event of non-payment of the appeal fee within the two-month period or if the notice of appeal is filed after the said deadline, even if the appeal fee has been paid in a timely manner, that is, if the appeal is dismissed as inadmissible or if the appeal is declared deemed unformed is a question of law of fundamental importance, since it is relevant in a potentially large number of cases before the Boards of Appeal, and therefore of great interest, including but not limited to the parties to the appeal proceedings. Moreover, it is important to answer this question of law not only for the users of the European patent system, but also for all the Boards of Appeal and the EPO itself, knowing that, as also underlined by the amicus curiae, the legal fiction of the non-formation of the appeal (or of the application) or its admissibility or even its inadmissibility, with the corollary the refund or not of the tax paid, will have to be decided in many other legal situations. The interpretation of Article 108, second sentence EPC will therefore have consequences which clearly go beyond the question raised by the referral memorandum.

(2) As to the second condition of admissibility of the present referral, the requirement of uniform application of the law is also satisfied. In his memorial, the President of the Office reports divergent decisions (see above) ; it analyzes, on the one hand, decision T 1897/17 - 3.4.01 representing the minority case-law (see above) and, on the other hand, decisions T 1325 / 15- 3.5.07 and T 2406/16 - 3.3.05 (see above), the two decisions representing the majority jurisprudence. According to the jurisprudence of the Enlarged Board of Appeal, the term " conflicting decisions " in Article 112 (1) (b) EPC must be interpreted as " contradictory decisions " (see, for example, G 3/08, OJ EPO 2011.10, point 7.3.7, last paragraph of the reasons for the opinion). In the present case, the decisions at issue differ on the outcome of the appeal proceedings, one finding that the appeal is inadmissible without reimbursement of the appeal fee, the other two finding that the appeal is deemed to be untrained, with reimbursement of the appeal fee. These are two totally different and therefore " contradictory " legal issues , which have been motivated by different legal arguments, even " contradictory " ones.             

3. In view of the foregoing, the referral is receivable.

II Application of Article 108, first and second sentences, EPC by the Boards of Appeal and the Enlarged Board of Appeal 

1. Article 108, first and second sentences EPC - case scenario

Article 108, first and second sentences EPC 2000: " The appeal must be lodged, in accordance with the Regulations, with the European Patent Office within two months of service of the decision. The appeal shall be deemed to be filed only after the payment of the appeal fee. " 

Starting from the wording of Article 108, first and second sentences, and taking into account the case law of the Enlarged Board of Appeal and the Boards of Appeal on this subject, it is possible to envisage three scenarios :

- case-by-case 1 : the appeal is lodged within the period of two months AND the appeal fee has been paid AFTER the expiry of the said two-month period ; 

- case 2 : the appeal is lodged AFTER the expiry of the two-month period AND the appeal fee is paid AFTER the expiry of the said two-month period; 

- case 3 : the appeal fee is paid within the two-month period AND the appeal is lodged AFTER the expiry of the two-month period. 

The different cases can be represented in the following table :

FORMULA / TABLE / GRAPHIC

It is likely from the wording of Article 108, first and second sentences, that the President of the Office formulated his question with the use of the conjunctions " ... and / or ... ". It is also in the context of these different legal situations / cases that the question submitted to the Enlarged Board of Appeal has been analyzed and commented on in most " amicus curiae ".   

In each case, two questions must be answered :

- is the action admissible or deemed to be unformed or, in other words, what is the legal consequence produced? AND

- if applicable, must the appeal fee paid be refunded ?

2. Jurisprudential stream known as " majority " 

(1) Case 1 - The appeal is lodged WITHIN the two-month period required AND the appeal fee has been paid AFTER the expiry of the said two-month period

This is the classic case where the appellant initiated, within two months of the appeal procedure, the filing of a notice of appeal complying with the conditions laid down in the Implementing Regulation, but paid the appeal after the said delay. <RES> This case also includes the situation in which the applicant lodged an appeal within the two-month period, but failed to pay the appeal fee.

According to the " majority " case-law, in the event of non-payment of the appeal fee or if the appeal fee was to be paid after the expiry of that two-month period, the appeal is deemed not to have been validly formed and the remedy is, therefore, non-existent. 

The decisions rendered in this case by the Legal Board of Appeal and the Technical Boards of Appeal, and listed in chronological order, are as follows (the list is not exhaustive , it includes the decisions regularly analyzed in other decisions or cited by reference as well as those mentioned in reference works of European patent law) : J 2/78 dated 1 March 1979 (OJ EPO 1979, 283) ; J 21/80 dated 26 February 1981 (OJ EPO 1981, 101) ; J 16/82 dated 2 March 1983 (OJ EPO 1983, 262) ; T 105/85 - 3.3.1 dated 5 February 1987 ; J 24/87 dated 6 November 1987 ; T 742/96 -3.2.5 dated 5 September 2000; T 1486 / 11- 3.3.05 dated April 13, 2012 ; T 2274/11 - 3.5.06 dated 29 August 2012 ; J 5/15 dated June 22, 2015 ; T 181/14 - 3.5.02 dated July 13, 2017 ; T 2406/16 - 3.3.05 dated September 21, 2017.                  

(a) Decision J 2/78 constitutes the first case in case 1. Since no appeal fee has been paid, the Legal Board of Appeal concluded without any reasoning that the appeal " is considered to be 'not having been formed ' (wording corresponding to that of Article 108, second sentence in its version of the EPC 1973). Decision J 2/78 was followed by decision J 21/80. In that case, the appeal fee had been paid late. The Legal Board of Appeal stated that "Due to the non-existence of a valid appeal, the amount of the appeal fee paid late must be returned" (see point 4 of the reasons). The decision did not contain any other reason. It is stated in the operative part of the decision (language of the proceedings, French), that "the appeal against the decision of the Receiving Section of 12 May 1980 is considered as untrained." Decision J 21/80 was subsequently followed by decision J 16/82. In paragraphs 2 and 9 of the reasons, the board stated the following (language of the proceedings, German) :      

" 2. Zu den einer Voraussetzungen rechtswirksamen Beschwerde gehört, dass die innerhalb der nach Artikel Beschwerdegebühr 108 UPR vorgeschriebenen 2-Monatsfrist entrichtet wurde. Andernfalls gilt die Beschwerde nach Artikel 108 Satz 2 EPÜ nicht als eingelegt (see Entscheidung der JurBK J 21/80 vom 26. Februar 1981, ABl EPA 1981, 101).

9. Da eine Wiedereinsetzung somit nicht stattfinden kann, gilt die Beschwerde gem. Artikel 108 Satz 2 EPÜ als nicht eingelegt. Artikel 108 Satz 2 EPÜ ist entsprechend seiner Entstehungsgeschichte in Zusammenhang with Satz 1 in dem Sinne zu verstehen, dass die Beschwerde beschwerde gilt, wenn die Beschwerdegebühr nicht innerhalb der in Satz 1 genannten Beschwerdefrist entrichtet worden ist (siehe auch die bereits unter Nr. 2, Issue 21/80, 26. Februar 1981, ABL, EPA 1981, 101). "(Added fat).

By decision J 16/82, the Legal Board of Appeal summarily referred to the genesis of Article 108 EPC (" Entstehungsgeschichte "), without stating why that provision was interpreted in that way. 

(b) The Boards of Appeal in the other decisions cited above concluded that the appeal was not lodged and, consequently, that the appeal fee was refunded without explicitly stating in the reasons for their decisions why they were not these conclusions. This is also the case of the recent decision T 2406/16, analyzed in the referral memorandum, which refers to previous decisions.

(c) In Case R 4/15 of 16 September 2016, the Enlarged Board of Appeal, following the late payment of the revision fee, concluded without particular explanation that the request for review was deemed to be unformed and ordered the refund of the application fee for review (language of proceedings, English) : "From the above, the Enlarged Board concludes that the fee for petition for review was paid out of time. It is unanimously decided that the petition for review is deemed to be filed. In the absence of a petition for review, there is no legal basis for paying the fee, which must be reimbursed. (See paragraphs 10 to 12 of the reasons).

(2) Case 2 - The appeal is lodged AFTER the expiry of the two-month period AND the appeal fee is paid AFTER the expiry of the said two-month period 

The decisions rendered in this case by the technical boards of appeal, and listed in chronological order, are as follows (the list is not exhaustive , it includes decisions regularly analyzed in other decisions or cited by reference as well as those mentioned in the referral memorandum, in the " amicus curiae " and in reference works of European patent law) : T 60 / 01- 3.5.2 dated 1 October 2000 ; T 2056/08 - 3.2.04 dated 15 January 2009 ; T 585/08 - 3.5.04 dated 20 October 2009 ; T 1325/15 - 3.5.07 dated June 7, 2016 ; T 1553/13 - 3.2.06 dated 23 November 2016 ; T 1954/13 - 3.3.04 dated 27 October 2017.                

(a) The Boards of Appeal which dealt with appeals AND the payment of the appeal fee after the two-month period, and, as a general rule, with requests for re-establishment of rights, did not give the reasons why the appeal was to be considered as untrammeled, when they concluded that the requests for re-establishment of rights had been rejected ; they referred to Article 108, second sentence EPC and concluded that the appeal is deemed to be unformed or that the appeal is non-existent. See, for examples, the aforementioned decisions T 60/01 - 3.5.2, points 3 and 4 of the reasons ; T 2056/08 - 3.2.4, point 5 of the reasons ; T 585/08 - 3.5.04, points 22 and 24 of the reasons.     

(b) It was only in the abovementioned decision T 1325/15 - decision cited and analyzed in the referral memorandum - that Chamber 3.5.07, following its interim conclusion rejecting the request for re-establishment of rights, expressly gave reasons for its decision that the appeal was deemed to be unformed (see paragraphs 34 to 43 of the reasons). It first mentioned (see paragraph 38 of the reasons) that, according to the principles of treaty interpretation codified in the Vienna Convention on the Law of Treaties, the starting point for any interpretation of a provision is its wording ; the result of this interpretation must be confirmed, inter alia, by a systematic interpretation of the provision taking into account its function and position within the EPC as a whole. It then examined (see paragraph 39 of the grounds) the assumption that the late filing of the appeal is, at least to a certain extent, legally valid and should not be treated as if no appeal had been lodged. In that regard, it noted (see paragraph 40 of the grounds) that many provisions of the EPC specify that a certain document must be filed within a specified period or "in due time". In the latter case, the Detailed Regulations specify either the length of the period or allow the EPO to determine the duration of the period ("within a period of time"). In most of these cases, the EPC also specifies the legal consequence of the non-filing of the document "in due time", without, however, distinguishing between the late filing of the document and its non-filing. In some cases, the timely filing of the document is a condition sine qua non for the application of another provision and the consequence of the late filing of said document or the non-filing of said document is simply that this other provision does not apply ; this is the case, for example, if an applicant does not file the certificate provided for in Article 55 (2) EPC within four months of the filing of the European patent application (Rule 25 EPC), he may not benefit from with the exception of the exposure of Article 55 (1) EPC. According to the EPC, the general rule is that the late filing of an act is treated in the same way as its non-filing. The Board of Appeal then concluded (see paragraph 41 of the grounds) that Article 108, first sentence, EPC requires that the appeal be brought within two months of service of the decision. If no notice of appeal is filed, there is no appeal. As the EPC makes no distinction between late filing and non-filing of a document, there is no appeal if the appeal has not been filed in time.   

(c) Board of Appeal 3.3.04, in decision T 1954/13 of 27 October 2017, also explained the reasons for its decision that the appeal is deemed to be unformed. At point 42 of the reasons for its decision, it stated that it follows from the joint reading of the first two sentences of Article 108 EPC that, in order for the action to be deemed to be constituted, not only must the notice of appeal be filed but also the appeal fee must be paid within the period of two months provided for in Article 108, first sentence, EPC (see also J 16/82, cited above, reasons, paragraph 9, T 778/00, OJ EPO 2001, 554, reasons, point 2.2). This link between the two sentences is even more clearly apparent from the wording of the second sentence of Article 108 EPC 1973 in its English version (" The notice of appeal to be paid to ") (Fat added by the room). Therefore, the Board interprets Article 108, second sentence EPC as meaning that the payment of the appeal fee within the two-month period is an additional condition for filing an appeal. This is in line with the " general concept " of the EPC that a request / request is deemed to be filed (for example, requests for examination, restitutio in integrum, limitation / revocation, opposition or review ) if payment is made on time.     

(3) Case 3 - The appeal fee is paid within the period of two months AND the appeal is lodged AFTER the expiry of the two-month period

The list below contains the decisions of the Legal Board of Appeal and the Technical Boards concerning Case 3 mentioned in the referral memorandum, the amicus curiae and the specialized literature on European patent law (this list is not exhaustive) :  

J 19/90 dated 30 April 1992 ; T 371/92 - 3.3.3 dated 2 December 1993 (OJ EPO 1995, 324) ; T 696/95 - 3.2.3 dated 16 November 1995 ; T 266/97 - 3.2.03 dated 22 June 1998 ; T 445/98 - 3.2.1 dated July 10, 2000 ; T 778/00 - 3.2.4 dated 6 July 2001 (OJ EPO 2001, 554) ; T 1479/09 - 3.2.04 dated 25 November 2009 ; T 1943/09 - 3.4.03 dated May 31, 2010 ; T 377/11 - 3.3.10 dated December 14, 2011 ; T 861/12 - 3.3.01 dated March 2, 2016 ; T 181/14 - 3.5.02 dated July 13, 2017 ; T 327/17 - 3.3.09 dated 14 December 2017 , T 2520/17 - 3.3.05 dated 9 April 2018.                         

(a) In J 19/90, the Legal Board of Appeal concluded that the mere payment of an appeal fee does not constitute valid training of the appeal and therefore that the appeal was deemed to be unformed. This is true even if the purpose of the payment is indicated as a "fee for appeal" for an identified patent application and the "Fee and Fee Payment Schedule" is used (EPO Form 1010). The conclusion of this decision was followed by the following decisions : T 371/92, T 696/95, T 266/97, T 778/00, T 1479/09, T 1943/09, T 377/11, T 861 / 12, T 181/14 and T 2520/17, without explanation of the question of the legal effect, that the action is deemed to be unformed or that the appeal is non-existent, have been provided in the grounds decisions.          

(b) It was only in decisions T 445/98 and T 778/00 that the boards of appeal considered the wording of Article 108 EPC and the legal consequence in the event of the lodging of the document appeal after the two-month period, the appeal fee having been paid in due time. 

In T 445/98 (language of the case, English), the following is stated in point 5 of the grounds : ".... the Board considers that Article 108 EPC distinguishes two stages of the appeal: the first stage relates to the existence of the appeal which requires two conditions: the notice of appeal must be filed in the European Patent Office, and the fee for appeal must have been paid. Only if the appeal fulfills these two requirements of Article 108 EPC is it deemed to have been filed, ie the appeal is in existence. The second stage of appeal, which relates to the issue of admissibility, can only come into existence when an appeal is in existence. It is deemed to be filed, the issue of admissibility does not arise. " 

In T 778/00 (language of the case, German), in point 2.2 of the grounds, it was stated that " ... Einlegung der Beschwerde und Zahlung der Beschwerdegebühr in Artikel 108 Satz 1 und 2 EPÜ [sind] als zwei getrennte Erfordernisse der Beschwerde geregelt. Nach diesen Bestimmungen kann die Zahlung der Beschwerdegebühr die Einlegung der Beschwerde nicht ersetzen. Ansonsten hätte es genügt, die Zahlung der Beschwerdegebühr vorzuschreiben, Weiteren Erfordernisse der Einlegung der Beschwerde hätte es nicht bedurft. Dieser Struktur der Vorschrift entspricht auch ihr Wortlaut. Satz 2 ist mit Satz 1 durch die zeitliche Bestimmung "erst" verbunden und knüpft damit eine eingelegte Beschwerde an, die nur dann Wirksamkeit erlangen kann, wenn die in Satz 2 geregelte Bedingung, dh die Zahlung der Gebühr, eintritt. Dieser Zusammenhang wird auch aus Artikel 4 (1) GebO deutlich, nach dem mangels abweichender Regelung eine Gebühr mit dem Eingang entsprechenden Antrags füllig wird (vgl Gall, Münchner Gemeinschaftskommentar, 10. Lfg., 1986, Article 51 EPÜ, Rdn 86, 105). Dies hat aber auch zur Folge, daß die Beschwerdegebühr erst mit Einlegung der Beschwerde fällig wird. Geht keine Beschwerde ein, so is die Beschwerdegebühr ohne Rechtsgrund gezahlt und daher zurückzuzahlen (Ständige Rechtsprechung seit T 41/82, ABl EPA 1982, 256, Gründe Nr. "  

(c) In R 18/13, the Enlarged Board of Appeal dismissed the application for restitutio in integrum, and the petition and the fee for the review petition were filed after the two-month period provided for in Article 112bis (4), second sentence EPC, found (language of the proceedings, German): " Infolgedessen gilt der Antrag auf Überprüfung als nicht gestellt. Die gezahlte Überprüfungsgebühr ist ohne Rechtsgrund gezahlt worden und ist daher zurückzuzahlen. (See paragraph 26 of the reasons).

3. Jurisprudential stream known as " minority " 

According to a search carried out, only 15 decisions of the boards of appeal held that the appeal should be dismissed as inadmissible, when the notice of appeal was filed and / or the appeal fee paid after the period of two months provided for in Article 108 EPC. In a single decision, the Enlarged Board of Appeal reached the same conclusion. These are the following decisions in chronological order:

T 489/93 - 3.2.4 dated 25 February 1994 ; T 1100/97 - 3.2.5 dated 8 May 1998 ; T 79/01 - 3.3.4 dated March 25, 2003 ; T 122/02 - 3.2.4 dated 23 June 2003 ; T 260/06 - 3.4.03 dated July 18, 2006 ; T 1465/07 - 3.4.02 dated May 9, 2008 ; T 1926/09 - 3.3.05 dated 28 September 2010 ; R 2/10 dated November 3, 2010 ; T 1289/10 - 3.5.06 dated April 13, 2011; T 1535/10 - 3.2.03 dated May 13, 2011 ; T 2210/10 - 3.2.02 dated 15 September 2011 ; T 1234/11 - 3.2.03 dated December 21, 2011 ; T 742/11 - 3.4.03 dated March 29, 2012 ; T 2450/16 - 3.5.04 dated 9 October 2017 ; T 1897/17 - 3.4.01 dated 14 February 2018 ; T 1823/16 - 3.5.01 dated June 28, 2018.                            

In only three of these decisions, T 489/93 - 3.2.4, T 79/01 - 3.3.4 and T 1897/17 - 3.4.01, have the relevant Boards of Appeal addressed in the grounds for which the appeal should be dismissed as inadmissible.  

(a) In the aforementioned decision T 489/93, the appeal was lodged and the appeal fee paid after the two-month period in question. The Chamber, while ordering the reimbursement of the appeal finding that it was deemed to be untrained, decided that the appeal was inadmissible. In point 9 of the grounds of appeal, the following is stated (language of the proceedings, German) : " Die Beschwerde war daher als unzulässig zu verwerfen, Regel 65 (1) EPÜ. Der Wortlaut in Regel 65 (1) EPÜ CBE [1973] [Note : corresponds to Rule 101 (1) EPC 2000] "als unzulässig" ist in einem weiteren Sinn verwendet, dh umfaßt sowohl den Fall der existen (aber "unzulässigen" ) wie den der nicht existen Beschwerde. "   

(b) In T 79/01, the appeal was dismissed as inadmissible after only part of the appeal fee was paid. The board considered that this corresponded to a logical interpretation of Rule 65 (1) EPC 1973, and stated in point 10 of the grounds (language of the proceedings, English) :   

"As is the case for payment of the appeal fee" in case of, for example, late filed statement of grounds (inadmissibility of the appeal). Moreover the "travaux préparatoires" seem to support this interpretation. In the "Materialien zum EPÜ" (IV / 6514/61-D) is provided for, with reference to the "Entscheidungsmöglichkeiten der Beschwerdekammer", that "Die Kammer kann feststellen, dass die Beschwerde wegen Nichtentrichtung der Gebühr unzulässig ist".

(c) By decision T 1897/17 cited above, the Board of Appeal indicated the reasons why the appeal should be dismissed as inadmissible, the notice of appeal / appeal fee having been lodged / paid after the two-month period provided for in Article 108 EPC. It noted in paragraph 15, second paragraph, that (language of the proceedings, English) :  

"According to the clear wording of R. 101 (1) EPC, which is an Implementing Regulation of Art. 106 to Art. 108 EPC, if an appeal does not fulfill the legal requirements of (here) Art. 108 EPC, the board of appeal shall reject it as inadmissible. The legal fiction of Art. 108 EPC, second sentence, that the statement of appeal has not been deemed to have been paid, may, in the board be , namely the payment of the appeal fee. No procedural consequences follow from Art. 108 EPC, second award; (1) EPC, providing for the rejection of the appeal as inadmissible if the appeal does not comply with Art. 108 EPC, ie also in the case of late payment of the appeal fee (see T 79/01, quoting the preparatory work to the EPC, IV / 6514/61-D: "Die Kammer kann feststellen, dass die Beschwerde wegen Nichtentrichtung der Gebühr unzulässig ist ")." It then repeated the analysis made in referral decisions T 2017/12 (paragraphs 3.4.2 and 3.4.3) and T 1553/13 (Cases G 1/14 and G 2 / 14) concerning the " travaux préparatoires " to conclude that "... it would appear incorrect to read Article 108, second sentence, EPC in a way it is not worded [ie, that it was to be read "be noted to the current board ... ". Finally, by an analysis of the provisions in question (Article 108, together with Rule 101 (1) EPC) and similar provisions (Article 99 (1), together with Rule 77 (1), Article 112a (4), together with the rule 108 (1) EPC), the board concludes that there is no legal basis in the EPC for the appeal to be declared untrained : " It is true that the wording of Art. 108 EPC, second sen tence, '... not be deemed to-have-been filed ...', est used in other provisions of the EPC, notably Art. 112a (4) EPC, last sentence and Art. 99 (1) EPC (further examples are listed in T 2017/12). There is, however, a fundamental difference between these three provisions, and other provisions of the EPC using the same or similar wording on the other hand: 101 (1) EPC, R. 77 (1) EPC and R. 108 (1) EPC. They confirm and complement the (clear) wording of Art. 108 EPC, second award, Art. 99 (1) EPC, second award, and Art. 112a (4) EPC, last sentence respectivement: to reject as inadmissible a legal remedy (appeal, or opposition petition for review) attacking an EPO decision, if it does not Fulfill the require ments for Admissibility, qui, in the system of the EPC , include the timely payment of the respective fee. In all three cases, EPO decisions Would Become finally bin ding on the parts, if not attacked This by means clustering of the respective legal remedy. The rejection of a legal remedy found inadmissible is a requirement to ensure legal certainty, a principle recognized in the EPO's Contracting States.         

Consequently, R. 101 (1) EPC and R. 77 (1) EPC can be seen as the Implementing provisions envisaged by the preparatory work (as Cited in T 2017/12 "Ob in der zu diesem Ausführungsordnung Abkommen eine entspre Chende Bestimmung aufgenommen werden soll, wird später zu entscheiden sein. "), confirming and supplementing the (ordinary) meaning of Art. 108 EPC, second award and Art. 99 (1) EPC, second sentence respectively, by explicitly stating the procedural consequence arising from the late filing of the respective fee, ie to reject the appeal or opposition as inadmissible. The preparatory work do not cover Art. 112a EPC as this article was only introduced in the EPC 2000. "

(d) For the other decisions mentioned above, irrespective of the circumstances, whether the notice of appeal was lodged before / after the expiry of the time limit for appeal and / or that appeal was paid only before / after the expiry of that period, the appeals were dismissed as inadmissible without a refund of the appeal fee being ordered. The question of the inadmissibility of the appeal was not addressed in the reasons for those decisions.

(e) The Enlarged Board of Appeal, in its decision R 2/10 of 3 November 2010, found that the application for review was inadmissible as the fee for the request for revision had been paid in due time, without giving explanations as to the legal consequence.

4. Literature / Doctrine

The so-called " majority " case-law has been unreservedly approved and unanimously approved by the specialized literature : Singer, Europäisches Patentübereinkommen, 1. Auflage, 1989, Artikel 108 EPÜ, Rdnr 5 ; Bühler in Singer / Stauder, 7. Auflage 2016, Artikel 108 EPÜ, Rdnr 27; Keussen in Benkard, 3. Auflage 2019, Artikel 108 EPÜ, Rdnr. 64 ff. ; Moufang in Schulte, 10. Auflage 2017, Anhang zu § 73 PatG, Artikel 108 EPÜ, Rdnr. 19 ff. ; Moser in Münchner Gemeinschaftskommentar, 20. Lieferung, Juli 1997, Artikel 108 EPÜ, Rdnr. 27; Gall in Münchner Gemeinschaftskommentar, 10. Lieferung, Februar 1986, Artikel 51, Rdnr. 398; Paterson, The European Patent System, London 1992, note 2-44 ; Weiss / Ungler, Die europäische Patentanmeldung und der PCT in Frage und Antwort, 9. Auflage 2017, Kapitel 16 " Beschwerdeverfahren ", Punkt 16.5, Rdnr 1545 ; Screw " The annotated European Patent Convention ", 26th Edition 2018, Article 108, points 1 to 4.          

In this respect, Singer in the first edition of his (abovementioned) work published in 1989 summarized the legal situation in question as follows : ' Die Beschwerde gilt nach Satz 2 erständer eingelegt, wenn die Beschwerdegebühr entrichtet worden ist. Diese Formulierung findet sich bereits in dem ersten Arbeitsentwurf von 1961 und bedeutet, dass vor Zahlung der Gebühr keine wirksame Beschwerde vorliegt; der Beschwerdeschriftsatz ist lediglich ein Stück Papier ohne rechtliche Wirkung. ". He specifically mentioned the working document also cited in the above-mentioned decisions, which will be analyzed in point X. below, " preparatory work " of the provisions in question.    

III Rules of interpretation of the EPC

In this respect, the EPC must be interpreted in accordance with the principles set out in the Vienna Convention on the Law of Treaties concluded on 23 May 1969 (hereinafter the "Vienna Convention"), although the European Patent Organization not be part of it. In its very first decisions (G1 / 83, OJ EPO 1985, 60, G 5/83 OJ EPO 1985, 64, and G 6/83, OJ EPO 1985, 67 , see "Preliminary remarks : interpretation of the Convention on European Patent "), the Enlarged Board of Appeal has recognized the applicability of those principles. They are recognized and applied in numerous decisions as well as by the boards of appeal (G 2/02 and G 3/02, OJ EPO 2004, 483 , G 2/08, OJ EPO 2010, 456 , J 9/98 and J 10/98, OJ EPO 2003, 184 , T 128/82, OJ EPO 1984, 164 , T 1173/97, OJ EPO 1999, 609 , Jurisprudence of the Boards of Appeal, 8th edition 2016, Chapter III.H.1). The relevant articles of the Vienna Convention (Articles 31 and 32) read as follows :                   

"Article 31. General rule of interpretation

1. A treaty must be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose.

2. For the purposes of treaty interpretation, the context includes, in addition to the text, preamble and annexes, inclusive : 

(a) Any agreement relating to the treaty which has occurred between all the parties in connection with the conclusion of the treaty ;

(b) Any instrument established by one or more parties in connection with the conclusion of the treaty and accepted by the other parties as an instrument relating to the treaty.

3. The following will be taken into account, together with the context : 

(a) Any subsequent agreement between the parties regarding the interpretation of the treaty or the application of its provisions ;

(b) Any subsequent practice in the application of the treaty establishing the agreement of the parties with respect to the interpretation of the treaty ;

(c) Any relevant rule of international law applicable in the relations between the parties.

4. A term will be understood in a particular sense if it is established that such was the intention of the parties.

Article 32 Additional means of interpretation

Additional means of interpretation may be used, including the preparatory work and the circumstances in which the treaty has been concluded, with a view to either confirming the meaning resulting from the application of Article 31 or determine the meaning where the interpretation given pursuant to Article 31 :

a) Leave the meaning ambiguous or obscure ; or

(b) leads to a result that is manifestly absurd or unreasonable. "

It is clear from the joint reading of these two articles that the provisions of a treaty (in this case the EPC) must, as a first step, be interpreted according to the " ordinary " meaning to be given to the terms in their context and to 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 the requirement of good faith. 

On the other hand, it can be inferred from Article 32 of the Vienna Convention that the preparatory work and the circumstances in which the EPC has been concluded are to be taken into account in order to confirm a meaning or to determine a meaning when the first following interpretation the ordinary meaning would lead to an ambiguity or an absurd result.

IV. Application of interpretation rules

1. Literal interpretation

The wording of the texts at issue in the three official languages ​​that are authentic are as follows :

Article 108, first and second sentences EPC 2000: " The appeal must be lodged, in accordance with the Regulations, with the European Patent Office within two months of service of the decision. The appeal shall be deemed to be filed only after the payment of the appeal fee. " 

Article 108 first and second sentences EPC 2000: "Notice of appeal shall be filed, in accordance with the Implementing Regulations, at the European Patent Office. Notice of appeal to be paid. "

Artikel 108 erster und zweiter Satz EPÜ 2000: "Die Beschwerde ist nach Maßgabe der Ausführungsordnung innerhalb von zwei Monaten nach Zustellung der Entscheidung beim Europäischen Patentamt einzulegen. Die Beschwerde gilt erst als eingelegt, wenn die Beschwerdegebühr entrichtet worden ist. "

According to the jurisprudence of the Enlarged Board of Appeal and in application of the principles of the Vienna Convention mentioned above (see in particular G 2/12, OJ EPO 2016, A27, points V to VII of the reasons with many references to other decisions / opinions of the Enlarged Board of Appeal), when it comes to interpreting provisions of the EPC, the Grand Chamber generally starts from the wording of the provision in question and, even if the meaning of the provision is clear from this wording, it must then examine whether the result of a literal interpretation is confirmed by the meaning of the terms considered in their context.

(1) According to Article 108, first sentence EPC, the bringing of the action requires that, under the conditions laid down in the Implementing Regulation and within two months, ' an action be brought ', that is, that is to say that a notice of appeal is filed containing, inter alia, an application defining the subject-matter of the action (Article 108, first sentence, together with Rule 99 (1) (c) EPC), by which the applicant expresses his intention to challenge a decision rendered at first instance. In the absence of such a declaration, the appeal procedure is not initiated and the decision of the first instance does not have to be re-examined by the Board of Appeal. The wording in the three official languages ​​of the EPC of this first sentence of Article 108 EPC - the three texts being equally authoritative under Article 177 (1) EPC - is somewhat differentiated. The wording in the English version uses the words "Notice of Appeal ", whereas the said first sentence in the German and French versions begins with " Die Beschwerde ... ", " The appeal ... " and not " The deed of appeal ... "or" Die Beschwerdeschrift ... ". It can not be inferred from any intention of the legislator. The initial versions of this first sentence of this Article 108 EPC 1973 to EPC 2000 were written only in German and French, and included the words ' Beschwerde ' and ' Recourse ' respectively. Whatever language is used, this first sentence of the article provides that, within two months and under the conditions laid down in the Regulations, the appeal is brought by the filing of a notice of appeal. Subsequently is meant as equivalent " act of appeal filed " and " appeal " and conversely " act of non-filed appeal " as equivalent to " untrained use ."                       

(2) The second sentence of Article 108 EPC states that the lodging of the appeal shall give rise to the payment of the appeal fee : "The appeal shall be deemed to be filed only after payment of the appeal fee. ". This second sentence of Article 108 EPC provides for a legal fiction : " The appeal is deemed to be filed only after payment of the appeal fee. "(Bold and underline added).    

(a) According to a first reading of this second sentence (narrow literal interpretation), the legal fiction contained in it can be understood as allowing the date of the action brought alone to be determined. Taking the example where the notice of appeal is lodged within the two-month period and the appeal fee is paid after the expiry of the said two-month period, the appeal is, according to that narrow literal reading, deemed to have been formed on the date of the appeal fee, ie, in this example, after the two-month period, with the result that the appeal would be inadmissible under Rule 101 (1) EPC (" If the appeal does not comply with Articles 106 to 108, Rule 97 or Rule 99 (1 ) ( b) or ( c) or ( 2), the Board of Appeal dismisses it as inadmissible unless the deficiencies have been rectified before expiry the time limit applicable under Article 108. "). According to that interpretation, the filing of the notice of appeal is not called into question if the legal fiction relates only to the payment of the appeal fee mentioned in the second sentence of Article 108 EPC (see opposite hereinafter the broad literal interpretation which has implications for the filing of the notice of appeal).         

(b) According to a second reading of this second sentence (broad literal interpretation), the legal fiction states that, for the appeal to be lodged, the appeal fee must be paid within two months of the first sentence of the Article 108 EPC. Indeed, the use of the phrase "n '... that ..." (in the English version of the CBE 2000 "... until ..." in the English version of the EPC 1973 ". .. until after ... " in the German version" ... erst ... wenn .... ") in the second sentence establishes a link in time with the first sentence; it implies that an appeal has already been lodged by the lodging of the notice of appeal in the required conditions and that the appeal can only be considered valid if the requirement laid down in the second sentence is fulfilled, know that the payment of the appeal fee takes place at the same time or later in time, but within the period of two months. This " time " component of the two acts appears clearly in the wording of the English version of Rule 20 (2), first sentence EPC 1973 (corresponding to Rule 22 (2), first sentence, EPC 2000), the wording of which is similar to that of Article 108, second sentence, EPC : "The request shall not be deemed to have been paid for. "(Added fat). In other words, the lodging of an appeal, in order for it to be validly formed, requires the payment of the appeal fee within the two-month period. The payment of this fee within the two-month period is a necessary condition for validly filing an appeal. A notice of appeal meeting the conditions laid down in the Implementing Regulations and filed within the required two-month period (Article 108, first sentence, EPC) will only lead to the lodging of an appeal subject to the payment of the appeal fee in the same period of two months (Article 108, second sentence, EPC). On the other hand, in the absence of payment of the appeal fee or in the event of late payment, the legal fiction provided for in the second sentence of Article 108 EPC is fulfilled, the action is deemed to be unformed or, in other words, the document produced within the two-month period as a notice of appeal is deemed not received.        

This combined reading of the first two sentences of Article 108 EPC corresponds to that adopted in the abovementioned Decisions J 16/82, Reasons, point 9; T 778/00, reasons, point 2.2 and T 1954/13, reasons, point 40, all belonging to the majority of the case-law. This is, moreover, confirmed in G 1/86 of 24 June 1987 (OJ EPO 1987, 447) which, in paragraph 8, first paragraph of the reasons, states that "Erst wenn die Beschwerde eingelegt und die entsprechende Gebühr the word ist, liegt eine Beschwerde vor. Mit diesen beiden Handlungen leitet der Beschwerdeführer das Verfahren ein. Der Rechtszug ist eröffnet. "(Language of the proceedings, German). The Enlarged Board of Appeal can only subscribe to this analysis. 

Intermediate conclusion :

By a literal interpretation based on a combined reading of the first two sentences of Article 108 EPC (Broad Literal Interpretation), an appeal is validly lodged only if the payment of the appeal fee is made within the required two-month period. The wording of the three versions of this provision is not contradictory. It is through the mechanism of the legal fiction related to the payment of the appeal fee and within the two-month period that the time of the lodging of the appeal is fixed. On the other hand, by the use of the legal fiction contained in Article 108, second sentence, EPC, if the notice of appeal is filed during the said two-month period and the payment of the appeal fee is made after the said deadline or if no tax is paid, the appeal is deemed unformed ie a court link does not exist or, in other words, the appeal must be declared non-existent. This literal interpretation of Article 108 (1) and (2) EPC leads to a result consistent with the purpose of the provision.

2. Systematic interpretation

In application of the principles of the Vienna Convention mentioned above, systematic interpretation is the second pillar on which to interpret a legal provision and the terms it uses (see in particular G 2/12, OJ EPO 2016, A27, points V to VII with numerous references to other decisions / opinions of the Enlarged Board of Appeal). This second method involves interpreting the meaning of the term in the context of the relevant provision, taking into account its place and functions within a coherent set of related legal norms.

The EPC provides in many other provisions the legal fiction of the non-presentation of the document in case of non-payment of the fee due : Article 135 (3), second sentence EPC, processing fee ; Rule 22 (2), first sentence EPC, administrative fee, Rule 88 (3), third sentence EPC, fee-fixing fee ; Rule 89 (2), second sentence EPC, intervention fee ; Rule 123 (3) EPC, retention of evidence tax ; Rule 136 (1), third sentence EPC, restitutio in integrum fee. For all these legal situations, the document produced (for example the request for transfer of the European patent application) will only be considered as submitted if the payment of the fee due (eg the administration fee provided for in Rule 22 ( 2), first sentence EPC) has been made. In other words, the non-payment of the corresponding fee results in the legal fiction of the non-presentation of the (initially) produced document.     

This legal fiction is also intended as a mechanism in the EPC for other legal situations that do not depend on the payment of a tax. Thus, according to Article 14 (4) EPC, natural or legal persons domiciled or domiciled in a Contracting State having a language other than English, French or German as an official language may deposit, in a the official language of that State, documents to be produced within a specified period, for example a response to a notification from the Examining Division. However, a translation into an official language of the EPO will have to be produced under the conditions laid down in the Regulations. If it is not filed in due time, the document is deemed not to have been produced (Article 14 (4), third sentence EPC). Other provisions in the EPC provide for the execution of a subsequent act (as a rule, the filing of a document) generated by a first act and, failing that subsequent act, the immediate legal effect that the first act is fictitiously, in the words used, " deemed not to have been produced ", " deemed not filed, " " deemed not to have been made ", or " deemed void ". By way of example, Rule 5 EPC can be found to mean the non-filing of a certificate certifying the translation of a document; Rule 50 (3) EPC, failure to rectify a failure to sign a document; to Rule 56 (4) EPC, removal of the submission of missing parts of the description or missing drawings ; Rule 152 (6) EPC, the non-deposit of the power of attorney. In the abovementioned decision T 1325/15, the Board of Appeal cited the example that an applicant who does not file in due time, ie within four months of the filing of the European patent application such as provided for in Rule 25 EPC, the certificate of exhibition can not benefit from the unenforceability of the disclosure provided for in Article 55 (1) EPC. In this sense, the wording of the second sentence of Article 108 is part of the systematic approach to the provisions of the EPC which provides for the legal fiction of the non-presentation of the document produced or the fictitious withdrawal of the document produced.          

Intermediate conclusion :

By a systematic interpretation of all the provisions of the EPC, it appears that the legislator has provided for many legal situations that the consequence of the non-fulfillment of a second act has the legal effect that the first act is a legal fiction has not been made. Various formulations are used which all define this legal fiction and which result in the non-existence of the act performed.

3. Teleological interpretation

Like the national and international courts, the Grand Chamber applies the teleological method to interpret provisions of the EPC. It examines in this respect the objective meaning and purpose of the provisions (eg G 1/88 (OJ EPO 1989, 189), point 5 of the grounds, G 1/03 (OJ EPO 2004, 413), point 2.1. 1 of the reasons). The point of departure is to determine the rationale for the relevant provision (ratio legis) since the interpretation can not be contrary to the spirit of that provision (G 6/91 (OJ EPO 1992, 491), point 8 of the reasons).    

Article 108, first and second sentences EPC provides via a legal fiction the formation of the appeal. The EPC provides for many legal situations that are governed by legal fictions. Thus, by the mechanism of the legal fiction of the withdrawal of the European patent application in case of non-payment of taxes (for example, for filing and search fees, Article 78 (2) EPC , for the annual fee, Article 86 (1) EPC , for the examination fee, Article 94 (2) EPC) or when an act has not been completed (for example, translation of the European patent application into one of the official languages ​​of the European Patent Office). EPO not provided, Article 14 (2), third sentence EPC , failure to reply to the communication of the examining division, Article 94 (4) EPC , failure to reply to the notification of the Board of Appeal, Article 110, together with Rule 100 (3) EPC), the legislature intended to introduce a simplified procedure for the handling of the file, by which a duly reasoned rejection decision of the patent application in question need not be drafted. This measure of simplification through the play of demand withdrawal fiction was first introduced in national patent law systems, notably in Austria (see Verordnung der Bundesregierung vom 12. Juli 1923 über die Vereinfachung der behördlichen Einrichtungen und Verfahrens auf dem Gebiete des Gewerblichen Rechtschutzes, Artikel 1, Punkt 20, Bundesgesetbandblatt der Republik Österreich 1923, Seite 1363) and in the Nordic countries (for Sweden, see paragraph 5 of the Patents Act of 16 May 1884, as amended by the law n ° 192 of June 5th, 1931 (SFS 1931: 192), on proposition n ° 136 of February 26th, 1931, approved by letter to the king n ° 239 of May 20th, 1931) to be then taken again in the articles or rules of EPC (see also Weiss / Ungler, "The European Patent and Protection Act and the PCT in Frage und Antwort," 9. Auflage 2017, Fußnote 60). The applicant, holder of the patent or opponent, instead of receiving a reasoned decision rejecting the European patent application or patent application, is informed of his deliberate or unintentional inaction of the loss of rights by notification.   

In the EPC, it is Rule 69 EPC 1973 (now Rule 112 EPC 2000) which defines this procedure for the recognition of loss of rights. By this simplified procedure, generated by the simple non-observance of the period in question, the file can be put to an end while respecting the rights of the applicant, owner of the patent or opponent. As will be explained in paragraphs V and X below, in the first discussions of the future Article 108 EPC and in the discussions of the future Rule 69 EPC 1973 (now Rule 112 EPC 2000), the wording of Article 108, EPC first and second sentences is in line with the legislator's intention to provide, as is the case for other legal situations, for a simplified and efficient procedure which is part of the general purpose of the EPC procedure. .

When it comes to the appeal procedure, the implementation of this simplified procedure for the closure of the file is entrusted to the Registry of the Boards of Appeal. The Praesidium has, pursuant to Article 6 (2) of the Rules of Procedure of the Boards of Appeal, transferred to the Registry the competence of the Boards of Appeal to communicate losses of rights under Rule 112 (1) EPC (see Article 2, point 7 of the decision of the Praesidium of the Boards of Appeal of 12 November 2007, OJ EPO 2008, Supplement 1, 49).

Intermediate conclusion :

The teleological interpretation, that is to say the interpretation of meaning according to the purpose of Article 108, first and second sentences EPC, leads to the same intermediate conclusions as those drawn for the literal and systematic interpretations. By the legal fiction provided for in the second sentence of Article 108 EPC and linked to the payment of the appeal fee, the legislature intended, as provided for in many other legal situations, to introduce a simplified procedure for terminating folder. It is in this sense that the wording provided for the formation of the appeal must be interpreted.

V legal consequence in case of non-fulfillment of the two acts or from one of the two acts in the period of two months of Article 108 EPC   

Article 108 EPC or any other provision of the EPC or its Implementing Regulations does not expressly define the legal consequence in the situations envisaged above.

The same is true of other provisions in the EPC with a similar wording, eg for the formation of the opposition (Article 99 (1) EPC) or the submission of a request for revision (Article 112a EPC). Only in the formulation of the request for examination (Article 94 (1), first and second sentences EPC) did Parliament expressly provide in Article 94 (2) EPC for the legal fiction of withdrawal of the application. patent applied " where the request for examination is not filed on time ". 

1. The " majority " case-law has deduced from this silence texts and by mere reference to the travaux préparatoires of Article 108 EPC (see J 16/82, point 9 of the grounds) that the legal consequence to be applied is that the " appeal is deemed unformed ". The so-called " minority " case-law , on the other hand, by an analysis of the travaux préparatoires of Article 108 EPC and by reading Rule 65 (1) EPC 1973 (now Rule 101 (1) EPC) which refers to Article 108 EPC (see T 79/01, supra, point 10 of the Reasons), upheld the " inadmissibility of the action ".        

2. The Boards of Appeal in the aforementioned T 1553/13 and T 2017/12 referral decisions and in T 1897/17 had held that the appeal was inadmissible simply by reading Part IV / 6.514 / 61 -F (see below, detailed analysis) of the " preparatory work " which deals with draft Article 93, which subsequently becomes Article 108 EPC. They decided as follows :     

- "... [dass] die Fiktion der nicht erhobenen Beschwerde bei nicht rechtzeitiger Zahlung der Beschwerdegebühr erwogen wurde, aber weder diese Formulierung, noch das damit verbundene Verfahren in die unterfuge Fassung des Europäischen Patentübereinkommens übernommen wurden. (See T 1553/13, point 8.4.3, 4th paragraph of the reasons) (language of the proceedings, German, added fat) ;   

- " ... the provisions and the procedure originally envisaged were different from the ones eventually adopted. In particular, the draft article is not legally enforced. This definition of what is a special case does not exist in the article. There is no record of a discussion of this point with reference to the present wording. It can not be ruled out that the legislators in fact adopt the present wording because they are no longer desirable. (T 2017/12, point 3.4.3, 4th paragraph of the reasons for the decision , language of the proceedings, English).   

These conclusions are inaccurate.

When interpreting international treaties, it is permissible to take into consideration, in the alternative, " preparatory work ". In accordance with Article 32 of the Vienna Convention, additional means of interpretation, including preparatory work and the circumstances under which the treaty has been concluded, may be used to confirm the meaning of the application of section 31, to determine the meaning where the interpretation given under section 31 : (a) leaves the meaning ambiguous or obscure, or (b) leads to a result that is manifestly absurd or unreasonable (J 8/82, OJ EPO 1984, 155, point 13 of the Reasons , J 4/91, OJ EPO 1992, 402, point 2.4.2 of the grounds , T 128/82, OJ EPO 1984, 164, point 9 of the grounds G 2/07, OJ EPO 2012,130, point 4.3 of the reasons and G 1/08, OJ EPO 2012, 206, point 4.3 of the reasons).            

It is clear from the analysis of the " travaux préparatoires " of former Rule 69 (1) EPC 1973 (now Rule 112 (1) EPC) and not from Article 108 EPC that the legislature had, in the first place, expressly provided for the legal effect of the loss of rights " in case of non-introduction of the appeal " in this rule, but that, during the discussions of this rule and for the sake of simplification, he preferred to retain in the final version of Rule 69 (1) EPC 1973 a general wording encompassing all legal situations of loss of rights.   

3. Analysis of the history of Rule 69 (1) EPC 1973

(1) The ' on Article 69, number 1 "of the draft of the Regulations drawn up by the sub-group" Implementing Regulation "of the Working Group I at the meeting of November 23 to 27 1970 was worded as follows : " (1) If the European Patent Office finds that a European patent application is deemed to be withdrawn, it shall notify the applicant accordingly in accordance with the provisions of Article 161 of the Convention. (2) If the applicant considers that the European patent application should not be deemed to be withdrawn, he may, within a period of two months from the notification referred to in paragraph 1, request a decision ... "(See BR / 67 f / 70).       

(2)

(a) It is apparent from the report of the meeting of this Sub-Working Group on the " Implementing Regulations " which took place on 12-14 January 1971 as follows in point 40: " The Rule on Article 69 (1) (doc. BR / 67/70, page 14) established by the Sub-Group .... is intended to provide for a simplified procedure in the event that the Office finds that a European patent application is deemed to be withdrawn. The use of such a procedure - which, while safeguarding the plaintiff's rights of appeal, alleviates the Office's task - was justified by the fact that in this case only mere questions of fact were at issue, for example the payment of a tax in due time. On the proposal of the British Delegation, the Sub-Group considered that this simplified procedure could be extended to other cases where only simple questions of fact were also involved. As a result, the Sub-Group adopted a text in which four new cases were added ... "(see BR / 84 f / 71).    

(b) The text of the " Ad Article 69, number 1 " became " on Article 159, Number 11 " as adopted reads as follows :     

" (1) If the European Patent Office finds that

(a) a European patent application is, in whole or in part, deemed to be withdrawn,

b) ....,

c) ....,

(d) an opposition is deemed not to have been filed or an appeal has not been lodged, or

e) ...,

notification shall be made to the person concerned, in accordance with the provisions of Article 161 of the Convention. (See BR / 81f / 71) (bold added)

(3) It appears from point 24 of the report of the meeting of Working Group I held from 22 to 26 November 1971 that, following proposals by the United Kingdom Delegation to provide for other situations of loss of rights and adopted by the group that " ... the list in this provision may be incomplete, it may be necessary to seek a general formulation, covering all cases where a request is considered not to have been formulated following the failure to pay a fee. "(See BR / 144 f / 71, item 24 and BR / 134 f / 71) (bold added). 

(4) This last recommendation was then discussed in Working Group I and at Intergovernmental Conference. A general formulation was submitted to the Diplomatic Conference in Munich. The text of Rule 70 (1) (now Rule 69 (1) EPC 1973) reads as follows : " (1) If the European Patent Office finds that the loss of any right, derives from the agreement without a decision rejecting the European patent application, a decision to grant, revoke or maintain the European patent or a decision on a measure of notify the person concerned in accordance with the provisions of Article 118. "  

This mechanism of service of the finding of loss of rights was also mentioned by van Empel, in The Granting of European Patents, Leyden 1975, at paragraph 393 : " As for the normal sanction to non-payment of fees ..." party concerned will be informed by the EPO of his loss of rights, pursuant to Rule 69 (1). If he disagrees with the finding of the EPO he may, of course, argues his case and may eventually take the case to a Board of Appeal (Rule 69 (2)). ». 

Preliminary conclusion :

It is true - as has already been pointed out by T 1553/13 and T 2017/12 referendums T 1897/17, cited above that ' ..... the legislator in fact elsewhere used explicit wording to specify the consequences of a late-filed request. An example can be found in Article 94 (2) EPC, which reads: "If no request for examination has been made in due time, the application shall be deemed to be withdrawn." Therefore, it would appear incorrect to read Article 108, second sentence, EPC in a way it is not worded. (See T 2017/12, point 3.4.3, 5th paragraph of the reasons, T 1553/13, point 8.4.3, 4th paragraph , T 1897/17, point 15, page 15, last paragraph) - that the consequence " the action is deemed to be unformed "has not been expressly stated in Article 108 EPC.         

However, in an analysis of the travaux préparatoires of Rule 69 EPC 1973, the legislator intended to expressly lay down Rule 69 (1) EPC 1973 (now Rule 112 (1) EPC) as the legal consequence that an appeal is deemed to be unformed, in a single provision and in a wording of a general nature, all legal situations of loss of rights which are neither a decision rejecting the European patent application, issuing, revoking or maintaining the European patent or a decision relating to a measure of inquiry (Rule 112 (1) EPC : '(1) If the European Patent Office finds that a loss of rights has occurred without a decision rejecting the European patent application, of issue, revocation or maintenance of the European patent or a decision concerning a measure of inquiry has been taken, it notifies the interested party. "). In other words, the legislator preferred rather than list all the possible situations (affected by the consequence in the form of a legal fiction of the " deemed " type in the forms such as " request deemed withdrawn ", " deemed not to have been product "," deemed not deposited "," deemed not to have been made ", or" deemed void "), at the risk of forgetting to do so, to be hollowed out by a negative general wording that excludes from its other situations, which are well-defined, such as the rejection of the patent application, the grant, the revocation or the maintenance of the European patent or a decision concerning a measure of inquiry.            

Therefore, the non-payment of fees, including the appeal fee and even more the cases of late payment of the appeal fee, are notified to the interested party (applicant, patentee, opponent, etc.) in accordance with this disposition.

It is in this sense that the Enlarged Board of Appeal, in G 1/90 (OJ EPO 1991, 275, point 8 of the reasons) read Article 99 (1), third sentence EPC : " The opposition proceedings involve a patent that has already been issued. The loss of patent rights as a sanction for the non-observance by the owner of the time limits imposed on him does not exist in this procedure. Except in the case of non-payment of the opposition fee (Article 99 (1), 3rd sentence EPC), there is no provision for punishment by means of fiction. "(Added fat).    

VI Scenarios 1 and 2 - Intermediate conclusions

In view of the foregoing, the answer to be given to the question posed for cases 1 and 2 is that " the appeal is deemed to be unformed " (fiction of the non-filing of the appeal). For the record, case 1 concerns the situation in which an appeal is lodged WITHIN the two-month period requested AND the appeal fee has been paid AFTER the expiry of the said two-month period; in the case of Figure 2, the appeal is formed AFTER the expiry of the two-month period AND the appeal fee is paid AFTER the expiry of the said two-month period (see table, page 12).   

VII Appalled as unformed - inadmissible appeal and Rule 101 (1) EPC

The Board of Appeal considers it necessary, given the discussions in the aforementioned decisions of the Boards of Appeal, to give its views on the relationship between Article 108, first and second sentences, EPC and Rule 101 (1) EPC ( formerly Rule 65 (1) EPC 1973). The so-called " minority " case-law has, on the basis of the wording of Rule 101 (1) EPC, held that the application is inadmissible in the cases under discussion. The following is the text of Rule 101 (1) EPC: " If the appeal does not comply with Articles 106 to 108, Rule 97 or Rule 99, paragraph 1 ( b) or ( c) or paragraph 2, the Board of Appeal dismisses it as inadmissible, unless the deficiencies have been rectified before the expiry of the applicable time limit under Article 108. " This text corresponds to the wording of Rule 65 (1). ) EPC 1973, with the exception of the references to the rules, the numbering of which has changed.            

Articles 106, 107 and 108 EPC lay down the conditions which must be fulfilled at the end of the two and four-month periods in order for the action to be considered admissible and to be admissible. According to Article 108, first and second sentences EPC, the appeal procedure is initiated by a first step, the filing of the appeal, during which the applicant is required to lodge a notice of appeal within two months from the meaning of the decision ; this appeal will only be considered if the appeal fee is paid. Only if both acts have been performed within the prescribed two-month period is the remedy deemed to be constituted, ie the remedy exists. Once the existence of the appeal has been established, the question of the admissibility of the appeal will arise at a later stage. For example, it must meet a number of requirements, always within the two-month period, for example the indication of the contested decision (Article 106, together with Rule 99 (1) (b)). CBE), the applicant's indication (Article 107, together with Rule 99 (1) (a) EPC ; see to this effect the decision of the Enlarged Board of Appeal G 1/12, OJ EPO 2014, A114, points 17 to 23 of the grounds) or the indication of the applicant's address (Rule 107, set Rule 99 (1) (a) EPC). Another requirement for the admissibility of the appeal is the filing of the statement of grounds of appeal (Article 108, third sentence EPC), which must be filed no later than the expiry of the four-month period. If these requirements are not observed after the expiry of these time limits, the appeal is dismissed as inadmissible under Rule 101 (1) EPC, unless the deficiencies have been rectified before the expiry of the time limit. applicable under Article 108 EPC. This two-step approach to introducing the appeal procedure (acts conditioning the formation of the appeal, acts necessary for the appeal to be admissible) was analyzed and retained in a number of decisions of the Boards of Appeal, see for example T 445 / 98, supra, points 5 to 7 of the reasons ; T 1954/13, paragraph 43, second paragraph. In other words, the admissibility of the appeal can only be considered if the appeal is validly filed. In this context, the term "remedy " in Rule 101 (1) EPC must be read in the sense of " appeal filed " (" If the appeal complained of is not in conformity with Articles 106 to 108 ... ") ( added fat). The reference in Rule 101 (1) EPC to Article 108 EPC (without mentioning the sentences of this Article) therefore refers to the third sentence of this provision ; the appeal will be dismissed as inadmissible if the appeal is not filed or is filed out of time.            

VIII Reimbursement of the appeal fee

The EPC provides for the reimbursement of the appeal fee under Rule 103 EPC (formerly Rule 67 EPC 1973). The opening cases are clearly defined and do not cover the legal situations envisaged by the question put by the President of the Office to the Enlarged Board of Appeal.

Of the two possible outcomes to the issue before the Enlarged Board of Appeal (" deemed unreformed " or " inadmissible "), reimbursement of the appeal fee arises only if the Enlarged Board of Appeal concludes that non-existence of the appeal or, in other words, that the appeal is deemed unformed. As explained above, this conclusion is the one given in cases 1 and 2.   

In the matter of payment of fees to the EPO, and in particular when determining the due date of fees, reference is made to Article 4 (1) of the Fees Regulations (RRT ) which provide that " (i) taxes the due date of which does not flow from the provisions of the Agreement, the PCT and the Regulations made thereunder shall be due from the filing of the application for the performance of service subject to a tax. According to this article, the "due date " does not mean the last day of the deadline for the payment of a fee, as is the case in many national or international laws, but the first day after which payment can be validly made. As stated in Article 4 RRT (see above), this generally follows from the provisions of the EPC or, failing that, from the filing of the application for the performance of the service subject to a tax. Except as otherwise expressly provided (eg for the payment of the annual renewal fee), a fee can not be validly paid before its due date. If the latter had been paid before the chargeable event that causes it to become due, it must be refunded, the payment made being made without cause. In other words, if, at the time of payment of the fee, a given procedure (eg the EPO opposition procedure) has not yet been introduced (eg by the notice of opposition) , the payment of the tax (opposition fee according to the example) that has been made will be treated as a payment without legal basis, thereby automatically justifying its reimbursement.   

As regards the appeal procedure before the Boards of Appeal, the date of payment of the appeal fee is the date on which the notice of appeal is lodged (see in this respect Gall, Münchner Gemeinschaftskommentar, 10. Lfg., 1986, Art 51 CBE, Regulation 86, 105 and consistent case-law since J 21/80, J 16/82 and T 778/00, cited above). This means that the appeal fee is payable only by the filing of the notice of appeal. If no notice of appeal is filed, there is no legal basis for any payment of the appeal fee, as the payment must be regarded as a payment without cause and, as confirmed by the settled case-law since T 41/82 , OJ EPO 1982, 256, point 1 of the reasons, this fee must be automatically refunded. If the notice of appeal has been lodged in due time or after the said deadline, and although the appeal fee has become due but has been paid after the two-month period, the appeal procedure will be considered as not having been introduced. Since the notice of appeal is deemed not to have been filed or filed, the appeal fee is no longer payable and must therefore be refunded, the payment made being considered a payment without cause. 

Intermediate conclusions :

In the light of the foregoing, in cases 1 and 2, for which it has been concluded that the appeal is deemed to be unformed ie the non-existence of the appeal, the reimbursement of the appeal fee must be ordered ex officio, the payment having been made without cause.

IX Scenario 3 - intermediate conclusions

For the record, scenario 3 refers to the following legal situation : The appeal fee is paid within the required two-month period AND the appeal is filed AFTER the expiry of the two-month period.

In this case, the appeal fee was paid within the required two-month period, but even before it was due. As explained above, the appeal fee becomes payable only when the notice of appeal is lodged and, therefore, if it is filed after the expiry of that two-month period, it is due only on the filing date of the notice of appeal or concomitantly with its filing. Case 3 is therefore similar to Case 2, namely that the two acts (filing of the notice of appeal and payment of the appeal fee) were made after the two-month period, the date of payment the appeal fee being postponed until the filing date of the notice of appeal after the two-month period. As concluded above in connection with Case 2, the appeal being non-existent, the appeal fee will have to be reimbursed, the payment being made without cause.

X " Preparatory work " of Article 108, first and second sentences EPC 

It was referred for the first time in Decision J 16/82 of 2 March 1983, cited above (see point II 2. (1) of the Opinion) at the genesis of Article 108, second sentence, EPC, but in a very summary way by a simple reference to the " Entstehungsgeschichte ". It was in decision T 79/01 dated 25 March 2003 (point 10 of the reasons) that the Board supported, by an analysis of document IV / 6.514 / 61-F of 26 September 1961, its position that the appeal fee was not to be refunded, the appeal being dismissed as inadmissible. In the first edition of his book " Europäisches Patentübereinkommen ", 1989, Art. 108, para. 5, Singer also referred to this document to conclude the legal consequence of the " remedy deemed unformed " in the event of non-payment of the appeal fee. By decisions T 2017/12 of 24 February 2014 and T 1553/13 of 20 February 2014 (referral decisions G 1/14 and G 2/14), the two boards of appeal analyzed the texts (in particular document IV / 6.514 / 61-F) and the discussions which led to the amendment of the provisions finally adopted at the Diplomatic Conference in Munich in October 1973. This analysis was commented by Teschemacher in the Mitteilungen der Patentanwälte 2018, page 314 and following. Decision T 1897/17, cited above (see the reference memorandum and point I 1. of the opinion), reproduced the analyzes and conclusions of decisions T 2017/12 and T 1553/13, cited above.        

The Enlarged Board of Appeal considers it necessary, since the so-called " majority " and " minority " case law have relied on " preparatory work " to substantiate the reasons for their decisions, to analyze in detail the draft articles. as well as the discussions in question.     

(1) Draft Haertel Convention Articles 1 to 100, also known as the " Haertel Project " (French version of document IV / 5569/61-F) - draft Articles 93 (1) and 97 (1)  

(a) Draft Article 93 (1) and discussion:

(?) The " Project Haertel " proposed a draft article 93, which later became Article 108 EPC. Paragraph 2, second sentence, of draft article 93 states that " if the appeal fee is not paid within the said period [two months fixed in paragraph 1] [" the said period "shall be translated as" rechtzeitig "in the German version], the appeal is regarded as untrained. [Added hooks]         

On page 9 of this draft, it is indicated as " Remarks " on paragraph 2 of this draft Article 93 as follows : " Paragraph 2 deals with the payment of the appeal fee which is necessary to reduce the number of arbitrary remedies ... The finding that an appeal lodged is considered to be void 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 the subject of 'appeal. It does not seem necessary to state this principle in the Convention itself. It will be necessary to decide later whether provision should be made for this purpose in the Regulations under the Convention. "   

(?) Discussion of draft article 93 - IV / 6.514 / 61-E:

This draft Article 93 was discussed in Brussels at the third meeting of the Working Party " Patents " which was held from 25 September to 6 October 1961. On 25 September 1961, the report of this meeting (see page 3 of document IV / 6.514 / 61-F, " Discussion of Article 93 of the preliminary draft Convention ") that: "" The group agrees on the substance of paragraph 2 Article 93. Mr. Van Benthem asked whether the Convention provided for an appeal against the finding that the appeal was considered unformed as a result of the non-payment of the fee, and the President replied that, in that case, an appeal in law should be possible before the European Patent Court. "It was then decided to refer draft Article 93 to the Drafting Committee.       

(b) Draft Article 97 (1) and discussion:

(?) Draft Article 97 (1) and (2) reads as follows :

"(1) If the appeal is not admissible or if it has not been lodged in the prescribed form or within the prescribed time, the Board of Appeal dismisses it as inadmissible. (2) If the appeal is not substantively founded, the Board of Appeal dismisses it as unfounded.

Only paragraph 1 concerns the admissibility of the appeal. On page 17 of this draft, it is specified in this regard as " Remarks " of these paragraphs 1 and 2 of this draft Article 97 as follows : " Paragraphs 1 and 2 establish a terminological distinction between the failure of an appeal because certain formal requirements are not met and the failure of an action for lack of a material foundation. In the first case [paragraph 1], the appeal is "rejected as inadmissible". This is the case, for example, where the appeal was brought by a person whose interests are not prejudiced by the contested decision or when the appeal was filed late but the appeal fee was paid in due time. (However, if the appeal fee has not been paid or was paid late, the appeal is, under Article 93 (2), considered to be "untrained"). [Added hooks]     

(?) Discussion of draft article 97 - IV / 6.514 / 61-E:

The text of draft Article 97, which was a draft article subsequently to become Article 111 EPC, was discussed on 26 September 1961 at the third meeting of the Working Party on Patents (see page 6 of Document IV). /6.514/61-E, "Discussion of Article 97 of the preliminary draft Convention"). The report states that:  

" The President states that the first three paragraphs of the article regulate the five possible ways for the Board of Appeal to rule on the appeal.

1. The Chamber may find that the complaint is irreceivable as a result of the non-payment of the fee (Article 93 (2)).

2. If the appeal is not substantively founded, the Board of Appeal dismisses it as unfounded.

3. If the appeal is based in whole or in part, the Board of Appeal shall set aside the contested decision in whole or in part and may either give its own decision on the merits or remit the case for further took the impugned decision. ».

Point 1 was not discussed. It was then decided to refer draft article 97 to the drafting committee.

(c) Conclusions drawn from the contents and discussions of draft articles 93 and 97 :

- Draft Article 93 in its first version provides that the appeal " shall be considered as untrained " in the event of non-payment of the appeal fee. During the discussions of this draft article, the group had agreed to the proposed wording. According to the " Comments " on draft Article 93, it is specified that the procedure for challenging the " finding that an appeal filed is considered to be void for lack of payment of the appeal fee" will be decided later. ... " It was in this sense that the chairman of the meeting gave a reply to Mr. Van Benthem during the discussion of this draft article.     

- In the "Haertel Project", part " Remarks " of draft Article 97, it is clear with reference to draft Article 93 (2) that the failure to pay the appeal fee or the delay in the payment of the appeal fee has the legal consequence that " the appeal is .... considered as" untrained " ".   

- Draft Article 97 (1) provides that the appeal will be dismissed as inadmissible if it has not been filed within the prescribed time limit ; in the " Remarks " it is specified by way of example that this will be the case, if the fee has been paid in due time, but the appeal was filed after the deadline. On the other hand, during the discussion of this provision, the presiding judge introduced draft article 97 as providing for the inadmissibility of the appeal in the event of non-payment of the appeal fee while mentioning the draft of Article 93 (2), which seems contradictory to the wording of paragraph 2 of draft article 93.  

(d) Draft Articles 93 and 97 - continuation of the discussions

Following this first discussion of these draft articles, the drafting committee prepared a new version of draft articles 93 and 97 (see document IV / 5569/1/61 - E - dated 26 and 28 September 1961 ). The provisions for appeal (draft Article 93) have been consolidated into a single paragraph, the second sentence being worded as follows : " The appeal shall be deemed to be filed only after the payment of the appeal fee prescribed in Regulation relating to fees for this Convention. Paragraph 1 of draft article 97 is redrafted as follows : " If the appeal does not comply with the requirements of Articles 91 to 93 or of the Regulations under this Convention, the Board of Appeal shall reject it. as inadmissible. These new wordings have been modified only minimally and correspond to the future versions of Rule 108, second sentence and Rule 65 (1) as adopted at the 1973 Diplomatic Conference in Munich.     

(2) Interpretation of the " preparatory work " in the decisions cited in the referral memorandum, namely T 79/01 and T 1897/17, which quotes decision T 2017/12 (" minority " case law )    

(a) T 79/01, point 10 of the grounds : In order to find the action inadmissible, the Board of Appeal refers to the 'preparatory work' and to document IV / 6.514 / 61-D, and to the 'Entscheidungsmöglichkeiten der Beschwerdekammer' "according to which" Die Kammer kann feststellen, dass die Beschwerde wegen Nichtentrichtung der Gebühr unzulässig ist ". The Chamber therefore refers to the only summary made by the chairman of the third meeting of the " Patent " Working Group as an introduction to the discussion of draft Article 97, and omits, on the one hand, to indicate Article 93 (2) mentioned by the President (see above) which expressly provides as a legal sanction that the appeal is deemed to be unformed. On the other hand, it fails to identify by reference to Article 93 (2) the obvious contradiction in the possible outcomes of the decisions (inadmissibility and " deemed unformed "). Lastly, it does not mention any other element of text or discussion of the provisions in question. Therefore, the Enlarged Board of Appeal considers the erroneous decision on this point.    

(b) T 1897/17 citing Decision T 2017/12, point 3.4.3 of the grounds : The Board of Appeal, referring to document IV / 6.514 / 61-D (see above), concluded that: It is thus clear that the provisions and the procedure originally envisaged were different from the ones eventually adopted. In particular, the draft article is not legally enforced. This definition of what is a special case does not exist in the article. There is no record of a discussion of this point with reference to the present wording. It can not be ruled out that the legislators in fact adopt the present wording because they are no longer desirable. ». 

The conclusion of the Chamber is inaccurate and is not supported by the course of the discussions : following the discussion of draft Articles 93 and 97 (see above), the legal fiction of "appeal ... considered not "has been retained by the Drafting Committee (see document IV / 5569/1/61-F above) in the new wording of draft Article 93 and the deletion of the word" in "delay" ("rechtzeitig" in the German version) suggests that the legislature intended to incorporate beyond the case of late payment, the failure to pay the appeal fee, without excluding that said legal sanction (the appeal is deemed no (see also Teschemacher in Mitteilungen der Patentanwälte 2018, 314, 318). Therefore, to conclude - as stated in decisions T 1897/17 and T 2017/12 - that the legislature intended to rule out that the case of late payment of the appeal fee is no longer treated as a special case (with the consequence that the appeal is deemed unformed) seems to be an interpretation going beyond the discussions and draft articles adopted.

Conclusions:

The " preparatory work " shows that :  

1. The legal fiction " recourse is considered as unformed " in case of non-payment of the appeal fee or late payment of the appeal fee had been retained by the legislator in 1961 and that it was maintained after discussion and redrafting of provisions (see draft Article 93, " Remarks " of draft Article 97).   

2. In the discussion of draft Article 97, point 1 of the introductory summary of the chairman of the sitting concerning the types of decisions of the boards of appeal is contradictory ; he mentions the inadmissibility of the appeal and the legal fiction provided for in Article 93 (2). There can therefore be no conclusion as to the inadmissibility of the action in the event of non-payment of the appeal fee.

3. The wording of draft article 97, paragraph 1, combined with the " remarks " to draft article 97 (inadmissibility of the appeal), seems to be limited to the situation in which the appeal fee is paid within the required time limit and the appeal after the required time, which can not be applied by analogy to the other cases under discussion. 

XI Case law of the Boards of Appeal in case of non-payment of the opposition fee

Article 99 (1), last sentence EPC provides, in a similar wording to Article 108, second EPC, the payment of the opposition fee for the opposition to be filed.

The technical boards of appeal have been led to deal with the issue of " opposition deemed formed " in a number of decisions (the list below is not exhaustive) : T 47/88 - 3.3.1 dated October 17, 1988 ; T 473/93 - 3.3.2 dated 1 February 1994 ; T 748/93 - 3.3.3 dated 19 April 1994; T 806/99 - 3.4.2 dated 24 October 2000 ; T 1048/00 - 3.2.3 dated 18 June 2003 ; T 1200/01 - 3.5.2 dated 6 November 2002; T 1530/06 - 3.4.02 dated September 10, 2008; T 1265/10 - 3.2.04 dated 15 April 2011; T 1644/10 - 3.3.05 dated October 26, 2011.      

From all these decisions, the Boards of Appeal concluded that in the absence of payment of the fee within the period of nine months or late payment of the fee, the opposition should be considered as unformed and that if the the tax had been paid late, his repayment was ordered. None of these decisions explained in their reasons why they considered this legal consequence. It was only in the abovementioned decision T 748/93, point 6 of the reasons, that the board drew a parallel between the legal position of the formation of an opposition and that of an appeal. Referring to G 1/86, cited above, it considered it necessary to clarify that the opposition procedure only exists when the notice of opposition has been lodged and the opposition fee paid : " ... before a prospective person who has appealed to the court of appeal, and who is not a member of the court, he does not assume the role of a party, because the respective proceedings are not yet in existence. "(language of the proceedings, English). 

Therefore, in the light of the case-law of the Boards of Appeal concerning the formation of the opposition, it must be concluded that, whatever the case may be, there is unanimity of case-law on the subject, that is to say the opposition procedure is closed by the fiction that " the opposition is deemed to be withdrawn " and that the opposition fee should be refunded. This case-law merely reinforces the previous interim conclusions. 

C Conclusion

In the light of the foregoing, the Enlarged Board of Appeal concludes that, whatever may be the case, the case-law of the so-called " majority " boards of appeal must be applied and the so-called " minority " case-law has more to apply.   

The following is the answer to the question of law submitted to the Enlarged Board of Appeal by the President of the EPO:

1. The appeal is deemed unformed in the following cases :

(a) where the notice of appeal is lodged within the two-month period provided for in Article 108, first sentence, EPC AND the appeal fee has been paid after the expiry of that two-month period ;

(b) where the notice of appeal is lodged after the two-month period laid down in the first sentence of Article 108 EPC AND the appeal fee has been paid after the expiry of that two-month period ;

(c) where the appeal fee has been paid within the period of two months as provided for in Article 108 (1) EPC for the filing of the notice of appeal AND the notice of appeal was lodged after the expiry of the said two months.

2. For replies 1 (a) to 1 (c), the reimbursement of the appeal fee is ex officio.

3. Where the appeal fee has been paid within or after the two-month period provided for in Article 108 (1) EPC for the filing of the notice of appeal AND the notice of appeal has not been filed, the appeal fee is refunded.