T 1609/20 - The covid extension for renewal fees

 Key points

• There is more in this decision than meets the eye.
• “During the appeal proceedings the European Patent Office issued a noting of loss of rights pursuant to Rule 112(1) EPC stating that the renewal fee for the eleventh year and the additional fee have not been paid in due time. The applicant / appellant requested to confirm that the renewal fee for the eleventh year and the additional fee were paid in due time.”
• “According to Rule 112(2) EPC if the party concerned considers that the finding of the European Patent Office is inaccurate, it may, within two months of the communication under Rule 112(1) EPC, apply for a decision on the matter. The European Patent Office shall take such decision only if it does not share the opinion of the party requesting it; otherwise, it shall inform that party. In this case the Board shares its opinion.”
• First of all, the Notice of loss of rights of 18.11.2020 was issued “for the Examining Division” and the appellant expressed surprise to receive a preliminary opinion of the Board on the matter.
• The Board is competent to decide on all matters pertaining to the application during the appeal, the so-called devolutive effect of appeal, and hence also on the renewal fee. However, the EPO's computer systems sending out the Notice of loss of rights are not programmed accordingly. 
• The appellant argued that all periods were extended until 2 June under the covid measures (OJ 2020 A60) and that the 6 month period for paying the renewal fee with surcharge, therefore, expired on 2 December 2020. OJ 2020 A75 was also cited.
• The Board's preliminary opinion was entirely negative: the deferred due date for the renewal fee did not change the start or end of the 6-month period for paying with surcharge, in line with J 4/91, and no legitimate expectations either.
• Because the present decision is empty of substantive reasons, we don't know why the Board changed its mind. I note that the EPO had sent out the Notice of loss of rights in a number of parallel applications of the same applicant, at least (p.1 of this letter) so presumably it was the EPO's position that the period for payment with surcharge was not postponed. But the present Board apparently prefers to not explain what happened and why the EPO's position was wrong. 
• Either J 4/91 is abandoned in the present decision (and an extension under Rule 134(2) does shift the due date / starting date for the 6-month period even if the extension is very long), or the EPO's Covid-related notices are not completely legally sound (see J10/20) and there is some hand waving under Article 125 EPC in the present decision, but the present decision obscures the Board's precise reasoning. 
• Typically high quality judgments are characterized by their clear reasoning, not by obscuring the legal reasoning.

T 1609/20

https://www.epo.org/law-practice/case-law-appeals/recent/t201609eu1.html

Summary of Facts and Submissions

During the appeal proceedings the European Patent Office issued a noting of loss of rights pursuant to Rule 112(1) EPC stating that the renewal fee for the eleventh year and the additional fee have not been paid in due time.

The applicant / appellant requested to confirm that the renewal fee for the eleventh year and the additional fee were paid in due time.

As a auxiliary measure it requested re-establishment in the time-limit to pay these fees and paid the fee for re-establishment. Finally it requested that fee for re-establishment be reimbursed if the renewal fee and the additional fee were considered to be paid in due time.

Reasons for the Decision

According to Rule 112(2) EPC if the party concerned considers that the finding of the European Patent Office is inaccurate, it may, within two months of the communication under Rule 112(1) EPC, apply for a decision on the matter. The European Patent Office shall take such decision only if it does not share the opinion of the party requesting it; otherwise, it shall inform that party. In this case the Board shares its opinion.

Since a decision on re-establishment was not to be taken, the fee for re-establishment has to be reimbursed.

Order

For these reasons it is decided that:

1. The appellant is informed that the renewal fee

for the eleventh year and the additional fee were

paid in due time.

2. The fee for re-establishment is reimbursed.