T 2554/11 - Underpayment appeal fee

Key points

• The appellant had filed a notice of appeal in Dutch and payed a reduced appeal fee in 2011 (under then Rule 6(3) EPC), without being entitled. The opponent pointed out the underpayment in 2015. The full appeal fee was paid thereafter.
• The board follows T 595/11 and T 1037/11 and considers the appeal admissible based on the principle of legitimate expectation.
• The Board finds that " the Office had a duty to inform the appellant about the deficient fee payment within a reasonable time frame after expiry of the Article 108 EPC time limit but did not do so. The three years and some three months cannot be regarded as a reasonable time frame. [] Weighing up the legitimate interests of both sides and also that of third parties, and considering the overall circumstances of the case, the Board concludes that the original error might have had serious and inequitable consequences through the Office's failure to discover it. Therefore, it is equitable that the Office's failure is made good and the error is now allowed to be remedied, as far as possible. The Board further considers that the possibility of a real, but otherwise in itself not necessarily decisive setback for a party is more preferable than a certain decisive loss of all rights for another party. Therefore the Board accepts, through the application of the principle of protection of legitimate expectations, that the appeal fee has been timely and fully paid. Similarly, it also accepts that the English translation of the notice of appeal in Dutch was the original notice of appeal. The Board considers that in this manner overall least harm is done to all parties and in the end the appeal can be decided on its merits."

Reasons for the Decision

1. Deemed filing and admissibility of the appeal

1.1 Pursuant to Article 14(4) EPC, legal persons registered in a Contracting State having an official language other than English, French or German, may file documents which have to be filed within a time limit in an official language of that State (admissible non-EPO language). They shall, however, file a translation in an official language of the European Patent Office ('Office'). If a document is not filed in the prescribed language, or if any required translation is not filed in due time, the document shall be deemed not to have been filed.

1.2 Pursuant to Article 108 EPC, second sentence, the notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid. Article 8 RFees, first sentence stipulates that the time limit for payment shall in principle be deemed to have been observed only if the full amount of the fee has been paid in due time. Under Rule 6(3) EPC a reduced appeal fee is payable where a person files an appeal in an admissible non-EPO language under Article 14(4) EPC. In the present case, the time limit for filing the notice of appeal and thereby the time limit for paying the appeal fee expired on 5 January 2012. A reduced appeal fee pursuant to Rule 6(3) EPC was paid on 13 December 2011, and a full appeal fee was paid on 3 June 2015 (see point III, fourth paragraph above).

1.3 It is undisputed that the appellant was not entitled to use Dutch in filing documents with the EPO. It is also undisputed that the filing of the notice of appeal in Dutch did not entitle the appellant to benefit from the fee reduction. Rather, appellant argues that the EPO should recognise the appeal as valid, i. e. as deemed filed, both with regard to the used language and the fee payment, through the application of the principle of the protection of legitimate expectations.

It appears uncontested by the parties that the relevant facts of the present case concerning the deemed filing of the appeal are very similar to those underlying the decisions T 595/11 of 27 May 2015 and T 1037/11 of 29 June 2015, to which opponent 1 and the proprietor were also party and which were decided by the present Board in the same composition. Also opponent 2 was party to case T 1037/11 (albeit registered with a different name). The written reasons of both decisions were available to the public at least since November 2015. Furthermore, having received the preliminary opinion of the Board (see point VI above) none of the parties provided arguments why the Board should decide differently in the present case. The Board itself has carefully reviewed the facts and concludes that the reasoning given in the cited cases is also applicable in the present case. In particular, explicit reference is made to Nos. 1.1-1.16 of the Reasons in T 595/11 and to Nos. 1.1-1.24 of the Reasons in T 1037/11.

1.5 The differences in the length of time at various stages of the proceedings do not appear to be materially different from those in the cited cases. Here, the time limit of Article 108 EPC for filing the notice of appeal expired on 5th January 2012, while the EPO received the notice of appeal essentially three weeks earlier. Three years and four months have passed before the EPO or the respondents became aware of the deficient fee payment. Other procedural differences exist, but they do not appear to affect the issue of the deficient fee payment. Thus the Board has not identified any relevant fact that would motivate a different decision in the present case.

1.4 Therefore, following decisions T 595/11 and T 1037/11 the Board finds that the Office had a duty to inform the appellant about the deficient fee payment within a reasonable time frame after expiry of the Article 108 EPC time limit but did not do so. The three years and some three months cannot be regarded as a reasonable time frame. An objective observer relying on the duty of the Office to act within a reasonable time would have concluded that the appeal had been examined for such formalities as the appeal fee and thus also for the correct language in the notice of appeal. In this manner also the appellant could have reasonably expected that fee and language were no longer an issue which could preclude the examination of the appeal on its merits. Its expectations were also legitimate, given that it had legitimate interests in the positive outcome of the appeal and there is no indication in the file that it were or ought to have been subjectively aware of its own error or the fact that the Office also did not discover it.

1.7 Having established that legitimate expectations of the appellant arose, the Board also finds that overall less harm is done if the appeal is deemed filed. The Board is aware that this may put the respondents in a worse position, in the sense that they will be prevented from immediately achieving their obvious and legitimate goal, the failure of the appeal, in the sense that the appeal would have failed without regard to its substantive merits.

1.8 The Board considers that as far as possible, the consequences of the non-observance of the duty of the Office should not be to the detriment of any party. However, the failure of the Office to check correct fee payment and issue a warning in good time cannot be remedied here without at least one party suffering some disadvantage or detriment.

1.9 Weighing up the legitimate interests of both sides and also that of third parties, and considering the overall circumstances of the case, the Board concludes that the original error might have had serious and inequitable consequences through the Office's failure to discover it. Therefore, it is equitable that the Office's failure is made good and the error is now allowed to be remedied, as far as possible. The Board further considers that the possibility of a real, but otherwise in itself not necessarily decisive setback for a party is more preferable than a certain decisive loss of all rights for another party. Therefore the Board accepts, through the application of the principle of protection of legitimate expectations, that the appeal fee has been timely and fully paid. Similarly, it also accepts that the English translation of the notice of appeal in Dutch was the original notice of appeal. The Board considers that in this manner overall least harm is done to all parties and in the end the appeal can be decided on its merits.

1.10 The Board is satisfied that further criteria of a valid and admissible appeal are fulfilled. The Board concludes that the appeal is deemed to have been filed and admissible.