J 0007/18 - Appeal on further processing

Key point

• In this examination appeal, no Statement of grounds was filed (against a decision of the ED to refuse further processing) and the Registry informed the appellant about this and requested observations to be filed within two months. The appellant withdrew the appeal after the expiry of the period. The Board decides that in such a case, there is no ground for a refund of 50% of the appeal fee. 
• The file is interesting. The Rule 112(1) Notice of loss of rights was issued automatically (presumably by a formalities officer) for failure to file a response to an Art.94(3) Communication. Further processing was requested in 2015, the fee paid and the omitted act was completed but after the expiry of the time limit. An invitation to file comments was issued. The applicant maintained the request for oral proceedings. Oral proceedings were held before the ED, the applicant did not appear. The decision under R112(2) was taken by the ED (not a formalities officer). A notice of appeal was filed early in 2018. 
• The Registry issued the Communication, as allowed under the decision of the Presidium (OJ 2018 sp1 VI.2). Hence, it is a communication under Rule 103(2)(b).

Summary of Facts and Submissions

I. The appeal is directed against the decision of the Examining Division posted on 30 November 2017.

II. The appellant filed a notice of appeal on 12 February 2018 and paid the appeal fee on the same date.

III. By communication of 13 June 2018, received by the appellant, the Registry of the Board informed the appellant that it appeared from the file that the written statement of grounds of appeal had not been filed, and that it was therefore to be expected that the appeal would be rejected as inadmissible pursuant to Article 108, third sentence, EPC in conjunction with Rule 101(1) EPC. The appellant was informed that any observations had to be filed within two months of notification of the communication.

IV. By letter dated 3 September 2018 the appellant withdrew its appeal and requested reimbursement of 50% of the appeal fee.

V. By communication dated 21 September 2018 the Board informed the appellant of its preliminary opinion that the request for reimbursement of part of the appeal fee could not be allowed and that it did not intend to summon the appellant to oral proceedings. It asked the appellant to confirm whether it maintained the request for reimbursement of part of the appeal fee in view of the communication and informed the appellant that any submissions or requests had to be made within two months of notification of the communication.

VI. No reply has been received.

Reasons for the Decision

1. Rule 103(2)(b) EPC determines the reimbursement of the appeal fee in cases where the Board has issued a communication inviting the appellant to file observations. Pursuant to this rule 50% of the appeal fee shall be reimbursed if the appeal is withdrawn before expiry of the period for filing observations.

2. In the present case, the communication dated 13 June 2018 was issued by the Registry. It constitutes a communication issued by the Board as the Registry executed the task of issuing the communication on behalf of the Board (Article 6(2) RPBA in conjunction with Article 2(1) of the Decision of the Presidium of the Boards of Appeal dated 12 November 2007 concerning the transfer of functions to the Registrars of the Boards of Appeal). In this communication the appellant was invited to file observations within two months of notification of the communication. This period expired on 23 August 2018. The appellant withdrew the appeal on 3 September 2018 and thus after the expiry of the period for filing observations. There is thus no legal basis for a reimbursement of 50% of the appeal fee and the request for reimbursement of the appeal fee cannot be allowed.

Order

For these reasons it is decided that:

The request for reimbursement of the appeal fee is refused.