T 0777/15 - Appeal fee refund rules

 Key points

• The Board clarifies that the one-month period under Rule 103(4)(c) EPC can be extended under Rule 134(2) and (4) EPC and was extended by the Covid-19 notice.
• The Board clarifies that an appellant must withdraw (or abandon) it's own request for oral proceedings and does not benefit from another appellant withdrawing their request for oral proceedings (Rule 103(4)(c) does not say so because it mentions "if any request for oral proceedings is withdrawn").
• The Board clarifies that it is not enough for the partial refund if an auxiliary request for oral proceedings of an appellant becomes ineffective because the Board can accede to that party's main request (i.e. revocation of the patent as main request of the appellant-opponent) without oral proceedings (i.e. because the patentee as respondent disapproves the text of the patent).

T 0777/15 

https://www.epo.org/law-practice/case-law-appeals/recent/t150777eu1.html

3. Partial reimbursement of appeal fees

3.1 Pursuant to Rule 103(4)(c) EPC, as in force since 1 April 2020, the appeal fee shall be reimbursed at 25% if any request for oral proceedings is withdrawn within one month of notification of the communication issued by the board of appeal in preparation for the oral proceedings, and no oral proceedings take place. The amended provision applies to any pending appeal pursuant to Article 2(2) of the Decision of the Administrative Council of 12 December 2019 amending Rule 103 EPC (CA/D 14/19, see OJ EPO 2020, A5), thus also to the present appeal case.

3.2 Appellant-opponent 2 withdrew the request for oral proceedings on 11 May 2020 whereas the board's communication was issued on 20 March 2020. However, in view of the Notice from the EPO dated 1 May 2020 concerning the disruption due to the COVID-19 outbreak (OJ EPO 2020, A60, updating the earlier Notices dated 15 March 2020 and 30 March 2020), and Rule 134(2) and (4) EPC, the board concludes that the withdrawal occurred in due time. The requirements for reimbursement of 25% of appellant-opponent 2's appeal fee pursuant to Rule 103(4)(c) EPC are therefore met.

4. No reimbursement of the appeal fees of appellant-opponent 3 and 5 is to be ordered.

4.1 The board construes Rule 103(4)(c) EPC to provide an incentive to a party that had initially requested oral proceedings before the board to reconsider any such request at a later stage of the appeal proceedings and, in case that the party abandons this request, to provide a reward by way of a partial reimbursement of this party's appeal fee. Accordingly, appellant-opponent 5, an appealing party not having requested oral proceedings in the proceedings before the board, does not benefit from another party's withdrawal of the request for oral proceedings. Rule 103(4)(c) EPC does thus not apply in relation to appellant-opponent 5.

4.2 Appellant-opponent 3 requested oral proceedings on the condition that the board intends to reach a decision other than setting aside the decision under appeal and revoking the patent in its entirety. This condition is not fulfilled since the outcome of the present case is as requested by the appellant-opponent 3 and, hence, appellant-opponent 3's request for oral proceedings has not become procedurally relevant. Moreover, appellant-opponent 3 has neither withdrawn its request for oral proceedings nor filed any statement which could be interpreted as a withdrawal of its request for oral proceedings.

Order

For these reasons it is decided that:

1. The appeal of appellant-opponent 5 is rejected as inadmissible.

2. The decision under appeal is set aside.

3. The patent is revoked.

4. The appeal fee of appellant-opponent 2 is reimbursed at 25% pursuant to Rule 103(4)(c) EPC.