T 1214/15 - More about the appeal fee

 Key points

• To end the year in style, yet another decision about the appeal fee refund rules of Rule 103.
• Both the patentee and the opponent appeal. 
• “ On 4 November 2020, the [opponent] withdrew the appeal, but remained party to the appeal proceedings as of right in accordance with Article 107, second sentence, EPC.”
• The Board surprisingly does not order a refund of the appeal fee at 25% to the opponent under Rule 103(4)(a) and does not discuss that provision at all. 
• If readers can help me with this, I would be grateful.
• Comment 25.03.2021: there was a 50% refund of the appeal fee, link.
• The Board: “The [opponent] requested reimbursement of the appeal fee based on an alleged procedural violation (Rule 103(1)(a) EPC), arguing that the opposition division failed to discuss, either during the oral proceedings or in the decision under appeal, the line of argument on inventive step put forward in the notice of opposition”
• The Board: “Although the respondent has withdrawn his appeal, reimbursement may still be considered ex officio by the board in accordance with Article 114(1) EPC, if deemed equitable by reason of a substantial procedural violation.”
• The Board then analyses whether there had been a substantial procedural violation, finding none.
• However, Rule 103(1)(a) requires first of all “where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation”. It is not at all cleary to me how Rule 103(1)(a) can be relevant if the opponent withdraws the appeal: I would say that a withdrawn appeal is hardly ‘allowable’.

EPO T 1214/15 -

https://www.epo.org/law-practice/case-law-appeals/recent/t151214eu1.html

Request for reimbursement of the appeal fee


18. The respondent requested reimbursement of the appeal fee based on an alleged procedural violation (Rule 103(1)(a) EPC), arguing that the opposition division failed to discuss, either during the oral proceedings or in the decision under appeal, the line of argument on inventive step put forward in the notice of opposition, based on document (1) as the closest state of the art (see section XIV above).

19. Although the respondent has withdrawn his appeal, reimbursement may still be considered ex officio by the board in accordance with Article 114(1) EPC, if deemed equitable by reason of a substantial procedural violation.

20. In the communication of 2 October 2014 attached to the summons to oral proceedings in opposition proceedings, the opposition division took account of all the lines of argument on inventive step and, inter alia, expressed the view that, starting from document (1) as the closest state of the art and in view of document (9), the method of claim 1 according to the main request was not obvious to a person skilled in the art. Even though the respondent reiterated its line of argument based on document (1) in his reply of 27 January 2015, it appears from the minutes of the oral proceedings before the opposition division posted on 10 April 2015 that the sole line of argument brought forward by the respondent and discussed at the oral proceedings was based on document (3) as the closest state of the art in combination with document (9). This has never been disputed.

21. In view of the circumstances of the present case, the board is not persuaded that the alleged procedural violation occurred. If the respondent wished his objection of lack of inventive step based on documents (1) and (9) to be discussed at the oral proceedings and decided upon by the opposition division, it was to him to put forward the objection at the oral proceedings, or at least refer to its written submissions in this respect, and indicate that they were maintained. Failing that, the opposition division had to assume that the line of argument based on document (1) as the closest state of the art had been abandoned.

22. In the absence of a substantial procedural violation, the respondent's request for reimbursement of the appeal fee cannot be granted.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division with the order to maintain the patent in amended form on the basis of claims 1 to 15 according to the main request filed on 12 March 2014 and, if required, a description to be adapted thereto.