J 0013/19 - Appeal fee and further processing under Rule 70a(2)

Key points

• The EPO's practice is that if you do not file a timely response under Rule 70a(2) EPC, you have to pay two further processing fees, namely also for the missing indication of the intention to proceed further under Rule 70(2).
• A European patent attorney decided to bring the matter to the Boards. The Board's preliminary opinion was to confirm established practice, based on J 26/95. 
• The attorney started by requesting a decision under Rule 112(2) in reply to the Notice of loss of rights and, on an auxiliary basis,  requested a refund of one of the two paid further processing fees.
• The Examining Division refused these requests with a separately appealable interlocutory decision taken by a formalities officer on behalf of the Examining Division.
• The applicant then appeals. The applicant however pays the appeal fee at the reduced rate, though it is not entitled to the reduction. 
• The appellant did not request a correction of the debit order.
• The appeal is rejected as deemed to not have been filed.
• The appeal fee is refunded.
• The applicant hence got a preliminary opinion of the Board on the matter for free, in the sense of incurring no official fees. 
• A further interesting aspect is that the grant proceedings continued in parallel with the appeal because the appeal concerns only the refund of a fee. By the same token, when the application was deemed to be withdrawn, the appeal continued. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/j190013du1.html

Machine translation

Reasons for decision

1. The appellant has withdrawn its alternative request for oral proceedings (Article 116(1) EPC) (see point VII above). The appeal case is ready for a decision on the basis of the decision under appeal to be reviewed and the available written submissions of the appellant, while respecting its rights under Articles 113 and 116 EPC (Article 15(3) RPBA 2020).

Therefore, in the present case, the decision can be taken in writing without an oral hearing in accordance with Article 12 (8) RPBA 2020.

2. Effect of the fiction of withdrawal of the registration

The present patent application is deemed to be withdrawn (see point IV above).

If, after an admissible appeal has been lodged against the decision to refuse that application, a European patent application is finally deemed to be withdrawn, the appeal is normally to be regarded as settled, since there is no possibility of a European patent being granted for the application. However, if, as in the present case, the sole purpose of the appeal is to have the refusal of the request for reimbursement of one of the two further processing fees paid justified, the appeal cannot be dealt with in that way. In this case, the complainant has a legitimate interest in obtaining a decision on the merits of her complaint.

3. Appeal Fee

According to Article 108, first sentence, EPC, the appeal must be filed within two months of notification of the contested decision, in accordance with the Implementing Regulations. An appeal is not deemed to have been filed until the appeal fee has been paid (Article 108, second sentence, EPC). In principle, the payment deadline is only met if the full amount of the fee has been paid on time (Article 8 sentence 1 of the fee schedule (GebO)). Under certain circumstances, a slight shortfall can be disregarded (Article 8 sentence 4 RFees). If the appeal fee is only paid after the two-month period for filing the notice of appeal has expired, the appeal is deemed not to have been filed (cf. G 1/18, OJ EPO 2020, A26).

4. Eligibility to Pay the Reduced Appeal Fee

Pursuant to Article 1(4) of the decision of the Administrative Council of December 13, 2017, CA/D 17/17 (OJ EPO 2018, A4), Article 2(1)(11) RFees was amended so that the appeal fee for one of a natural person or an entity referred to in Rules 6(4) and (5) EPC (a small or medium-sized enterprise (SME), a non-profit organization or a university or a public research organisation) for EUR 1 880 and for a complaint lodged by another entity was set at EUR 2 255. This applied to complaints filed from April 1, 2018 (Article 3 (4) of decision CA/D 17/17) and before April 1, 2020 (see Article 1 and Article 4 of the decision of the Administrative Council of December 12, 2019 , CA/D 12/19 (OJ EPO 2020, A3)).

4.1 Statement according to Nos. 3 and 4 of the EPO Notice of 18 December 2017 on the reduced appeal fee (OJ EPO 2018, A5; hereinafter "Notice")

According to point 3 of the communication, appellants wishing to claim the reduced appeal fee must expressly declare that they are a unit within the meaning of Rule 6(4) EPC, which is the only relevant factor in the present case. According to point 4 of the communication, the statement must be filed at the latest by the time the reduced appeal fee is paid. According to paragraph 11 of the Notice, if the reduced fee is paid without such an explanation, the appeal may be deemed not to have been filed or be inadmissible.

4.2 In the present case, no declaration pursuant to Nos. 3 and 4 of the communication was available when the appeal fee was paid. However, the board agrees with decision T 225/19 that an appeal is not deemed not to have been filed simply because an express statement provided for in points 3 and 4 of the communication, a person or entity within the meaning of Rule 6(4) EPC has not been submitted at the time the reduced appeal fee was paid by means of a debit order (see T 225/19, points 2.4 to 2.7 of the reasons for the decision with further evidence).

4.3 Even if a declaration pursuant to nos. 3 and 4 of the communication cannot be requested when paying the reduced appeal fee, the board is nevertheless authorized and obliged to meet the requirements for the admissibility and effective filing of the present appeal at every stage of the procedure, i.e. also after the appeal period has expired. This power also includes the question of whether the appellant satisfies the requirements of Rule 6(4) EPC in the event of payment of the reduced appeal fee under Article 2(1)(11) RFees. It is in line with the practice of the boards of appeal to accept a declaration and supporting documents proving the requirements under Rule 6(4) EPC even after the appeal period has expired in the course of the appeal proceedings (cf. e.g. T 3023/18,

Therefore, in its notification pursuant to Article 15 (1) RPBA 2020, the Chamber asked the appellant to submit corresponding proof within a two-month period.

4.4 The appellant then stated in its reply that it was not an entity under Rule 6(4)(a),(5) EPC (see point VI above).

Consequently, the appellant was not entitled to pay the reduced appeal fee of EUR 1 880 and should have paid the full appeal fee of EUR 2 255.

5. If only the reduced but not the required full appeal fee has been paid in due time, then the payment period under Article 108, first and second sentences, EPC is generally deemed not to have been observed (Article 8, first sentence, RFees). Since, in the present case, only the reduced appeal fee was paid, which was unjustified, instead of the full appeal fee, the appeal fee is deemed not to have been paid within the time limit and the appeal under Article 108, second sentence, EPC is therefore deemed not to have been filed (G 1/18, supra, conclusion 1a and grounds for the opinion, point B .IV.1, last paragraph), unless this legal consequence can be averted under certain circumstances. However, this is not the case here for the following reasons:

5.1 In the present case, the six-month transitional period during which the failure to pay the appeal fee too little could be remedied by subsequent payment of the difference (Article 3(5) of Decision of the Administrative Council CA/D 17/17) at the time of filing the present complaint has already expired.

5.2 The difference in the amount of EUR 375 is not a small amount within the meaning of Article 8 sentence 4 RFees.

5.3 The appellant did not rely on decision T 1474/19 or any other case law, nor filed a request for correction under Rule 139 EPC. Furthermore, she did not submit any evidence within the two-month period set by the Board to show that the current account had sufficient funds on the day the EPO received the debit order.

6. It follows from the above that the appellant paid an appeal fee that was too low within the time limit under Article 108, first sentence, EPC and therefore did not pay it in time, and that the appeal is therefore deemed not to have been filed. In these circumstances, the appeal fee of EUR 1 880 should be refunded (Article 8, second sentence, RFees).

7. Since the appeal is deemed not to have been filed, the decision under appeal cannot be reviewed by the Board.

decision formula

For these reasons it is decided:

1. The complainant's complaint is deemed not to exist

inserted.

2. The reimbursement of the appeal fee in the amount of

1 880 EUR is arranged.