T 1678/21 - (II) Correction debit order

Key points

•  The applicant paid the appeal fee at the reduced rate without being entitled. The Board has to decide whether this can be corrected.
• G /12 held that: "37. The boards of appeal [] have developed a large body of case law on corrections under [the first sentence of Rule 139 EPC] and established the following principles: (a) The correction must introduce what was originally intended. [] (b) Where the original intention is not immediately apparent, the requester bears the burden of proof, which must be a heavy one. [] (c) The error to be remedied may be an incorrect statement or an omission. (d) The request for correction must be filed without delay."
• The present board: "it is difficult to identify the reason behind the EBA's selection of established "principles" (in point 37(a) to (c)), which restricts the principles, or preferably criteria, of the case law to essentially the three criteria of J 8/80 and adds the principle "without delay" (in point 37(d)). It comes as no surprise, therefore, that boards have left the question of whether the list of "principles" for accepting a request under Rule 139, first sentence, EPC is exhaustive an open one"
• "this board is of the opinion that point 37 in G 1/12 is indeterminate and thus of limited avail in assessing whether a request for correction under Rule 139 EPC can be granted."
• The present Board: "The exhaustive criteria to assess Rule 139 EPC are "principles" (a) to (c) of G 1/12, [] complemented by criterion (d) balancing of the public interest in legal certainty with the interest of the party requesting correction, with the factors (i.e. sub-criteria of this criterion) relevant to the specific case."
• "The umbrella notion of balancing interests gives meaning to the term "may" in the context of Rule 139, first sentence, EPC: if, upon balancing interests, the interests of the party requesting correction weigh more heavily than the public interest, then the request for correction must be granted and thus the deciding body has no discretion in this regard. This board is of the view that the use in the case law of the term ["discretion"] in the context of interpreting the term "may" in Rule 139 EPC is merely imprecise and this board's approach does not contravene this use."
• "The above discussion presupposed that correction of a debit order under Rule 139 EPC was available at all, which this board accepts for the following reasons. This board considers that the contrary view expressed in T 170/83 and T 152/85 is not persuasive"
• "The board [] accepts that it was the professional representative's intention to pay the regular and not the reduced appeal fee (cf. point XIII. above, under the heading "Re requirement that the correction must introduce what was originally intended"). The board agrees that this intention "was immediately apparent from the information known to the [applicant/appellant's] professional representative, as set out in [his] declaration"
• As to the Board's 'new' fourth factor: " the public inspecting the EPO's electronic file would have gathered that the status of the appeal as regards fee payment was in the balance given that, in the wake of the communication [of the examining division regarding the appeal fee payment] and its cancellation no payment form debiting any appeal fee was included in the electronic file. "
• " there was no conceivable adverse impact on the public having access to the electronic file, the applicant's/appellant's interests logically prevail and no balancing of interests is required. "
• "The same result applies to the criterion "no substantial delay of the proceedings". The decision under appeal was handed down on 6 July 2021, and the appeal was filed on 6 September 2021, the request for correction on 24 November 2021. Given that substantive examination of the appeal would usually not start before at least one year after the appeal was filed, allowing the correction would cause no delay of the proceedings, let alone a substantial one. In this respect, the interests of the public are therefore not adversely affected, and no balancing is possible either."
• The Board's reasoning is based on an extensive analysis and review of the case law.

The interested reader is referred to the PDF file of the decision:

https://www.epo.org/law-practice/case-law-appeals/pdf/t211678eu1.pdf 

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/t211678eu1.html