T 0130/19 - Correction of error appeal fee debit order

Key points

• The proprietor files an appeal using Form 1038E, specifying the appeal fee in the correct amount, but leaving the payment method as "Not specified". (The EPO Online Filing Software allowed for this).
• "due to the erroneous indication "not specified" in the "Method of payment" box on Form 1038E, the debit order for the payment of the appeal fee was not carried out before expiry of that time limit."
• " With letter of 7 February 2019 the appellant requested a correction under Rule 139, first sentence, EPC of Form 1038E submitted with the notice of appeal in the manner specified in above point VI."
• "It is undisputed that the requested correction fulfills the conditions set out in point 37 of the Reasons for decision G 1/12 (OJ EPO 2014, A114). The Board refers to decision T 0317/19 of 22 October 2019 which relies upon decision G 1/12 in which a correction under Rule 139, first sentence, EPC in a similar factual situation concerning an appeal in an ex parte case was allowed. It is in particular referred to the reasoning provided in points 1 to 3 of said decision in which the relevant legal provisions and case law are discussed. The Board fails to discern why the reasoning provided in T 0317/19 regarding the applicability of Rule 139 EPC to a correction of an erroneously filled out payment form in an ex parte case should not apply for an appeal in an inter partes case, since the ruling of G 1/12 upon which it is relied in T 0317/19 clearly applies to both ex parte and inter partes cases. "
• "In the present case, the indication "011 Appeal fee for an appeal filed by an entity other than those referred to in Rule 6(4) and (5) EPC" in original Form 1038E shows that the intention of the patent proprietor was to pay the appeal fee at the same time as filing the notice of appeal. The request for correction was filed on the day that the appellant was informed by a telephone call from the registrar that the payment method had not been specified, i.e. without delay."
• "The Board concludes therefore that the request for correction of Form 1038E is to be allowed and that the appeal is therefore deemed to have been timely filed."

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/t190130eu1.html

Reasons for the Decision

Request for correction of Form 1038 under Rule 139 EPC

1. The appellant filed a notice of appeal on 14 January 2019, i.e. within the two-month time limit prescribed in Article 108, first sentence, EPC, which ended on 15 January 2019 (Rules 126(2), 131(2) and (4) EPC). However, due to the erroneous indication "not specified" in the "Method of payment" box on Form 1038E, the debit order for the payment of the appeal fee was not carried out before expiry of that time limit.

2. With letter of 7 February 2019 the appellant requested a correction under Rule 139, first sentence, EPC of Form 1038E submitted with the notice of appeal in the manner specified in above point VI.

It is undisputed that the requested correction fulfills the conditions set out in point 37 of the Reasons for decision G 1/12 (OJ EPO 2014, A114). The Board refers to decision T 0317/19 of 22 October 2019 which relies upon decision G 1/12 in which a correction under Rule 139, first sentence, EPC in a similar factual situation concerning an appeal in an ex parte case was allowed. It is in particular referred to the reasoning provided in points 1 to 3 of said decision in which the relevant legal provisions and case law are discussed. The Board fails to discern why the reasoning provided in T 0317/19 regarding the applicability of Rule 139 EPC to a correction of an erroneously filled out payment form in an ex parte case should not apply for an appeal in an inter partes case, since the ruling of G 1/12 upon which it is relied in T 0317/19 clearly applies to both ex parte and inter partes cases. In section 2.4.4 of the reasons of decision T 0317/19 the deciding board did not say that they would have decided otherwise if it were an inter partes case, but left that question open. It can be also referred to decision T 3098/19 of 14 October 2022 in which a correction of the amount of appeal fee pursuant to Rule 139 EPC was authorized in an inter partes case in application of decision G 1/12.

In the present case, the indication "011 Appeal fee for an appeal filed by an entity other than those referred to in Rule 6(4) and (5) EPC" in original Form 1038E shows that the intention of the patent proprietor was to pay the appeal fee at the same time as filing the notice of appeal. The request for correction was filed on the day that the appellant was informed by a telephone call from the registrar that the payment method had not been specified, i.e. without delay.

3. Referring to decisions T 0637/21 of 18 February 2022, T 2422/18 of 6 October 2020 and T 1060/19 of 11 February 2020 the respondent submitted that a simple error concerning the payment of the appeal fee was not always excused by the Boards. According to the respondent legal certainty as to whether appeal proceedings were pending should take precedence in inter parte proceedings. These decisions concern the underpayment of the appeal fee within the prescribed time limit as a consequence of having erroneously paid the reduced appeal fee. Although these decisions therefore are concerned with the question whether the appeal was deemed to have been filed, they do not relate to cases in which a correction under Rule 139 EPC of the erroneous indication concerning the payment of the appeal fee had been requested. These decisions are therefore not relevant for the present case. In case T 0444/20 of 22 January 2021 a request of correction under Rule 139 EPC was allowed in a case of such underpayment.

4. The Board concludes therefore that the request for correction of Form 1038E is to be allowed and that the appeal is therefore deemed to have been timely filed.

5. Under these circumstances, there is no need to decide on the request for re-establishment of rights under Article 122 EPC. The fee for re-establishment of rights is therefore to be reimbursed as the request is redundant (Case Law of the Boards of Appeal (CLB), 10th edition 2022, III.E.9.2).

6. Furthermore, the request that the letter of 5 April 2019 concerning re-establishment of rights and its attachments be excluded from file inspection, which request was not opposed by the respondent, is allowed as their inspection would not serve the purpose of informing the public about the European patent (Rule 144(d) EPC).