T 2053/20 - A remedy for the opponent/appellant

Key points

• The opponent pays the appeal fee using automatic debit order...
• Question for EQE candidates: what goes wrong?
• AAD 3.2 excludes "all fees not payable by the applicant or patent proprietor", meaning "all fees payable by a party other than the applicant or patent proprietor".
• The fee payment is invalid.
• Another question for EQE candidates: what are the available remedies?
• The Board, in translation: "It is undisputed that the appellant expressed its intention to pay the appeal fee in the notice of appeal dated 18 December 2020 and the accompanying letter. The methods used to do so, namely the automatic debit order on the one hand and the direct debit from the current account, which was not issued in the correct electronic format, on the other hand, were not permitted under the provisions of the ADA and its annexes for payment of the appeal fee. This would certainly have been apparent to the appellant if she had studied the ADA carefully. However, the corresponding notification from the EPO regarding the non-execution of the payment request, as mentioned above and actually provided for in the ADA, was not sent. Such a notification might have led to the timely payment of the appeal fee, since the corresponding two-month period did not expire until 7 January 2021, 19 days after receipt of the notice of appeal."
• "Moreover, in previous cases the EPO has accepted without comment the payment of fees by the appellant by invoking the automatic debiting procedure and debited the appeal fee from the appellant's deposit account even in situations where the appellant acted as opponent, even though this was not in accordance with the applicable rules. The appellant was also not informed of any change in the EPO's practice in this regard."
• "The board therefore grants the opponent protection of legitimate expectations (EPO case law, 10th edition 2022, III.A). ["Die Kammer gewährt daher der Einsprechenden Vertrauensschutz"]
  In the absence of any communication to the contrary from the EPO, the appellant could assume under the circumstances that its payment instructions for debiting the appeal fee made on 18 December 2020 had been accepted and executed. It only became aware that this was not the case with the board's decision of 21 September 2023. The appeal fee was then paid within the time limit set by the board."
• As a comment, the Board here applies the rule that "In accordance with the principle of good faith, the EPO is obliged to warn users of the European patent system of omissions or errors which could lead to a final loss of rights. A warning would always be necessary when one could be expected in all good faith (G 2/97)" together with the rule that "The Legal Board held in J 13/90 (OJ 1994, 456) that if the applicant could expect to receive a communication warning him of an impending loss of rights, but that communication was not issued in due time, the EPO must set a new period allowing the applicant to remedy the deficiency and perform the omitted procedural act in due time (see also T 14/89)."
• The CLBA discusses these rules in III.A.4, part of chapter III.A "The principle of the protection of legitimate expectations": "The protection of the legitimate expectations of users of the European patent system has two main principles. [1] It requires that the user must not suffer a disadvantage as a result of having relied on erroneous information or a misleading communication received from the EPO (see in this chapter III.A.3.). [2] It also requires the EPO to warn the applicant of any loss of right if such a warning can be expected in good faith. This presupposes that the deficiency can be readily identified by the EPO (see in this chapter III.A.4.)." The requirements for both rules are quite different. 
• Furthermore, in the case at hand, the instruction "turning on" the automatic debiting was given in the Form accompanying the Notice of appeal. 
• In the case at hand, the opponent had paid the appeal fee after receipt of a Communication of the Board under Rule 100(2) EPC, which pointed out that the appeal fee had not been paid (the deposit account of the opponent was not charged by the EPO). The Board therein did not set a time limit for paying the appeal fee under J13/90, but the opponent/appellant paid the fee with a debit order in the period set for replying to the Communication. 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t202053du1

1. Filing of the appeal (Article 108 EPC)

1.1 According to Article 108 EPC, the appeal must be filed within two months of notification of the decision. The appeal is not deemed to have been filed until the appeal fee has been paid. Failure to pay the appeal fee within the time limit results in the appeal being deemed not to have been filed, G1/18.

1.2 The opponent filed an appeal on 18 December 2020 and at the same time authorised the EPO to debit the appeal fee from its current account. In the electronic cover letter, also received on 18 December 2020, an automatic debit order was issued for this purpose and reference was made to the rules on the automatic debit procedure.

1.3 The rules on the automatic debit procedure (ADP) are set out in an appendix to the rules on current accounts (VLK). The versions of these rules valid at the time the appeal is filed can be found in the special edition 4/2019 of the Official Journal, on page 10ff. for the ADP and on page 22ff. for the ADP. The automatic debit procedure is not available for all fee payments. In particular, the automatic debit procedure is only available for payments made by the applicant or patent holder (section 1.3 ADP 2019). The list of prohibited types of fees includes "all fees not payable by the applicant or patent holder, in particular the opposition fee" (section 3.2b).

1.4 The payment of the appeal fee via the automatic debit procedure from the current account was therefore not permitted for the appellant; the fee was not debited from the appellant's current account.

1.5 In the notice of appeal itself, the opponent authorised the EPO to debit the appeal fee from its current account in order to meet the requirements of Article 108 EPC, second sentence. The notice of appeal itself did not refer to the provisions on the automatic debit procedure (AAD), but only to a debit from the current account.

1.6 The provisions on deposit accounts referred to above, in the version applicable at the time the appeal was filed, stipulate that debit orders from the deposit account must be made using a prescribed electronically processable format (point 5.1.2), which was not done in the present case. Debit orders submitted by other means are invalid and will not be processed. The EPO will inform the party of this as a service (point 5.1.3). For missed deadlines arising from this, reference is made only to the remedies generally available under the EPC, point 5.4.2.

1.7 Since the authorization to debit the appeal fee in the appeal was not made in the electronic format prescribed in the VLK, the appeal fee was not debited in this way either.

1.8 As a result, the appeal fee was not debited within the two-month period prescribed in Article 108 EPC. The EPO did not send the appellant a notification to this effect, as provided for in the ADA as a service, as mentioned above.

1.9 These facts were communicated to the parties, in particular the appellant, in a communication under Rule 100(2) EPC issued by the Board on 21 September 2023. That communication set a four-month period to submit observations.

1.10 On 18 January 2024, i.e. within the deadline set in the communication, the appellant paid the appeal fee in the correct form by submitting an electronic debit order from the current account. The appellant stated that it had only become aware of the error in the original reference to the automatic debit procedure or in the debit order issued from the current account when it received the board's communication, as the EPO had failed to notify it accordingly. For this reason, it had also failed to notice that the appeal fee had not been debited from the current account and thus had not been paid. However, this had now been done within the deadline set by the board, so that the appeal fee must be considered to have been paid on 18 December 2020.

1.11 The Respondent has neither put forward any arguments nor made any submissions on this issue.

1.12 The board concludes that the payment of the appeal fee made on 18 January 2024 was made with effect from 18 December 2020. Therefore, the appeal fee was paid within the two-month time limit provided for in Article 108 EPC after notification of the contested decision.

1.12.1 It is undisputed that the appellant expressed its intention to pay the appeal fee in the notice of appeal dated 18 December 2020 and the accompanying letter. The methods used to do so, namely the automatic debit order on the one hand and the direct debit from the current account, which was not issued in the correct electronic format, on the other hand, were not permitted under the provisions of the ADA and its annexes for payment of the appeal fee. This would certainly have been apparent to the appellant if she had studied the ADA carefully. However, the corresponding notification from the EPO regarding the non-execution of the payment request, as mentioned above and actually provided for in the ADA, was not sent. Such a notification might have led to the timely payment of the appeal fee, since the corresponding two-month period did not expire until 7 January 2021, 19 days after receipt of the notice of appeal.

1.12.2 Moreover, in previous cases the EPO has accepted without comment the payment of fees by the appellant by invoking the automatic debiting procedure and debited the appeal fee from the appellant's deposit account even in situations where the appellant acted as opponent, even though this was not in accordance with the applicable rules. The appellant was also not informed of any change in the EPO's practice in this regard.

1.12.3 The board therefore grants the opponent legitimate expectations (EPO case law, 10th edition 2022, III.A). In the absence of any communication to the contrary from the EPO, the appellant could assume under the circumstances that its payment instructions for debiting the appeal fee made on 18 December 2020 had been accepted and executed. It only became aware that this was not the case with the board's decision of 21 September 2023. The appeal fee was then paid within the time limit set by the board.

1.13 The appeal was therefore filed under Article 108 EPC in due form and within the time limit.

2. The appeal is also admissible in its entirety. Neither the respondent nor the board have raised any other obstacles, apart from the failure to pay the appeal fee on time, which could lead to the appeal not being admitted under Rule 101 EPC.