T 0553/25 - The SME reduction of the appeal fee and the declaration

Key points

• "Items 3 to 5 of the Notice [OJ EPO, 2018, A5 ] require appellants who are eligible pursuant to Article 2(1), item 11 RFees together with Rule 7a(2)(a) to (d) EPC for a reduced fee for appeal, to file a declaration of eligibility. According to item 11 of the Notice, In case of an incorrect, false or missing declaration with payment of the reduced fee the notice of appeal may be deemed not to have been filed or the appeal may be considered inadmissible."
• The appeal is against a refusal of a patent application dated 05.12.2024. The Notice of appeal was filed on 31.01.2025, and the appeal fee was paid for the reduced amount on the same day.
• On 06.02.2025 (Thursday), an officer of the EPO "for the Examining Division" informs the applicant of the missing declaration, stating that it can still be filed within the appeal period (I trust it was a standard form). The applicant then requests re-establishment. The case is forwarded to the Board.
•  The Board: "Article 2(1), item 11 RFees refers to Rule 7a(2)(a) to (d) EPC, to define the persons and entities eligible to pay the reduced fee for appeal. This simply avoids listing these persons and entities in Article 2(1), item 11 RFees and has no legal implications beyond giving a definition of who is eligible for the reduced fee for appeal.

  5. There is no reference in Article 2(1), item 11 RFees to Rule 7b(1) EPC, which establishes a requirement to declare eligibility to a reduction in fees, in a different context. According to Rule 7b(1) EPC, such a declaration is required if persons or entities according to Rule 7a(2)(a) to (d) EPC wish to avail themselves of a reduced fee according to Rule 7a(1) or (3) EPC. These provisions concern fees to be paid for patent applications up to the grant of a patent. Rule 7b EPC does not apply to the payment of the reduced fee for appeal, be it directly or by way of reference. Even less can Rule 7b EPC apply to the fee for appeal by way of a mere analogy."

• "It follows from the foregoing that there is no legal basis for a prior declaration of eligibility as a prerequisite for a valid payment of the reduced fee. The right to pay the reduced fee is not comparable to a legal situation in which a declaration made within the prescribed period is a prerequisite for the right coming into existence. The presumption, in the Examining Division's communication dated 6 February 2025 (see point III. above), that the omission of a declaration according to items 3 to 5 of the Notice has the consequence that the appellant is "not eligible for the reduced fee, meaning that the full amount of the fee for appeal is due", is, therefore, wrong.

• Remarkably, the same conclusion was already arrived at in T 0225/19, T 1060/19 and J 8/18, which are not cited in the present decision, though those three earlier cases were less on point.
• As I wrote in my post on T 225/19, possibly the intent of the additional requirement in the Notice was to protect parties.  In particular, it enables the protection of legitimate expectations that the EPO will inform a party if a requirement is not complied with, the non-compliance is evident, and the party can still correct it within the relevant time limit (see, generally, G 2/97) and the protection of parties if the EPO does not warn the party (by setting a new time limit, J13/90 abd T14/89). (CLBA III.A.4). However, G 2//97, r.4.1 puts it as follows: " The protection of legitimate expectations also requires the EPO to warn the applicant of any loss of rights if such a warning can be expected in all good faith. This presupposes that the deficiency can be readily identified by the EPO within the framework of the normal handling of the case at the relevant stage of the proceedings and that the user is in a position to correct it within the time limit". If the lack of the SME declaration does not lead to a loss of rights, and the appeal fee as such is not evidently wrong, then this duty to warn the party, arguably, does not apply. I note, however, that the duty to warn is only an implementation of the principle of good faith. 
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•  The applicant is a natural person.

• "The notice of appeal complies with the requirements of Rule 99(1) EPC. Hence, the appeal is deemed to have been filed within the meaning of Article 108, second sentence, EPC."

• The statement of ground was also timely filed.

• " Since all other requirements for an admissible appeal are met, the appeal is admissible."

• The fee for the RE request is to be refunded.

• "This communication led the appellant to file a request for re-establishment although there had been no loss of rights. This filing, in turn, precluded and still precludes the Examining Division from considering interlocutory revision. The admissibility of the appeal as established by the present interlocutory decision, however, removes the reason for the remittal of the case to the present Board without consideration of interlocutory revision. Moreover, the time-limit for interlocutory revision has not yet expired. The Examining Division is, therefore, still in a position to examine whether it considers the appeal to be well founded, in which case it can still rectify its decision. For this reason, the Examining Division is invited to do so within the applicable time-limit."

• The Board notes that the period for interlocutory revision under Art. 109 still runs, and that interlocutory revision can still be granted (by the Examining  Division). 

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t250553eu1