J 0008/18 - SME appeal fee and restoration priority

Key points

• An appeal against a decision of the Receiving  Section is filed by a Chinese SME. The Legal Board explains, firstly, that this small or medium-sized enterprise is entitled to the reduced appeal fee.
• "whereas the reduction in the filing fee and the examination fee is only available for natural persons and the above-mentioned entities if they have their residence or principal place of business in a Contracting State having a language other than English, German or French as an official language, and nationals of such state who are resident abroad, the applicable amount of the appeal fee is not dependent on the restrictions in Article 14(4) EPC, and also not on the language in which the notice of appeal is filed." 
• A second question what is the meaning of the self-declaration that the appellant is an SME. The EPO Notice OJ 2018, A5 states that " Appellants wishing to benefit from the reduced fee for appeal must expressly declare that they are a natural person or an entity covered by Rule 6(4) EPC".
• The Legal Board observes firstly that "The Decision of the Administrative Council [OJ 2018, A4; i.e. amended Rfees2)(1)11] does however not refer to Rule 6(6) EPC, wherein such declaration is mentioned, either." The Board emphasizes that "the Board is in no way bound by Notices from the EPO concerning the application or interpretation of legal provisions". 
• As a comment, I think the Board expresses here that the purported requirement of a declaration of OJ 2018 A15 simply lacks any legal basis and simply does not exist. This is somewhat similar to recent decision J 4/18 were the Legal Board concluded that the purported requirement that for reduction of the examination fee for SME's under Rule 6, there is no requirement that all applicants must fulfill the requirements of Article 14(4) EPC. 
• The Board nevertheless finds that the Notice "appears to suggest that it is enough to benefit from the reduced fee for appeal if the appellant simply declares that it is an [entitled entity]." The Board finds that "at least based on the principle of legitimate expectations the appellant could rely on the information given by the EPO and furthermore assume that its appeal would either be deemed filed or admissible following the refund of the regular appeal fee before the file was transferred to the boards of appeal" 
• The latter remark refers to the fact that the appellant had paid both the reduced amount and the full amount and the fact that the full amount was refunded, apparently the refund was made by the EPO already before the file was transferred to the Board. As a comment, I think the Legal Board could more straightforwardly have said that the even the higher appeal fee was validly paid by the applicant; the fact that someone in the EPO's accounting department decides to refund it does not make the payment invalid.
• The impugned decision was taken by the Receiving Section and did not state the name of the employee. The Board finds this to be a substantial procedural violation of Rule 113(2). 
• The substantive issue is that the applicant had filed a request for restoration of priority, within the time limit of one month from the expiry of the 31-month time limit but without paying the fee. The Board finds that the request is deemed to not have been filed by applying Rule 136(1) last sentence EPC mutatis mutandis.  
• The applicant had argued that further processing should be available for the missed time limit of Rule 49ter.2(b)(i) PCT. The Board explains that under " Article 48(2)(a) PCT [...] further processing is not available if it is not available for not meeting a corresponding time limit under the EPC. Article 121(4) EPC expressly rules out further processing inter alia in respect of the time limit for requesting re-establishment of rights. A request for restoration of rights as specified in Rule 49ter.2 PCT is equivalent to, and identical in legal nature, to a request for re-establishment of rights under the EPC". Accordingly, neither further processing nor re-establishment are available. 
• "The appellant's final argument [invoking  the principle of legitimate expectations] that it was not obvious that a fee was due for a request for restoration under Rule 49ter.2 PCT cannot convince the Board either. Apart from the fact that parties to proceedings before the EPO are expected to know the relevant legal provisions, it should also be known that the EPO charges fees for further processing and re-establishment of rights, and it would therefore be unlikely that the EPO did not charge a fee for the request for restoration under Rule 49ter.2 PCT. It would therefore have been incumbent on the appellant to check whether the EPO had made use of its right to charge a fee under Rule 49ter.2(d) PCT." 

J 0008/18 - J 8/18 - link

Reasons for the Decision

Admissibility of the appeal

1.1 The appeal fee was paid twice within the two month period of Article 108 EPC, once the reduced amount of ¤ 1880 on 3 April 2018 and once the regular amount of ¤ 2255 on 4 April 2018. The amount of ¤ 2255 was subsequently (on 17 April 2018) refunded to the appellant.

1.2 According to Article 1(4) of the Decision of the Administrative Council of 13 December 2017 amending Articles 2 and 14 of the Rules relating to Fees (OJ EPO 2018, A4) the fee for appeal for an appeal filed by a natural person or an entity referred to in Rule 6(4) and (5) EPC shall be ¤ 1880. The fee for an appeal filed by another entity shall be ¤ 2255. These amounts shall be applicable for appeals filed on or after 1 April 2018 (Article 3(4) of the Decision). The present appeal has been filed on 3 April 2018.

J 0004/18 - Rule 6

Key points

• In this examination appeal, the applicants are a French and a Dutch natural person. They appeal against the decision to refuse the 30% refund of the appeal fee.
• According to the Examining Division, " Rule 6(7) EPC had to be read in relation to Rule 6(3) and (4) and Article 14(4) EPC. It resulted therefrom that in case of multiple applicants, all applicants must fulfil the requirements of Article 14(4) EPC in order to be entitled to a fee reduction. As one of the applicants had his residence in France, he did not fulfil those requirements." (This is already in the EPO FAQ about Rule 6 (here).
• The Board: "The question to be decided is whether paragraph 7 means that in case of multiple applicants all of them must -as in the present case- be natural persons (a) or that all must be natural persons and must additionally fulfil the requirements of Article 14(4) EPC (b)," 
• The argument of the Examining Division "is based on an erroneous interpretation of Rule 6(4)." 
• "The only thing Rule 6(4) does is to define certain categories of applicants for whom the reduction is available. It does not express any other limiting condition to the fee reduction entitlement as defined in Rule 6(3) EPC. A reference in Rule 6(7) EPC to Rule 6(4) EPC can therefore not refer to anything else then [sic!] the categories for whom the fee reduction is available. In other words, Rule 6(7) cannot by referring to Rule 6(4) EPC change the conditions for entitlement in Rule 6(3) EPC." 
• Clearly, in this case, the amount of the appeal fee is higher than the amount of the refund. The appellants had requested a refund of the appeal fee on the ground of a substantial procedural violation. However, the mistake of the Examining Division was a substantive one. "  It certainly did not fail to apply a clearly defined procedural rule under the EPC, as is required for establishing a procedural violation" 
• " the appeal fee is also not to be reimbursed on the ground that the appealed decision, as the Board has noted in its communication of 19 November 2018, does not state the names of and is not signed by the responsible employees." 
• The Board finds this a substantial procedural violation (agreeing with J16/17). "As the decision at hand was individually reasoned and was not created automatically by a computer, the exceptions under Rule 113(2) EPC do not apply. However the decision under appeal did not bear the names of the members of the examining division. At the end of the decision only the phrase "For the Examining Division" appears, followed by an anonymous EPO-stamp. The decision therefore does not bear the names of the employees that have taken the decision nor their signature and thus does not comply with the requirement of Rule 113(1) EPC. This omission must be classed as a substantial procedural violation, for the reasons cited above." 
• However, reimbursement on this ground would not be equitable, because the appeal was not caused by those formal errors.  "As a matter of fact the issue was not raised by the appellants in their appeal, but by the Board. There is no causal link between the refusal to refund part of the examination fee and the non-compliance with Rule 113(1) EPC." 
• In my view, it is a clear weakness of the EPC that in case the EPO makes a mistake about fees, the appeal fee can be higher than the possible refund. This makes that the EPO first instance practice about fee refunds is in effect outside the scope of review by the Boards. I wonder if the EPO FAQ would also have taken such a clear and applicant unfriendly position (without any clear legal basis) if the matter was not extremely unlikely to be appealed because any appeal would cost the applicant money even if the applicant was right and the EPO was wrong. I would also like to praise the representative of the applicants (Mr. Griebling) to bring the case in appeal; I guess as a matter of principle. 
• Perhaps the fact that Rule 103 EPC is not an exclusive basis for a refund of the appeal fee (see T0613/14) can be used to address this. 

EPO J 0004/18 - J4/18 -  link