T 0676/24 - A company pays the SME appeal fee

Key points

• The proprietor, a company, appeals and pays the reduced appeal fee. 
•   "With its communication of 17 June 2024, the board invited the patent proprietor to submit evidence that it was an entity referred to under Rule 6(4) and (5) EPC as mentioned in the above EPO Form 1038. Reference was made to point 4 of the decision of 14 February 2023 in case T 1678/21."
• The proprietor must file the balance sheet and official statements about the parent company and other group companies. 
• The Board:  "There is no provision corresponding to former Rule 6(5) EPC concerning the definition of micro, small and medium-sized enterprises in the Implementing Regulations amended by the Decision. However, section II.7 of the "Notice from the European Patent Office dated 25 January 2024 concerning fee-related support measures for small entities" (Official Journal EPO, 2024, A8) corresponds to former Rule 6(5) EPC. "
• The Board applies the guidance from the Notice of the EPO (which is not binding on the Boards by the way).
• " Number of employees - The board is satisfied that the patent proprietor's submissions in this regard are supported by the evidence on file. They cover the relevant periods 2022 and 2023 (see point (b) below). For the board it has thus been established that the patent proprietor, even including both companies in which it is a shareholder (Q-Services and Coim Tech) employs far fewer than 250 employees."
• "The proprietor has also established that no more than 25% of the capital of the three companies is held directly or indirectly by another company that is not an SME. The reason being that Q-TECH S.r.l. is owned by three natural persons. " (the owners are mentioned by name in the decision).
•  Turning to the declaration: "Rule 7b(1) EPC requires no declaration of eligibility for a reduction of the appeal fee. Nor is there any such requirement in the item 11 of Article 2 RFees specifying the reduced fee. Nor has the board detected any other legal basis. Cf. the analogous conclusion for former Rule 6(6) EPC in T 1678/21, point C.3.1 and the conclusion in T 553/25 for Rules 7a and 7b EPC." 
• "It follows from the previous section (b) that the requirement of a declaration in the section entitled "Declaration of entitlement" of the Notice (points 3 to 5) has no legal basis. "
• The appeal is also allowed. The OD apparently did not decide on the latest amended set of claims.
• "The board concludes from the above that the decision under appeal is based, inter alia, on a request relating to the patent as granted rather than on the request filed by the patent proprietor during the oral proceedings before the opposition division." 
• The appealed decision is set aside, the case is remitted, and the appeal fee is refunded.

EPO 

The link to the decision is provided after the jump.

T 0083/23 - Debit order on paper

Key points

• " In the present case, the opponent filed a notice of appeal within two months of notification of the opposition division's decision. As to the appeal fee, an order to debit the opponent's deposit account was given in the notice of appeal, thus on paper rather than in an electronically processable format."
• Also in January 2023, the ADA specified that debit orders must be "filed in an electronically processable format (xml) via one of the following: - EPO Online Filing using EPO Forms 1001E, 1200E, 2300E or 1038E, or Online Filing 2.0 using EPO Forms 1001E, 1200E or 1038E ... "
• "In the board's view, the debit order filed by the opponent on paper with the notice of appeal on 16 January 2023 was not validly filed. The filing of the debit order in an electronically processable format after expiry of the time limit of two months as set by Article 108 EPC, i.e. on 3 February 2023, was late, with the consequence that the opponent's appeal is deemed not to have been filed."
• " Where an opponent decides to avail itself of the use of a deposit account as a method for paying the relevant fees with the EPO (Article 5(2) Rules relating to fees), it is also its duty to know the relevant requirements for debiting a deposit account, including the types of debit orders and the accepted ways of filing them. The opponent's reference to its clear intention to give the order to deduct the appeal fee is not relevant under the present circumstances either."
• No request for correction under Rule 139 was filed.
• Three comments. First, the Notice of appeal was filed electronically, via Online Filing 2.0 (see the receipt), and Form 1038E was used (link), but that form did not include the debit order. The purported debit order was in the 'PDF' Notice (which does not bear a signature, so could not have been a valid paper Notice of appeal at any rate. The electronic signature is, however, in Form 1038E). Was the debit order really filed on paper?
• Second, the Board obiter holds that a request for correction is ruled out.  "A correction of the debit order in application of Rule 139 EPC presupposes that a valid debit order exists, i.e. filed in an electronically processable format. In the jurisprudence of the Boards of Appeal, correction of a debit order has only been allowed in case of errors concerning the amount of the appeal fee (see e.g.J 8/19 Reasons 2.4, T 317/19 Reasons 2.4.2, T 444/20 Reasons 2.4.3, T 2620/18 Reasons 5)."
• However, see T1146/20.
• Third. The opponent's appeal is deemed not to have been filed. The appeal fee is reimbursed. However, it may be a case of winning by losing. The OD maintained the patent in amended form; the proprietor also appealed, and the Board found the claims as granted allowable. Had the opponent validly paid the appeal fee, the decision in the patent would have been the same, and the appeal fee would not have been reimbursed.

EPO 

The link to the decision is provided after the jump.

T 1131/23 - Fee reduction for non-profit organisation

Key points

• The opponent, VRI-Verband der Reibbelagindustrie e.V., appeals.
• In machine translation: "The appellant [opponent] – a registered association under German law – argued in its appeal, using form 1011, that it was entitled to the reduced fee rate for non-profit organizations. It also paid only the reduced fee rate. To demonstrate that it does not pursue a profit motive, the appellant referred to its articles of association.
• The Board, in translation: " The question of whether the opponent is a non-profit organization and therefore only had to pay a reduced appeal fee when filing the appeal on 14 June 2023 is governed by Rule 6(4)(c) EPC in the version applicable until 30 April 2024 (Rule 6(4)(c) EPC old version).."
  • Obviously, Rule 6(4)(c) EPC applied only indirectly, namely through Art. 2(1).11 Rfees.
• The Board: " According to this provision, a non-profit organization is one which, by virtue of its legal form or articles of association, is prohibited under the relevant legal provisions from generating income, profits or other financial benefits for its owners, or which, if a profit motive is permitted, is subject to a statutory/legal obligation to reinvest these profits in the interests of the organization (see: Official Journal EPO 2014, A23, point 8i; Examining Guidelines Part A Chapter X 9.2.1; the same wording is found in point 8 of the Notice of the European Patent Office of 25 January 2024 on fee-related support measures for smaller units, Official Journal EPO 2024, A8, in which Rule 6 EPC (old version) was replaced by Rules 7a and 7b EPC)."
  • The text about "by virtue of its legal form or articles of association, is prohibited under the relevant legal provisions from generating income" cannot be found in Rule 6 (old) itself. OJ 2014 A23 is only a Notice from the EPO and does not bind the Board.
  • The Board indicates that it is not strictly bound by the OJ Notice, as follows: " From this definition, which the Board also bases its decision on [ Dieser Definition, die auch die Kammer zur Grundlage ihrer Entscheidung macht, ], it can be inferred that an organization is to be regarded as a non-profit organization if, due to its legal form, it is not permitted to engage in business activities aimed at generating profits."
• "In its assessment under the old version of Article 6(4) EPC, the Board follows the German case law on Section 21 of the German Civil Code (BGB), according to which limited economic activity within the scope of the so-called ancillary purpose privilege (see above, point 3) is permissible."
• "The opponent pursues the objective of the opposition proceedings it conducts to ensure that only those technical developments in the field of friction lining industry that are genuinely new, involve an inventive step, and fulfill the other requirements for patentability are granted a patent. This prevents the friction lining industry from being restricted from having unrestricted access to technical solutions that are already known and obvious from the prior art, and thus ultimately hinders further technical progress in this field. There is a general interest in this – not only, but also – of the friction lining industry, so these opposition proceedings are fundamentally suitable for promoting the objector's association's purpose."
• " Opposition proceedings do have economic consequences; however, these primarily affect the companies whose patent applications are being challenged. For an opponent who—like the opponent in these proceedings—does not manufacture or distribute any products, maintaining or invalidating a patent is neither economically advantageous nor disadvantageous. The costs of opposition proceedings, however, are considerable. Therefore, it cannot be assumed that the opponent intends to profit from conducting opposition proceedings."
  • The members of the association are, of course, the (German) companies active in the industry. The association may be set up for cost-sharing purposes.
• "In light of all the above, it must be concluded that the opponent is to be regarded as a non-profit organisation within the meaning of Rule 6(4)(c) EPC old version and that his appeal is therefore deemed to have been lodged, even though he has only paid the reduced fee rate."
  • The preliminary opinion was negative. Oral proceedings were held only for the topic of the correct payment of the appeal fee / whether the appeal was deemed to have been filed. Summons for second oral proceedings, on the merits, were issued shortly after the first oral proceedings (with the oral proceedings to be held two months after the summons).
  • This confirms that under the EPC, the Boards hold oral proceedings even if they consider that the appeal is deemed to not have been filed due to an incorrect payment of the appeal fee.

EPO 

The link to the decision is provided after the jump.

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. 
• 
  

•  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.

T 1216/23 - The SME reduction as a refund

Key points

• This decision illustrates that if you are unsure if the SME reduction applies, you can pay a fee in full and request a partial refund.
• The Board, in translation, under "On June 26, 2023, the amount of EUR 910.00 was repaid (the difference between the appeal fee paid of EUR 2,925.00 and the appeal fee of EUR 2,015.00 for a complaint filed by a natural person or a person referred to in Rule 6 (4) and (5) EPC is filed)."
• In this case, interlocutory revision was granted. The request for full reimbursement of the appeal fee was forwarded to the Board. 
• The applicant then withdrew the request for reimbursement.
• The appeal proceedings are terminated without a decision and without (further) reimbursement. See T 0683/14. 
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0416/21 - Reply to the preliminary opinion

Key points

• The proprietor files an auxiliary request in reply to a new objection in the preliminary opinion of the Board.
• The Board: "If the submission of auxiliary request 0 was actually a response to the Board's communication, this application should have been submitted promptly after delivery of the communication (of August 23, 2023) and not only with the letter of November 3, 2023, and a few days before the oral hearing (November 10, 2023)."
• At any rate, the Board considers the objection to be not a new one.
• The request is not admitted.
  
  
• The appeal of opponent II is deemed to not have been filed. The opponent paid the appeal fee at the reduced rate but was not an SME.
• The Board, in translation:" Opponent II admitted that it was not an SME and that the payment of the reduced appeal fee was made in error. During the oral proceedings before the board, she withdrew an original request for correction of the form for payment of the fee in accordance with Rule 139 EPC."
• " The correct appeal fee (in full) was only paid shortly before the oral hearing. Opponent II did not pay the appeal fee in the correct amount within the time limit set out in Article 108, first sentence, EPC. According to Article 108, second sentence, EPC, the appeal is deemed not to have been filed."
• "During the oral hearing, opponent II invoked the principle of the protection of legitimate expectations. [Arguing that] she paid the reduced fee well before the deadline, so there would have been enough time [for the EPO] to point out this obvious deficiency." (G 2/97, headnote). 
• "opponent II could not expect to be informed by the EPO that the incorrect appeal fee had been paid. There is nothing in the Notice of appeal, the fee payment form or other submission that obviously requires clarification or reminder. On the contrary, the submissions were clear: the notice of appeal stated that the official appeal fee of EUR1,955.00 (fees no. 011) would be paid from the current account. This amount corresponds to the reduced fee. The accompanying letter for subsequently submitted documents (Form 1038) contains the information that the reduced appeal fee (in the amount of EUR 1,955.00) must be debited from the current account. A defect claimed by opponent II that was “obvious” to the board was therefore not present."
• The appeal of opponent I is admissible and the patent is revoked. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1678/21 - (I) Underpaid appeal fee and T 152/82

Key points

•  The applicant files an appeal.  A debit order is given for the reduced appeal fee rate. The applicant is, however, a large company.
• The Board needs only 105 pages (pdf) to deal with the appeal fee payment.
• The Board notes that the appeal fee is validly paid "if a proper assessment of the authorisation to debit on EPO Form 1038 revealed the applicant's/appellant's clear intention to give the instruction to debit the regular fee. Such was the conclusion in recent case T 1474/19 (see below, point C.1.). The board in that case (in point 25, first paragraph) considered that the most persuasive approach to this issue was based on the principles set out, inter alia, in T 152/82, which therefore will be discussed in point C.2. below. In point C.3., this board will then analyse under which conditions the approach of T 152/82 applies to the staggered appeal fee."
• T 152/82: "A debit order must be carried out notwithstanding incorrect information given in it if the intention of the person giving the order is clear".
• "One could thus equal the view expressed in T 152/82 with considering an incorrect amount indicated in a debit order to be tantamount to an obvious error in writing, which is amenable to correction, but, being obvious, not necessary to be corrected. The difference between the incorrect amount and the error in writing being "merely" that obviousness of the incorrect amount needs to be determined after a careful analysis of the file, at an appropriate point in time, in many cases, after expiry of the pertinent period, such as the appeal period. Interpreted this way, T 152/82 can be followed."
• The Board then turns to the notorious "prescribed but not actually necessary" declaration of SME status for the reduced appeal fee: "For this board, as a preliminary matter, it must be excluded that the absence of a declaration under the Notice [OJ EPO 2018, A5] alone can be considered as an expression that the appellant did not consider itself to be an entity referred to in Rule 6(4,5) EPC (from which it might be inferred that it had the clear intention to pay the regular appeal fee; see at the end of this point). The same conclusion was drawn in point 6.2 of T 2620/18. The reason being that there is no legal basis for requiring a declaration for benefiting from a reduction of the appeal fee, as held for example in T 225/19 (point 2.4) and suggested in T 1060/19 (points 1.3.2 and 1.3.3). As stated in point C.1. above (see "Comments"), the declaration in Rule 6(6) EPC relates to the reduction of the filing and examination fees for persons referred to in Article 14(4) EPC mentioned in Rule 6(3) EPC only. Users of the European patent system have therefore been alerted to this view and might have opted to refrain from filing the declaration in respect of the appeal fee if they so wished."
• " This board considers that both T 152/82 and the summary of the subsequent case law endorsing it given in T 1474/19 (in point 14 reproduced in point C.2.1 above in fine) can be followed, but only under the condition that it is known to a board from the file as it stands at the end of the appeal period that the appellant, at the point in time of authorising the debit of the reduced appeal fee, was not entitled to the reduction of the appeal fee under Rule 6(4,5) EPC."
•  "There may be [exceptional cases]  such as those of a natural person, clearly identifiable as such, or an entity clearly identifiable as a university, where it will be obvious that they qualify for the reduced appeal fee. However, when it comes to recognising whether an organisation is a non-profit entity and when it comes to determining the correct amount of the appeal fee for a for-profit company and more precisely whether the company is an SME, what matters is not basic knowledge pertaining to the patent fee structure, as in the cases dealt with in T 152/82. In the case of a for-profit company, the knowledge required rather relates to the size of business players across the world, more specifically to their turnover and number of employees (and whether more than 25% of their equity is owned by a large enterprise)."
• "It must be noted that T 1474/19 sheds no light on how, in that particular case, the board could determine the size of the appealing company on the basis of the file as it stood at the end of the appeal period alone."
• "In the case in hand there is no exception to the rule that generally the EPO cannot detect from the file alone, without any indication that the appealing company is a large company and, therefore, does not benefit from the reduction of the appeal fee: the board could not spot the applicant's/appellant's failure to qualify as an SME from the file as it stood at the end of the appeal period."
• The Board allows the request for correction of the error in the debit order. I will discuss that part of the decision separately. 
• The Board also holds that the examining division has no jurisdiction to apply T 152/82 to the appeal fee, not even in ex parte cases: "That the examining division has no jurisdiction on this type of matter is presupposed in numerous board decisions; for payment of the appeal fee in general, see G 1/18, section B II; for payment of the reduced appeal fee by debit order see T 1474/19, point 21."
• Note, section B II of G 1/18 is quite lengthy and does not seem to expressly comment on jurisdiction.  T 1474/19, point 21 does not seem to discuss jurisdiction either. Indeed, the present Board indicates that this is "presupposed".
• As a comment, I think T 0152/82 doesn't require absolute certainty on the side of the EPO as to what the party intended. 
• As a further comment, T 0152/82 may illustrate the principle that the EPO should act in accordance with "the principles of good faith which govern the relations between the Office and applicants" (cf. J10/84) when interpreting a debit order. If the Board is genuinely unsure if an applicant is an SME or a large corporation, the Board may indeed not be in a position to apply the principle of T 0152/82. 

EPO 

The link to the decision is provided after the jump.

T 0637/21 - Appeal fee

Key points

•  The opponent pays the appeal fee at the reduced rate. 
• "The appellant confirmed that it was not entitled to a reduced fee. "
• The appellant requests that the amount lacking is overlooked under Art. 8 Rfees.
• The Board: "the Board does not consider the amount lacking in the present case to be "small" within the meaning of Article 8, fourth sentence, RFees."
• "the Board also notes that with Article 2(1), item 11 of the Rules relating to Fees, the legislator introduced a reduced fee for certain categories of appellant. It seems reasonable to assume that the legislator saw this reduction as being of genuine financial assistance to the listed categories of persons, and not as a merely symbolic reduction. Thus the Board does not consider, for this reason as well, the shortfall to be "small".'
• The Board decides that the appeal is deemed not to have been filed.
• As a comment, oral proceedings only on the issue of payment of the appeal fee were scheduled but cancelled after the appellant announced that it would not attend.
• As a comment, the Board in the course of the proceedings clarified that the respondent did not have to file a full response to the substance of the appeal until the Board would find the appeal to be validly filed.
• As a comment, the debit order at issue contains the signature of Mr. B, a professional representative, i.e. states his name between slashes in the signature field.
• From the decision: "The appellant stated that the reduced fee was paid due to a clerical error by a paralegal and that the representative had not been able to check the debit order prior to filing, mainly due to difficulties caused by remote working following the COVID-19 pandemic."
• The decision does not discuss any request for correction of the debit order.

EPO T 0637/21 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0444/20 - Correction of debit order appeal fee

 Key points

• In by no means a rare course of action, the appellant paid the appeal fee with a debit order in the familiar amount of EUR 1880 on 20.12.2019, after the fee was increased on 01.04.2018 for large entities.
• The Board allows the correction of the debit order.
• “Following T 317/19, Reasons 2.3 to 2.5, an error in a duly filed form for paying the appeal fee may be corrected under Rule 139, first sentence, EPC.”
• “In G 1/12 [the  Enlarged Board] summarised the following [requirements for a correction under Rule 139 first sentence] : (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 Board: “At the date of payment, the amount due for the reduced appeal fee under Article 2(1), item 11 RFees was identical to the amount previously due for the appeal fee in all cases (EUR 1 880). The board accepts that this may have given rise to confusion.”
• As to item b, the appellant did not submit the SME declaration 'required' by OJ EPO 2018, A5; moreover, the appellant is a well-known large entity.
• As to item c, the full appeal fee was paid.
• As to item d, “the appellant filed its request under Rule 139 EPC merely two weeks after the board's communication which indicated for the first time that the prescribed appeal fee was not validly paid  ... The board is, therefore, satisfied that the appellant filed its request for correction without delay”
• “The board concludes that the requirements for the correction requested are met, and thus that the correction is to be allowed. As a consequence, the appeal is retroactively deemed to have been filed, the correction under Rule 139 EPC having effect ex tunc ”
• The fee for the auxiliary request for re-establishment is reimbursed.
• There was a curious communication from the EPO of 09.01.2020 that “informed the appellant that it had paid the reduced fee but had failed to file a declaration that it constituted an entity according to Rule 6(4) and (5) EPC. In this context, the EPO inter alia stated that "[t]he missing amount of xxx EUR may be paid within two months from notification of this communication."”
• The Communication of 09.01.2020 mentions a name (an EPO employee I assume) but no department. It states that the underpayment was less than 10% of the total amount due [well, (2255-1880)/2255 = 16%]  and that the missing amount of "xxx EUR" may be paid within two months under J11/85. The missing amount was paid in that two-month period.  Perhaps the Examining Division was willing to allow interlocutory revision if possible, or the EPO was trying to be helpful under the principle of good faith. However, the appeal was forwarded to the Board and the Board does not seem to consider itself bound very much by that letter and the time limit given therein. 

Summary of Facts and Submissions

I. The decision under appeal refusing European patent application No. 14 194 458.7 was posted on 15 October 2019.

II. On 20 December 2019, the applicant (hereinafter: appellant) filed a notice of appeal in which it indicated that "[t]he appeal fee in the amount of EUR 1,880.00 is paid via EPO online filing". Said amount was also indicated in payment form 1038E which accompanied the notice of appeal letter. On that same day, the above amount was debited. However, the correct amount of the appeal fee at the time of filing was EUR 2 255 since the appellant is not entitled to the fee reduction under Article 2(1), item 11, RFees in conjunction with Rule 6(4) and (5) EPC (contrary to the appellant's indication in the "Fees" box of Form 1038E).

T 0333/20 - Underpayment and appeal fee refund

 Key points

• Two of the frequent topics of the 2020 case law of the Boards coming together: the SME appeal fee rate and the appeal fee refund rules of amended Rule 103. 
• Rule 103(3)(c) specifies that the appeal fee is refunded at 50% if the appeal is withdrawn “in all other cases, before the decision is issued”.  In the present decision, the Board concludes that the appeal fee is nevertheless refunded at 100% if the appeal is withdrawn and at the same time is deemed to not have been filed due to the underpayment of the appeal fee (Article 108 EPC and Art. 8 Rfees). 
• The appellant paid the reduced amount of the appeal fee for SME's without being entitled to the reduction and withdraws the appeal after the filing of the Statement of ground, also requesting the refund.

EPO T 0333/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t200333du1.html

Entscheidungsgründe

1. Die Beschwerdeführerin hat ihre Beschwerde am 26. Mai 2020 rechtswirksam zurückgenommen und gleichzeitig einen Antrag auf Rückerstattung der Beschwerdegebühr gestellt.

2. Die Rücknahme der Beschwerde beendet das Beschwerdeverfahren in der Sache selbst, jedoch nicht im Hinblick auf Anträge, deren Gegenstand sich durch die Rücknahme der Beschwerde nicht erledigt hat.

Von der Verfahrensbeendigung ist deshalb der von der Beschwerdeführerin zusammen mit der Beschwerderücknahme gestellte Antrag auf Rückzahlung der Beschwerdegebühr nicht erfasst (siehe auch z.B. die Entscheidungen T 41/82, ABl. EPA 1982, 256; T 89/84, ABl. EPA 1984, 562; J 12/86, ABl. EPA 1988, 83; T 773/91 und J 37/97).

T 0517/17 - Appeal fee refund

 Key points

• There is as of yet no end to the case law about amended Rule 103.
• This Board disagrees with T 0073/17 and finds that for the partial refund of Rule 103(4)(c) EPC, it is enough for the appellant to announce that it will not attend the oral proceedings.
• “the board is aware that, [...]  it departs from an extensive obiter dictum set out in decision T 73/17 (Reasons, point 9.3). In that decision, the competent board, relying on document CA/80/19, maintained that new Rule 103(4)(c) EPC required an express withdrawal. Although the board referred to the case law according to which the announcement of non-attendance is considered to be an implicit withdrawal, it considered that this case law, even if it was correct, could not apply to Rule 103(4)(c) EPC. ”
• “However, this board holds that, if it is true that the express announcement of not attending arranged oral proceedings before the board is equivalent to a withdrawal of the request for them, this must be true and valid for all effects that the EPC and the case law attach to a withdrawal. It does not appear to be justified to qualify the express announcement as equivalent to a withdrawal for the purposes of the question of whether appointed oral proceedings shall take place, but as not equivalent for the purposes of the question of whether fees shall be refunded.”
• As a comment, let's see if the case law settles on a consensus or whether a referral to the Enlarged Board is necessary. 
• The present Board adds, somewhat mysteriously in my view: “Against this background, it is not necessary to assess whether CA/80/19 can constitute evidence for the intentions of the legislator. Nor has the board to decide whether it is possible or necessary to resort to the preparatory work associated with new Rule 103 EPC for the specific issue discussed here, considering the requirements laid down in Article 32 of the Vienna Convention on the Law of Treaties.” 

EPO T 0517/17 - refund appeal fee

https://www.epo.org/law-practice/case-law-appeals/recent/t170517eu1.html

decision text omitted

T 0225/19 - The SME appel fee declaration lacks legal basis

 Key points

• An appeal is filed by the joint proprietors, a university and a GmbH, paying the appeal fee at the reduced rate. The opponents dispute the admissibility of the appeal asserting that the GmbH is at least 75% owned, indirectly, by a large USA company. 
• This Board concludes that the 'SME Declaration' for the reduced appeal fee, prescribed in  EPO Notice OJ 2018, A5, lacks legal basis as a requirement for the reduced appeal fee (see also J8/18). As far as I know, this is the first time the Board explicitly says so. 
• This Board: “Der Beschluss des Verwaltungsrats vom 13. Dezember 2017 [OJ 2018, A4) zur Änderung der GebO bzw. der dadurch neugefasste Artikel 2 (1) Nr. 11 der GebO enthalten keine Rechtsgrundlage für die in Nr. 3 und 4 der Mitteilung verlangte Erklärung.” (emphasis added). 
• “Daraus folgt, dass die Mitteilung [OJ 2018, A5] durch das in deren Nr. 3 und 4 genannte Erfordernis einer Anspruchserklärung sowie den Hinweis auf die möglichen Rechtsfolgen in Nr. 11 der Mitteilung den Beschluss des Verwaltungsrats vom 13. Dezember 2017 (CA/D 17/17, supra) nicht nur auslegt und erläutert, sondern das zusätzliche, durch keine Rechtsgrundlage gestützte Erfordernis einer mit der Gebührenzahlung abzugebenden Erklärung aufstellt.”
• I note that in T 1060/19 the Board had assumed that the provisions of the Notice were binding, only to reject an argument of a party based on the principle of protection of legitimate expectations. Perhaps the intent of the additional requirement in the Notice was to protect parties. But in the end, the additional requirement in the Notice lacks any legal basis.
• However, the Board is competent to examine the entitlement to the fee reduction and obliged to examine this entitlement of a party when disputed by the other parties. Both the declaration and any evidence are still accepted after the appeal period.
• In this case, the evidence was not accepted and the Board decides that the appeal is deemed not to have been filed. The decision does not mention any request for re-establishment.

T 0225/19 - https://www.epo.org/law-practice/case-law-appeals/recent/t190225du1.html

EPO Headnote

Auch wenn eine Erklärung nach Nr. 3 und 4 der Mitteilung des EPA vom 18. Dezember 2017 nicht schon bei Zahlung der ermäßigten Beschwerdegebühr verlangt werden kann, ist die Kammer jedoch befugt und verpflichtet, die Voraussetzungen für die wirksame Einlegung und die Zulässigkeit der Beschwerde in jedem Verfahrensstadium zu prüfen. Eine Überprüfung durch die Kammer ist insbesondere dann geboten, wenn das Vorliegen der Voraussetzungen nach Regel 6 (4) und (5) EPÜ für die Zahlung der ermäßigten Beschwerdegebühr von anderen Verfahrensbeteiligten bestritten wird. Dabei werden eine entsprechende Erklärung und Belege auch noch nach Ablauf der Beschwerdefrist akzeptiert (vgl. Nr. 2 und 3 der Entscheidungsgründe).

T 2620/18 - More about the SME appeal fee; debit order correction

 Key points

• The appellant paid the appeal fee on 08.10.2018 at the SME rate without being an SME.
• The Board finds that the difference with the normal rate it is not a small amount lacking under Article 8 Rfees.
• The appellant requests correction under Rule 139. The Board considers it proven that the reduced fee rate was paid by mistake, basically because of the 'design choices' of the Online Filing Software (so this applies to selecting the wrong fee level by mistake in OLF).
• “wie von der Beschwerdeführerin vorgetragen, sind die Texte in den Textfeldern [in OLF] für die ermäßigte und die volle Beschwerdegebühr sehr ähnlich. Sie beziehen sich beide auf Regel 6 (4) und (5) EPÜ, einmal in positiver Weise, einmal in negativer Weise:” 
• I wonder if the EPO will ever change the Online Filing Software on this point. Until that time it seems very reasonable that the Board acknowledges that the two texts chosen by the EPO for identifying the fee levels are very similar. 
• “ Dabei ist zu berücksichtigen, dass der ermäßigte Gebührenbetrag mit dem vor dem 1. April 2018 geltenden "einheitlichen" Betrag für die Beschwerdegebühr übereinstimmte. Es erscheint daher glaubhaft, dass die Texte in den Boxen flüchtig gelesen wurden und sich der Leser am bisher geltenden, bekannten Gebührenbetrag von 1880 EUR orientierte und irrtümlich davon ausging, dass die volle Gebühr bezahlt wurde, obgleich dies ab dem 1. April 2018 lediglich der ermäßigte Betrag war.”
• However, the Board considers that the request for correction was not made timely, because it was made 8 weeks after paying the wrong appeal fee (payment 09.10.2018; request correction 07.12.2018) whereas the error had been noticed on 25.10.2018 and a debit order for the appeal fee at the normal rate had been filed on 25.10.2018 as well.
• This seems highly fact-specific.
• I note that GL A-X, 7.1.1 (2019) state that “ Payment is a matter of fact whereby a certain amount is transferred to and put at the disposal of the EPO. It is not, therefore, a procedural declaration which may be corrected pursuant to Rule 139. The same applies to debit orders.”
• The breakthrough decision was T 0317/19 as far as I know.

T 2620/18 - link

Decision text omitted.

T 2422/18 - The SME appeal fee rate trap

 Key points

• The appellant-opponent pays the appeal fee at the reduced rate for SME's by mistake on 27.09.2018. On 13.12.2019, the Board enquires about the missing SME declaration. 
• Fact is that the appellant is not an SME and does not qualify for the reduced appeal fee rate. 
• The appellant/opponent submits the following about re-establishment: " Ein Antrag auf Wiedereinsetzung könne nicht gestellt werden, da dies aufgrund des Ablaufs der einjährigen Ausschlussfrist gemäß Regel 136 (1) EPÜ ausgeschlossen sei." 
• This is not untrue of course, but re-establishment is in any case excluded for the filing of  a Notice of appeal by an opponent, Art. 122(1) and G 1/86.
• The appellant tries to invoke the principle of legitimate expectations.
• The Board does not accept this, because the debit order in Form 1038E was for the reduced appal fee. " Darüber hinaus war die nicht ausreichende Gebührenzahlung im vorliegenden Fall nicht als Mangel ersichtlich, da sowohl der Betrag als auch der unter der Rubrik ,,Gebühren" aufgeführte Text im Begleitschreiben für nachgereichte Unterlagen darauf hindeuteten, dass es sich bei der Beschwerdeführerin um eine natürliche Person oder eine in Regel 6 (4) EPÜ genannte Einheit handelte. Allein schon aus diesem Grund kann sich die Beschwerdeführerin nicht auf den Grundsatz des Vertrauensschutzes stützen."
• I note that the reduced amount of EUR  1880 was also mentioned in the Notice of appeal.
• Moreover, because the SME declaration can be late-filed in appeal, there was no clear error in the debit order that the EPO should have noticed.
• I note that in view of T 0160/19, the 'SME Declaration' for the reduced appeal fee appears to lack any legal basis in the EPC or in the Rfees although so far the Boards have stopped short of saying that.
• The Bord confirms that the underpayment is also not a small amount in the sense of Rfees8 following T 3023/18.
• As a comment, note that in case of a fee increase and the old amount is paid within six months from the fee increase, the deficit can be made up within two months from an invitation by the EPO; EUR 1880 was the amount of the appeal fee until 01.04.2018 (OJ 2016 SE2; OJ 2018 A4 Art.3(5).

EPO T 2422/18 -  link

Sachverhalt und Anträge

I. Die Beschwerde der Einsprechenden richtet sich gegen die am 20. Juli 2018 zur Post gegebenen Entscheidung der Einspruchsabteilung, gemäß derer das Patent in geändertem Umfang den Erfordernissen des Übereinkommens genügt.

II. Die Beschwerdeschrift wurde am 27. September 2018 eingereicht. An demselben Tag entrichtete die Beschwerdeführerin eine Beschwerdegebühr in Höhe von 1880 EUR. Dies entsprach einer reduzierten Gebühr, die für natürliche Personen und Einheiten im Sinne der Regel 6 (4) und 6 (5) EPÜ i.V.m. Artikel 2 (1) Nr. 11 der Gebührenordnung (Amtsblatt EPA 2018, A4)) zutrifft. Derjenige, der eine solche Gebührenermäßigung in Anspruch nehmen möchte, muss erklären, dass er eine natürliche Person oder eine Einheit im Sinne von Regel 6 (4) EPÜ ist (Mitteilung des EPA vom 18. Dezember 2017 über die ermäßigte Beschwerdegebühr (Artikel 108 EPÜ) für eine Beschwerde, die von einer natürlichen Person oder einer in Regel 6 (4) EPÜ genannten Einheit eingelegt wird, Amtsblatt EPA 2018, A5) . Die Beschwerdeführerin hatte solch eine Erklärung (nachfolgend "die Erklärung") nicht eingereicht.

III. Am 13. Dezember 2019 wurde die Beschwerdeführerin von der Geschäftsstellenbeamtin der Beschwerdekammer über die reduzierte Beschwerdegebühr und das Fehlen der Erklärung informiert. In ihrem Schriftsatz vom 17. Dezember 2019 erklärte die Beschwerdeführerin, dass es sich bei der Einsprechenden nicht um eine Einheit im Sinne der Regel 6 (4) EPÜ handele und die Erklärung daher nicht nachgereicht werden könne. Bei der Entrichtung der reduzierten Gebühr habe es sich um ein Versehen gehandelt, und der Restbetrag von 375 ¤ werde per beiliegender Einzugsermächtigung eingezahlt. Die Beschwerdeführerin beantragte mit Verweis auf den Vertrauensschutz, dass die Beschwerde als zulässig erachtet werden solle. Ein Antrag auf Wiedereinsetzung könne nicht gestellt werden, da dies aufgrund des Ablaufs der einjährigen Ausschlussfrist gemäß Regel 136 (1) EPÜ ausgeschlossen sei.

T 2113/16 - Partial reimbursement appeal fee

Key points

• The Board clarifies that a preliminary opinion issued under Art.15(1) 2nd para RPBA 2020 is a ‘communication issued by the Board of Appeal in preparation for [the] oral proceedings’ in the sense of Rule 103(3)(a) and Rule 103(4)(c) and its notification triggers a period of one month for withdrawing the appeal or the request for oral proceedings in order to benefit from a partial refund of the appeal fee at 50% respectively 25%.

EPO T 2113/16 - link

IX. Die Parteien wurden zu einer mündlichen Verhandlung geladen. Die Kammer erließ eine Mitteilung nach Artikel 15(1) VOBK datiert vom 24. März 2020, in der sie ihre vorläufige Meinung erläuterte und erklärte, dass der Hauptantrag gewährbar erscheint.

Daraufhin zog die Beschwerdeführerin mit Schreiben vom 27. April 2020 ihren Antrag auf mündliche Verhandlung zurück. In der Folge wurde der Termin zur mündlichen Verhandlung aufgehoben.

Entscheidungsgründe

4. Rückzahlung der Beschwerdegebühr

Der Antrag der Beschwerdeführerin auf mündliche Verhandlung wurde fristgerecht zurückgenommen. Es fand auch keine mündliche Verhandlung statt. Die Beschwerdegebühr ist daher in Höhe von 25% zurückzuzahlen (Regel 103(4)c) EPÜ).

Entscheidungsformel

Aus diesen Gründen wird entschieden:

1. Die Beschwerde wird zurückgewiesen.

2. Die Beschwerdegebühr wird in Höhe von 25% zurückgezahlt.

T 1060/19 - Appeal fee

Key points

• The appellant pays the appeal fee in January 2019 at the reduced rate with a debit order in Form 1038 by mistake, it is not an SME. The PDF letter and the remarks of the Form contain a statement that purports to be a debit order in case of underpayment.
• To recap some relevant case law: T 3023/18 considered the underpayment to be no small amount lacking and held that the EPO has no duty to carry out any ex officio enquiry to determine an appellant's entitlement to pay the reduced appeal fee. The fact that the ‘SME declaration’ was missing in that case, did not change this. The Board in T 3023/18 that it is the practice of the Boards of Appeal to accept such declarations at any time during the appeal proceedings. See J8/18 about the EPO Notice OJ 2018, A5 which suggest a requirement for an SME declaration; the Legal Board recalled that “the Board is in no way bound by Notices from the EPO concerning the application or interpretation of legal provisions”. According to J8/19, debit orders can be corrected (see also T 1000/19). According to T2575/19, the validity of a debit order in the remark field of Form 1038E is not ruled out under the ADA in the version valid until 1 October 2019.
• In my view, the present decision does not (expressly) contradict the above case law or departs from that case law. 
• The present appellant argues that the remark in the PDF letter was a valid debit order, because the SME declaration was omitted. I note that the decision does not comment at all on the requirement in the ADA that “debit order must be filed in an electronically processable format (XML)” (point 5.1.2 ADA 2017)
• The present Board undertakes an extensive investigation of whether "the authorisation given in the letter accompanying the notice of appeal, "In case of underpayment ... to debit the legally prescribed amount from our deposit account" had become effective before expiry of the appeal period". I think the Board is here perhaps implicitly applying the conclusion of T2575/19, that a debit order in the remarks tab of Form 1038 (filed before 01.10.2019) is not invalid merely because it is in the remarks tab. 
• The Board: “This would have required the EPO to be in a position before the end of the appeal period to recognise the underpayment, i.e. the fact that the appellant was not eligible for the reduced appeal fee”. The appellant argued that this was the case, because it had not filed the SME declaration, pointing out that EPO Notice OJ 2018, A5 states that "the [SME Declaration] must be filed at the latest by the time of payment of the reduced fee for appeal".
• The Board notes that: “points 3 and 4 of the Notice do not merely interpret decision CA/D 17/17 of the Administrative Council [OJ 2018, A4; i.e. amended Rfees2(1)11], but impose additional duties, i.e. in particular an express declaration (point 3) to be made by the date of payment at the latest (point 4). An assessment must be made therefore of whether legal concepts or legal provisions other than decision CA/D 17/17 provide a basis for these duties.” Implicitly the Board here appears to consider these additional requirements in the Notice to lack legal basis in amended Rfees2(1)11.
• The Board then (immediately) turns to 'legitimate expectations' (which is in my view not legal basis per se) and concludes that this principle does not apply. However, the Board adds that “the board will nevertheless assume arguendo that the provisions of the Notice that are pertinent to the present case are binding.” However, the Board reasons that the provisions of the Notice, when properly interpreted, do not give basis for a legitimate expections as argued by the appellant.  The Board, in particular, notes that point 11 of that Notice allows for remedying a missing declaration until the expiration of the appeal period, such that the Notice does not actually require filing the SME declaration at the latest when paying the appeal fee, as argued by the appellant.
• “The appellant's attempt to convert the EPO's correct response to the appellant's mistake into improper conduct, on the basis of certain provisions of the Notice (points 3 and 4) taken out of their context (point 11), must fail, regardless of the doubts as to their legal basis.
• Note that this whole analysis is about a debit order in the 'Remarks Tab', which is in any case excluded in the ADA in force as of 01.10.2019.

• The Board refuses the request for re-establishment. The representative had signed the Form 1038 himself (at least his signature is placed on it) and had made a mistake. Excessive workload (200 billable hours in one month; the attorney works at the Munich branch of a large USA patent firm; it is not said what he normally bills monthly) is no ground for RE. “Diligent representatives must make sure that the workload they accept is not excessive, i.e. does not go beyond their capacity to carry out the corresponding tasks properly. Otherwise they must bear the consequences of mistakes caused by an excessive workload.”

EPO T 1060/19 -  link

Summary of Facts and Submissions

I. The notice of appeal and the request for re-establishment of rights

[The following text has been taken verbatim from part A of the board's communication annexed to the summons to oral proceedings of 25 November 2019.]

1. The notice of appeal of 28 January 2019

With a letter of 28 January 2019 the applicant gave notice of appeal against the decision by the examining division of 28 November 2018 refusing European patent application 12 855 099.3. The penultimate paragraph reads as follows:

The appeal fee in the amount of EUR 1,880.00 shall be debited from our deposit account no. ... . In case of underpayment and/or missing fees, the EPO is also authorized to debit the legally prescribed amount from our deposit account no. ... .

The EPO form entitled "Letter accompanying subsequently filed items", in its "Fees" box 15-1, was filled out as follows:

"11e Appeal fee for an appeal filed by a natural person or an entity referred to in Rule 6(4) and (5) EPC", together with the total "Amount to be paid" of "EUR 1 880.00".

At the bottom of the letter, under the heading "Annotations", the appellant has added the following statement:

Authorization in case of underpayment and/or missing fees([Name representative]; 27.01.2019)
1. Remark(Annotate)
In case of underpayment and/or missing fees, the EPO is authorized to debit the legally prescribed amount from our deposit account no. ... .

Video oral proceedings and online communications

Readers of this weblog will likely be already aware that in-person oral proceedings with Examining Divisions have been abolished with immediate effect (Notice; Decision; news item of epi).

In-person oral proceedings will from now on only be held for exceptional cases such as the hearing of witnesses and the inspection of models. In-person oral proceedings are hence not suspended for a limited period because of the corona virus, but abolished completely for Examining Divisions.

According to Mr. Campinos, the measure contributes to “a more efficient, modern and sustainable European patent system” (letter of the President). Video interviews (i.e. with the primary Examiner) are also available.
The "epi" protested (letter) but as of yet to no avail, as regards examining divisions (the President's proposal to allow for video oral proceedings in opposition division was apparently not pushed through).

Update 04.04.2020: I would like to clarify that my view is that it is highly doubtful whether video oral proceedings are sufficient under Article 116 EPC. In addition to my comments below about the refund for withdrawing requests for oral proceedings in appeal, I consider the refund to be effectively a fee for the exercise of the right to oral proceedings under Article 116, which is in my view is an unallowable curtailment of Article 116. I also consider both legal measures to be steps on a slippery slope to hollowing out Article 116.

Clearly, established practices become flexible these times. Let's brainstorm about other changes that could finally be made now so to move to paperless and fully digital proceedings before the EPO:

• Issuing paper patent certificates only on request. Many offices already do this. The cost-saving could be shared with users by a freeze of the grant fee.
• Acknowledgement receipts should no longer assume the use of fax by applicants. The easiest thing would be a QR code on the letter that can be scanned by the recipient to acknowledge receipt (apparently, "a pilot on using email for notifications related to pending oral proceedings" is considered now, link).
• Let's also delete 'fax'  in Rule 41(2)(c) urgently where the Rule still says: “It is recommended that the fax and telephone numbers be indicated”.
• Online signing with an app. More specifically, it would be very desirable for the EPO to participate in the EU system of recognition of online signatures under the eIDAS regulation (Regulation (EU) 910/2014). National public bodies of EU Member States are required to recognize the national electronic signatures of citizens issued in other EU states under this system (I think this applies in fact to the Patent Offices of EU Member States as well). This allows businesses and citizens (and professionals) to use their national electronic signature throughout the EU in dealing with public bodies. Depending on the electronic signature systems offered in the various Member States, this can be e.g. a secure online app on mobile phones and other devices, thereby finally allowing for signing documents 'on the go'. The eIDAS system goes up to the highest security level 4. Hundreds of public bodies throughout the EU offer eIDAS login (or will offer so once the Regulation is actually implemented). 
• In fact, the EPO itself already  uses (and mandatorily prescribes) eIDAS signatures (https://www.epo.org/about-us/tenders/signatures.html
• Issuing Communications as character-coded text instead of 'dead image PDF'. Hence, Communications wherein you can copy/paste the text without having to run OCR first. If applicants are supposed to file their applications and amended claims in XML in the near future, perhaps the Office can show the example by moving first (I don't dare to ask for Communications in structured text or even in XML, that seems a distant dream). 

On the related topic of oral proceedings, it seems to me that the partial refund of the appeal fee in case of withdrawal of a request for oral proceedings can be further simplified. In particular, if an appellant expressly waives his right to oral proceedings with the Notice of appeal, a corresponding reduction of the appeal fee can be granted. This avoids that applicants file merely formal requests for oral proceedings only in order to benefit from the refund by withdrawing them in due time.
I think such a reduction can be especially advantageous if the Boards would make clear that they will not deal with such appeals out of turn (unless acceleration is requested). The reason is that many appeals appear to be filed only in order to have something pending for a few more years and the risk of a swift refusal of the appeal clearly outweighs any cost saving of the appeal fee. Hence, a confirmation that the appeal will not be dismissed 'out of turn' seems important to provide an effective incentive to appellants to not file merely precautionary requests for oral proceedings and in fact to waive the right to summons.

Furthermore, if applicants and representatives no longer have to travel to Munich or The Hague by the use of video oral proceedings, it seems reasonable to schedule in advance a maximum time (e.g. 2 hours) for video oral proceedings.  This allows for the more compact scheduling of video oral proceedings, especially in technical fields where applicants frequently don't show up at oral proceedings. In the exceptional case that during the video conference it turns out that more time is necessary for a fair discussion of the case, additional video oral proceedings can easily be scheduled for a later day. 

Comments are welcome (even slightly political ones)!

G 0001/18 - Late appeal fee (English)

Key points

• The reasons for G 1/18 were published in English in OJ 2020 A26.
• As a practical matter, the paragraphs are not numbered so it's not so easy to give precise references. The overall structure of the paragraph numbering is e.g. A.II.3.(4).(b).(α) ; with all the reason being in chapter B.
• The question is the interpretation of Art.108 EPC, second sentence: “notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid”; in particular how this sentence must be applied to cases wherein the appeal fee is (factually) paid but after the expiry of the appeal period. The Board notes that the word ‘deemed’ creates a legal fiction.
• The Enlarged Board: “On a first reading of this second sentence (narrow literal interpretation) [which the EBA rejects], its legal fiction can be understood to mean that, on this basis, solely the date of filing the appeal can be established. If, for example, notice of appeal is filed within the two-month period but the appeal fee is filed after expiry of that period, the appeal is deemed, in accordance with this narrow literal reading, to have been filed on the date the appeal fee is paid, that is, in this example, after the two-month period, with the result that the appeal is inadmissible under Rule 101(1) EPC” (reason B.IV.1.(2).(a).
• “On a second reading of this second sentence (broad literal interpretation) [which the EBA adopts], the legal fiction is that, in order for the appeal to be regarded as filed, the appeal fee must have been paid within the two-month period prescribed in the first sentence of Article 108 EPC. The use in the English version of the second sentence in the EPC 2000 of "... until ..." [] introduces a temporal link with the first sentence and thus relates to a filed appeal which becomes effective only if the condition laid down in the second sentence, is satisfied, i.e. the fee was paid either at the same time or later but still within the two-month period.”
• The EBA adopts the ‘broad literal interpretation’, inter alia because G1/86, r.8 had held that: “An appeal is regarded as lodged only when it has been filed and the appropriate fee paid. In performing these two acts the appellant initiates the procedure. The legal process has begun”. The EBA in G1/18 “can only concur with that finding” of G1/86. I note that G1/86 doesn't say 'timely'.
• As a comment, I find the EBA's reasoning about the 'broader literal interpretation' difficult to follow. However, clearly the prevailing view is confirmed.
• The EBA also notes that the outcome is consistent with the proposal of the Haertel draft of July 1961. The EBA appears to conclude that there was never a conscious decision to change the sanction, despite the wording of the prevision being changed during the various rounds of drafting. That argument seems valid and persuasive to me; the Haertel draft is indeed the fundament for the EPC.
• The 1961 draft Article 93  is on page 69 of the FR PDF document with the travaux to Article 108 EPC.
• The Haertel draft as such is available as PDF here and listed on the EPO website here as IV/5569/61-F; the trick is to browse the French version of website. However, that document seems incomplete, e.g. the draft article at issue (then numbered as Article 93) is not included in it. The Haertel draft was originally only in German but is not included in the list of German travaux documents. The draft provision reads: “Wird die Beschwerdegebühr nicht rechtzeitig entrichtet, so gilt die Beschwerde als nicht erhoben.” (DE  Travaux to Article 108, page 4 of the PDF). 
• The EBA: “the deletion of the expression "dans les délais" (or "rechtzeitig" in the German version) suggests that the legislator intended to include, besides cases of late payment, a failure to pay the fee at all, without thereby ruling out that the legal sanction (deemed non-filing of the appeal) was to be communicated to the appellant”. 
• The EBA here considers the amended Haertel draft of 26.09.1961 with reference number IV/5569/1/61-F ( page 64 of the FR Trav. Prep. Doc to Art. 108 ; this draft provision appears to be lacking in the DE version of the Trav. Prep. to Art.108).
• The EBA, with some annotations of me: “Consequently, to conclude [as a Technical Board did] [...] [from the change in IV/5569/1/61-F]  that the legislator no longer wished to treat late payment of the appeal fee as a special case [as was proposed in IV/5569/61-F] (with the result [of the treatment as special case] that the appeal is deemed not to have been filed) amounts to an interpretation that goes beyond the discussions and the draft articles adopted.” 
• Here, the ‘special treatment’ is that the sanction is in Article 93 whereas the sanction for other formal deficiencies was in Article 97 of both the original and the amended Haertel draft. So, the EBA concludes that there was no legislative intent to change the original proposal that the appeal is deemed to not have been filed in case of late payment of the appeal fee.
• The EBA states that “the legal fiction expressed as "recours ... considéré comme non avenu ..." was in fact retained by the drafting committee in the redrafted Article 93 (see above document IV/5569/1/61-F)”. However, Article 93 at issue appears to recite “n'est considéré comme formé” / “est considéré comme non formé” (pages 64 and 69 of the FR Trav. Prep. Doc to Art. 108)
• The EBA furthermore explains that the appeal fee only becomes payable upon filing of the notice of appeal, under Article 4 Rfees. 
  
  
• Note that if no notice of appeal is filed, the appeal is not 'deemed to not have been filed but simply not filed. This is implied by headnote 3. It may be said that in such a case, the Board finds that no appeal has been filed. 

EPO - G 0001/18 OJ 2020 A26 and G 0001/18 (clean html text)


G 1/18 Headnote
1. An appeal is deemed not to have been filed in the following cases:

(a) where notice of appeal was filed within the two-month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two month time limit;

(b) where notice of appeal was filed after expiry of the two-month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two-month time limit;

(c) where the appeal fee was paid within the two-month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND notice of appeal was filed after expiry of that two-month time limit.

2. In the cases referred to in answers 1(a) to (c), reimbursement of the appeal fee is to be ordered ex officio.

3. Where the appeal fee was paid within or after the two-month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND no notice of appeal was filed at all, the appeal fee is to be reimbursed.


A. SUMMARY OF PROCEEDINGS

I. Referral under Article 112(1)(b) EPC

In a letter dated 7 June 2018, the President of the European Patent Office (EPO) referred the following point of law to the Enlarged Board of Appeal under Article 112(1)(b) EPC:

"If notice of appeal is filed and/or the appeal fee is paid after expiry of the two-month time limit under Article 108 EPC, is the appeal inadmissible or is it deemed not to have been filed, and must the appeal fee be reimbursed?"

In that referral, the President of the EPO wrote that the requirements of Article 112(1)(b) EPC had been met: different boards of appeal had given different decisions on that question and an answer to it was necessary "in order to ensure uniform application of the law". As evidence of different decisions, the referral cited T 1897/17 as representing the "minority" view in the case law that the appeal is inadmissible and T 1325/15 and T 2406/16 as representing the "majority" view in the case law that the appeal is deemed not to have been filed. The President of the EPO added that the answer "is certain to have an impact on the practice of the Office's departments of first instance", several EPC provisions having similar wording.

The different board decisions analysed by the President of the EPO in his referral have been summarised as follows.

T 3023/18 - Wrong appeal fee paid

Key points

• The appellant pays the appeal fee at the reduced level with a debit order, although it is a large chemical company.
• " The appellant argued that it was evident from the Notice of Appeal that the full fee was due because no declaration of entitlement to a reduced fee was contained therein, hence the EPO should have deducted the full appeal fee." The appellant also cites case law where a 20% underpayment was considered small and thus rectifiable (the difference between the fee levels is 20%, at the applicable time).
• " The appellant principally relies upon case T0152/82 as support for its argument that its intention to pay the correct appeal fee was clear." 
• "The Board notes that all the cases cited by the appellant concern situations where there was a single correct fee that was to be paid. In such situations the intention of a party is relatively easy to establish as this intention can only have a single object, the one and only correct fee. In the present case there are two different appeal fees that a party can pay, both are correct in that they are both fees that the EPO is expecting to be paid." 
• The Board concludes that: "The EPO has no duty to carry out any ex officio enquiry to determine an appellant's entitlement to pay the reduced appeal fee. In the light of the above, the Board does not accept that it is possible to establish that the appellant's intention was to pay the full appeal fee." As a comment, I note that the Board does not rule out the applicability of T152/82 a priori under the current ADA.
• The Board decides that the amount lacking in the present case to be not "small" within the meaning of Article 8, fourth sentence, RFees.
• The Board also clarifies the status of the "SME declaration" in appeal proceedings: "The appellant did not file the declaration necessary for the payment of the reduced appeal fee. The non-filing of such a declaration is not evidence of a clear intention by the appellant to pay the full appeal fee: it could also be a mistake, as well as an indication that the appellant does not consider itself entitled to pay the reduced fee. The Board notes that it is the practice of the Boards of Appeal to accept such declarations at any time during the appeal proceedings (see T1222/19, point III)." 
• "A teleological interpretation of Article 8, fourth sentence, RFees, sheds light on the correct understanding of this article. In this context, it must be borne in mind that Article 8, fourth sentence, RFees, does not provide for the small amount lacking to be paid at a later date. In other words, "overlooking" within the meaning of the said provision entails that the EPO accepts the payment of an insufficient amount without the user being obliged to make good the shortfall. " As a comment, this not what is said in Singer/Stauder, Art.8 GebO rdn.4, 8th edition.
• The Board also notes that "It seems reasonable to assume that the legislator saw this reduction as being of genuine financial assistance to the listed categories of persons, and not as a merely symbolic reduction. Thus the Board does not consider, for this reason as well, the shortfall to be "small"." 
• The appeal is deemed to not have been filed. The appeal fee is refunded in line with G1/18.
• The appellant was the opponent, so re-establishment was not available as a remedy.

EPO T 3023/18 -  link

Summary of Facts and Submissions

I. The opponent, Borealis AG, (hereafter "appellant"), appeals against the opposition division's decision to reject its opposition against the patent in suit.

II. The Notice of Appeal was filed, and the reduced appeal fee was paid, on the last day for doing so, 18 December 2018. The Notice of Appeal was filed at 16:22 hours on 18 December 2018.

III. The appellant paid the full appeal fee on 8 February 2019.

Reasons for the Decision

The intention of the appellant to pay the full fee was clear from the Notice of Appeal

1. The appellant principally relies upon case T0152/82 as support for its argument that its intention to pay the correct appeal fee was clear.

2. T0152/82 concerns the payment of the wrong amount of an appeal fee, when at the time of payment the appeal fee had just been increased. The appellant in T0152/82 became aware of this after the time limit for paying the appeal fee had passed and paid the difference thereafter. The board considered the intention expressed in the debit order: this intention was taken to be that the appellant wished the valid amount of the appeal fee to be debited. The board found that the debit order could therefore be carried out in the clearly intended manner by the EPO itself without any further enquiry being necessary.

T 1222/19 - Wrong appeal fee paid

Key points

• The applicant files a Notice of appeal and pays the appeal fee at the reduced rate for SME's (the Notice and debit order (Form 1038E) are signed by in house counsel). The Board requests evidence of the SME status. The applicant in reply acknowledges that it is not an SME and requests re-establishment of rights.
• The Board decides that the appeal is deemed not to have been filed. 
• The request for re-establishment is refused because all due care has not been shown. The Board recalls that an error of a representative is "grundsätzlich nicht entschuldbar" .
• In this case, the representative had asked the assistant to fill in the debit order (with Online Filing Software) using the normal appeal fee. However, because the amount of the reduced rate was the same as the normal (only) fee rate until the fee increase of 1 April 2018, the assistant chose the familiar amount and the attorney did not spot the error when signing. 
• The appeal fee is refunded. 
• As a comment, the Board does not discuss the 'good faith' principle that the EPO should inform parties of easy-to-spot errors if there is still time for correcting the error. I note that the appealed decision was dated 15.11.2018, the Notice of appeal was filed 03.01.2019 without a declaration of SME status (see J8/18 about this SME declaration, see T 0703/19 about "good faith" being available as remedy for payments of appeal fees).

EPO  T 1222/19 - link

Sachverhalt und Anträge

I. Die Beschwerdeführerin wendet sich gegen die am 15. November 2018 zur Post gegebene Entscheidung der Prüfungsabteilung, mit der die Anmeldung Nr. 07 857 786.3 zurückgewiesen wurde.

II. Am 3. Januar 2019 reichte die Beschwerdeführerin Beschwerde gegen die Entscheidung der Prüfungsabteilung ein und zahlte am gleichen Tag den für kleinere und mittlere Unternehmen (KMU) i.S.v. Regel 6 (4) a) und (5) EPÜ geltenden, ermäßigten Betrag für die Beschwerde­gebühr i.H.v. EUR 1.880,00 anstelle des regelmäßigen Betrags i.H.v. EUR 2.250,00. Eine gesonderte Erklärung der Beschwerdeführerin über ihre Eigenschaft als KMU ging nicht ein. Die Beschwerde wurde mit Schriftsatz vom 5. März 2019, eingegangen am 21. März 2019, begründet.

III. Die Kammer wies die Beschwerdeführerin in einer Mitteilung vom 24. Mai 2019 darauf hin, dass sie begründete Zweifel an der KMU-Eigenschaft der Beschwerde­führerin habe und forderte sie auf, einen entsprechenden Nachweis einzureichen. Gleichzeitig wies die Kammer darauf hin, dass für den Fall, dass die Beschwerdeführerin kein KMU sei, die Beschwerdegebühr in zu geringer Höhe und damit nicht wirksam eingezahlt worden sei.

IV. Mit Schriftsatz vom 18. Juli 2019, eingegangen am 24. Juli 2019, hat die Beschwerde­führerin angegeben, kein KMU zu sein. Gleichzeitig hat sie Antrag auf Wiedereinsetzung i.S.v. Artikel 122, Regel 136 EPÜ in die Zweimonatsfrist gemäß Artikel 108 Satz 1 EPÜ gestellt, die Gebühr für den Wiederein­setzungs­antrag und den Differenzbetrag zu der vollständigen Beschwer­de­gebühr gezahlt sowie ihren Wiedereinsetzungs­antrag begründet.

Entscheidungsgründe

1. Die Beschwerdeführerin hat innerhalb der zweimonatigen Beschwerdefrist i.S.v. Artikel 108 Satz 1 EPÜ zwar Beschwerde eingelegt, nicht jedoch den vollständigen, für sie als Nicht-KMU geltenden Betrag für die Beschwerdegebühr i.H.v. EUR 2.255,00 gezahlt. Die Beschwerde gilt daher als nicht eingelegt, Artikel 108 Satz 2 EPÜ (vgl. G 1/18, Leitsatz 1 a)).

2. Etwas Anderes würde jedoch gelten, wenn der Antrag der Beschwerdeführerin auf Wiedereinsetzung in die Beschwerdefrist gemäß Artikel 122, Regel 136 EPÜ begründet wäre.

2.1 Die Zulässigkeitsvoraussetzungen gemäß Artikel 122 (2), Regel 136 (1) und (2) EPÜ für den Wiedereinsetzungs­antrag sind erfüllt.

2.2 Ein Antrag auf Wiedereinsetzung in den vorigen Stand ist dann begründet, wenn der Antragsteller gemäß Artikel 122 (1) EPÜ die nach den gegebenen Umständen gebotene Sorgfalt beachtet hat und trotzdem daran gehindert war, eine Frist einzuhalten. Die Recht­sprechung der Beschwerdekammern hat zwei Kriterien für die Beachtung der gebotenen Sorgfalt entwickelt. Die Fristversäumung muss