T 0129/24 - Not paying the opposition fee

Key points

• The opponent filed an opposition in August 2020 using Form 2300E, but did not specify a debit order or fee payment method in that form. The reasoned statement of opposition did not indicate a (purported) debit order or a statement about an attached debit order.
• The OD decided that the opposition was deemed not filed for not paying the prescribed fee in time (after holding oral proceedings which lasted two hours, see the minutes.
• The opponent appeals. The Board summons for oral proceedings, but these are cancelled after the appellant (opponent) announces that it will not attend the hearing.
• The appeal is dismissed.
• The most interesting points are the following. First, the OD / formalities officer first issued an invitation on 03.09.2020 to reply under Rule 79 to the proprietor (supposedly, the OD / formalities officer declares the opposition inadmissible ex officio / in the ex parte procedure of Rule 77(1). The formalities officer then issues a notice of loss of rights to the opponent (03.09.2020). The opponent then requests re-establishment (which is not available for the opponent for non-payment of the opposition fee). 
• On 21.05.2021, the formalities officer issued a letter stating "for the opposition division" that "Opposition was filed with EPO Form 2300 on 20.08.2020. However, the method of payment was not specified on the mentioned form. Having regard to the circumstances including technical aspects, the EPO has come to the conclusion that the opposition fee is considered deemed to have been paid due in time, i.e. on 20.08.2020."
• The formalities officer then issues a new invitation to the proprietor to reply to the opposition (18.06.2021).
• The proprietor contests the validity of the payment of the opposition fee.
• The OD is enlarged with a legal member, and summons are issued.
• The OD issued summons. The preliminary opinion was negative on the validity of the payment. The OD noted that at the relevant time, OLF (old), in the then applicable version 5.12, did give a warning if the payment method was left 'not specified'). The OD also qualifies the letter of 21.05.2021 as a preliminary view.
• The opponent in appeal inter alia argues that the EPO's letter of 21.05.2021 created legitimate expectations that the opposition fee was considered to have been paid.
• The Board: "The principle of the protection of legitimate expectations is a general principle well established in EU law and generally recognised in the EPC contracting states and boards of appeal case law (see CLB III.A.1). The protection of the legitimate expectations of users of the European patent system has two main principles. 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. ... In the present case no legitimate expectations were created because the above conditions were not fulfilled as will be explained in the following paragraphs.
• "contrary to how the appellant has argued, the opposition division did not conclude (communication of 21 May 2021) that the opposition fee was "in fact paid on time". Rather it concluded that the "opposition fee is considered deemed to have been paid due in time, i.e. on 20 August 2020". In other words the opposition division merely treated the fee as if it had been paid on 20 August 2020 which was the last day of the 9 month opposition period. The appellant does not otherwise dispute the opposition division's statement of fact in its decision (facts and submissions, 5) that the opposition fee was paid on 9 October 2020 together with a fee for re-establishment of rights under Article 122 EPC. Indeed the appellant confirmed this in its appeal grounds (page 1, second bullet point), thus it appears indisputable that in fact the opposition fee was paid late, several weeks after the end of the nine month opposition period."
• "he Board takes the view that T595/11 [blog post] is not relevant to the present case. In that case, a formal check that the correct appeal fee had been paid had not been carried out four years after the filing of the appeal (see reasons point 1.7 and 1.8), and the board in that case considered that after such a long time, since the issue had not already been raised, a legitimate expectation that the fee had been correctly paid was created.
• The present case is not comparable in that the formal check that the opposition fee had been paid was not delayed but timely carried out at the start of the opposition proceedings and the opponent correctly notified of the result that it had not been paid (see communication noting loss of rights of 29 September 2020). The Board also does not see that any legitimate expectations comparable to those considered in T595/11 were created by the opposition division's communication of 21 May 2021, informing the opponent that the opposition fee was deemed to have been paid. This is because the issue had already been raised and the opponent was aware that the proprietor had not commented on the matter at that stage of the proceedings. Indeed, the proprietor questioned the correctness of the information in the communication of 21 May 2021 at its earliest opportunity (27 October 2021) about five months after the communication. This position was taken up by the opposition division in its annex to the summons of 9 December 2022. "

• Compare T 0130/19 for a similar case, but with crucial factual differences.

EPO 

The link to the decision is provided after the jump.

J 0004/23 - Getting on the list without passing the EQE (not)

Key points

• "The requestor (the appellant) asked to be entered on the list of professional representatives before the EPO. He addressed the Vice-President in charge of the Directorate-General for Legal and International Affairs (VP5) and requested an exemption from the requirement of passing the European Qualifying Examination (EQE) as set out under Article 134(2)(c) EPC [i.e. the EQE]. For his request, he relied on the following information published on the EPO's website at the time of the request (emphasis added): "... in accordance with Article 134(7) EPC, the Vice-President in charge of DG5 is entitled to grant exemption from requirements (a) and (c) of Article 134(2) EPC (see Decision of the President of the EPO dated 1 December 2011 delegating his powers to decide on requests for exemption from requirements for entry on the list of professional representatives, OJ EPO 2012, 13)".

• IV. In reply, VP5 informed the requestor that the erroneous information on the website had been rectified but that the request for an exemption could not be granted since there was no possibility of being exempted from having to pass the EQE other than the so-called grandfather clause under Article 134(3) EPC, which was not applicable to the requestor's case."

• After some back and forth, the requester is at the Legal Board. T" The appellant further submitted that it was he who had found this "crack" in the system and that he should therefore be able to benefit from it. The "crack" had also been closed since as the EPO had removed the information from its website, so there was no danger for the EPO that anybody else could claim an exemption in the future. But in his case, he could rely on what had been stated on the website when he had filed his request for an exemption."

• The Board dismisses the appeal.

• "The facts of the case are not disputed. The appellant has not passed the European qualifying examination (EQE). He also confirmed during the oral proceedings that there was no legal basis in the EPC under which the EPO could grant an exemption from the requirement under Article 134(2)(c) EPC to pass the EQE for being entered on the list of professional representatives. Indeed, no such legal basis exists.

  The appellant also confirmed at the oral proceedings before the Board that he relied solely on the principle of legitimate expectations, also called the principle good faith, for his main request."

• "As set out above under point 2., the principle of legitimate expectation is not unrestricted, and it is inherent in the principle that a person can only successfully invoke an expectation on which they could, on an objective basis, legitimately rely. It must be established that, on an objective basis, it was reasonable for a requestor to have been misled by the information on which they relied, here the information of the EPO's website. The appellant has not sufficiently and convincingly demonstrated in his favour that this is the case."

As a comment, I'm not 100% sure if getting on the list without passing the EQE should not be ruled out a priori (except for cases of new contracting states acceding to the EPC under  Article 134(7) EPC). 

•  After some analysis: "Hence, even if the appellant had the expectation that an exemption for the requirement set out in lit. (c) of Article 134(2) EPC could be granted, this expectation was not legitimate."
  
  
• "The principle of the protection of legitimate expectations

• 2. The principle of the protection of legitimate expectations is well established in proceedings before the EPO. This is also made clear in the decisions referred to by the appellant (see above point VII., in particular the decisions of the Enlarged Board of Appeal G 2/97, G 5/88 and G 5/93). It is thus not necessary to invoke, as the appellant did, further legal principles, such as legal certainty or the rule of law, in support of the principle's existence.

  However, the principle of the protection of legitimate expectations does not give a carte blanche to the person relying on it. Rather, it is subject to several limitations (see in general Case Law of the Boards of Appeal, 10th edition 2022, III.A.2.2). First and foremost, not any expectation held by a person is automatically a legitimate one within the meaning of this principle. Whether an expectation is legitimate must be assessed by applying the principle to the facts of the case and, depending on the circumstances of the case, the relief sought may or may not be granted.

  It is therefore inherent in the principle of the protection of legitimate expectations that a person can only successfully invoke an expectation on which they could, on an objective basis, legitimately rely. As put by the Enlarged Board in G 2/97, the erroneous information from the EPO must objectively justify their conduct (G 2/97, Reasons 4.1, citing T 460/95). Therefore, it must be established that, on an objective basis, it was reasonable for the appellant to have been misled by the information on which he relied (see also J 27/92, Reasons 3.2; on the requirement to know the relevant legal provisions, see J 10/17, Reasons 3.3)."

EPO 

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

T 1338/20 - Covid extension and admissibility appeal

Key points

• "The applicant (appellant) filed a letter dated 19 March 2020 ("the appeal letter") stating "We hereby pay the fee for appeal of EUR 2 255. Our Statement of Grounds of Appeal will follow in due time", and referred to the examining division's decision dated 28 January 2020. On 26 May 2020, the appellant filed its statement setting out the grounds of appeal together with amended claims of its sole request."
• The letter of 19 March 2020 contains no unambiguous statement that it is an appeal and is, hence, no valid Notice of appeal. 
• "In the case at hand, the impugned decision was notified on 28 January 2020. In normal circumstances, the two-month time limit under Article 108, first sentence, EPC for filing the notice of appeal would therefore have expired on 7 April 2020 (Rule 126(2) EPC as valid from 1 April 2015 to 31 October 2023). However, the notices of the EPO concerning disruptions due to the COVID-19 outbreak, dated 16 April 2020 (OJ EPO 2020, A43) and 1 May 2020 (OJ EPO 2020, A60), come into play here. With these notices, the EPO announced that time limits expiring on or after 15 March 2020 were extended for all parties first to 4 May 2020 and then to 2 June 2020 under Rule 134(2) EPC. As per J 10/20, even if there had been no "general dislocation in the delivery or transmission of mail" within the meaning of Rule 134(2) EPC, users could still rely on these publications without suffering any disadvantages."
• Note, there appears to be no requirement that the users (or the EPO) subjectively believe the notices to be legally correct for the principle of legitimate expectations of G 2/97 to apply. See J 10/20. 
• The statement of grounds of May 2020 was, therefore, in time to be a Notice of appeal. It contains the statement: "In the statement of grounds of appeal dated 26 May 2020 (i.e. before the expiry of the extended time limit under Rule 134(2) EPC), the appellant stated that it was writing "further to the notice of appeal dated March 19, 2020, relative to the decision dated January 28, 2020, to refuse the above-referenced patent application".
• The Board considers this statement to meet the requirement that the Notice must state that an appeal is filed.
• The sole claim request of the appellant is not admitted.

EPO 

You can find the link to the decision and an extract of it after the jump.

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 2012/20 - Who signs the notice of appeal

Key points

• This appeal deals with a request for re-establishment in connection with the appeal fee. The appeal fee was paid at the reduced rate in 2020. No SME declaration was filed when filing the Notice.
• The EPO sent out a letter "for the examining division" informing the applicant/appellant that the missing amount could still be paid within two months from the letter or alternatively the declaration could be filed. This letter was sent 24.11.2020.
• The appellant filed a request for re-establishment within the two-month period from the letter and paid the appeal fee at the full rate. 
• The Board grants the request for re-establishment. 
• "In view of all these factors (COVID-19, information provided in FAQ, electronic means previously used by the EPO, filing of appeal more than two weeks before deadline), the board considers that in the particular situation of the case at hand there are exceptional circumstances leading to the conclusion that due care had been taken and consequently justifying the re-establishment of rights."
• The only claim request is, however, not admitted under the "should have been filed" prong of Art. 12(6) RPBA 2020. Hence, the appeal is dismissed.
• A divisional application was filed.
• Back to the re-establishment request: " In the present case the representative had instructed the assistant via email (13 November 2020, 10:41 hrs) to promptly file an appeal. ... It is also apparent from the file that, as a result of the representative's email, the appeal was filed on the same day (electronic receipt of the appeal generated on 13 November 2020 at 14:00 hrs) and an appeal fee was paid. In the notice of appeal "the appeal fee" is mentioned, whereby no reference is made to a reduced fee. The board concludes from the evidence presented that the assistant knew how to file the appeal and how to pay the appeal fee, but, for whatever reason, paid the reduced fee instead of the normal fee."
• Noteworthy is that the Notice of appeal and the Form 1038E with the debit order both mention the name of a professional representative as the signature. The receipt indicates that the EPO smart card in the name of the same professional representative was used for submitting the documents with online filing, in turn implying that the assistant also used the PIN code of the smart card.
• There is some case law suggesting that errors of professional representatives are not easily compatible with the due care for re-establishment, unlike errors of assistants.
• The Board does not comment on whether the task of preparing, signing, and submitting a Notice of appeal can be delegated to an assistant and on whether, generally, an assistant can sign letters to the EPO "with the signature of" a professional representative. 
• The time limit for filing the Notice of appeal expired only on 28.11.2020, so the EPO's letter of 24.11.2020 was a warning about the incorrect appeal fee within the appeal period. The Board, however, considers it insufficient in the circumstances of the case. 
• "It is evident that a representative reading this information expects to be promptly warned if a deficiency is apparent. In the case at hand, such a deficiency was readily recognised by the European Patent Office, as can be seen from EPO Form 2901 (see A3). The latter was generated on 17 November 2020 (date at the bottom of the form), but post-dated 24 November 2020 - which is the normal procedure within the EPO (see, for example, G 12/91, Reasons 9.1) - and sent via registered mail. It was received by the appellant on 9 December 2020. Although registered mail was the official way of communication of the EPO, a representative reading the above response of the EPO to the FAQ would have expected the warning to be forwarded by the fastest possible means, especially if the time limit for paying the appeal fee had not yet expired, but was close to expiry. This is all the more applicable, since at that time the restrictions due to the COVID-19 pandemic were highly likely to impact the normal functioning of postal services (see also A1 and A2)."
• As a comment, G 2/97 confirmed that "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." It seems reasonable that the EPO must (try to) give the warning effectively and that sending a registered letter may not always be sufficient.
• However, as I understand it, if the protection of legitimate expectations applies (alternatively the principle of good faith), that principle acts as a remedy on its own, and the request for re-establishment would be moot. The fee for re-establishment could be refunded.
• 
  

EPO 

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

T 2726/17 - Filing the notice of appeal with web-form filing

Key points

• The applicant filed a notice of appeal using web-form filing.
• "According to Article 2 of the Decision of the President of the European Patent Office of 10 September 2014 (OJ EPO 2014, A98, "Decision") the filing of appeal documents via the EPO web-form filing service is not permitted, the consequence being that such documents are deemed not to have been received, see Article 2(2) of the Decision. Pursuant to the last sentence of Article 2(2) of the Decision, the sender of such web-form filed documents, if identifiable, will be notified without delay of this deemed non-receipt."
• However, not all is lost.
• " The sender of the notice of appeal was identifiable. Between the actual filing of the notice of appeal on 13 September 2017 and the final date of the time limit for filing the notice of appeal (6 October 2017) there was sufficient time for the EPO to notice the irregularity in the filing of the notice of appeal, to inform the appellant thereof and for the appellant to resubmit the notice of appeal by accepted means. It appears from the file that no such notification was issued. The appellant has confirmed this in its letter dated 4 January 2018."
• "In the light of the above, the Board, in accordance with the principles of legitimate expectations and of good faith (see, for instance, T 14/89, OJ 1990, 432, headnote), considers the notice of appeal as having been duly received."
• As a comment, web-form filing could be used in September 2017 for giving debit orders (in general, i.e. in first-instance proceedings). The prohibition of giving debit orders by webform filing entered into force a few months later.
• "The grounds of appeal were filed on 9 November 2017 again using the EPO web-form filing service."
•  The Board does not comment expressly on why the statement of ground is considered to be validly filed. 

EPO 

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

J 0010/20 - Covid extension lacks clear legal basis but saved

 Key points

• The extension of periods from 15 March to 2 June 2020 by way of  Notice of the EPO (OJ 2020, A60) because of Covid-19 by the president was adopted under Rule 134(2). However, Rule 134(2) requires “a general dislocation in the delivery or transmission of mail” in Germany or The Netherlands and post was actually delivered without significant disruptions in that period.
• The Legal Board, when deciding whether the appeal at issue was filed in time: “Rule 134(2) EPC, however, does not refer to a "general dislocation" as such [as mentioned in the Notices of the EPO ], but to a "general dislocation in the delivery or transmission of mail". The [Notices] are silent on whether there was a general dislocation in the delivery or transmission of mail in the Federal Republic of Germany. It thus seems likely that these Notices are based on an application of Rule 134(2) EPC by analogy []. Ultimately, however, this question can be left open.”. 
• The Legal Board then turns to the principle of legitimate expectations. “even if there was no general dislocation in the delivery or transmission of mail in the Federal Republic of Germany during the relevant period, and even if it were not possible to apply Rule 134(2) EPC by analogy under the given circumstances, users could still rely on the information on the extension of time limits provided in the Notices of the European Patent Office without suffering any disadvantages” because under G2/97, “Users must not suffer a disadvantage as a result of having relied on erroneous information received from the EPO”.
  
  
• The appeal concerns the rejection of a RE request because the RE fee was not paid in time, according to the Receiving Section, and the underlying question of whether the further processing fee was paid in time.
• The applicant gave a payment order “on [the last day of the period, a Friday] by a Brazilian bank which has a subsidiary in one of the contracting states to the EPC, namely the United Kingdom. Therefore, the fee should be considered to have been paid in due time under Article 7(3) of the Rules relating to Fees [according to the applicant].” The money entered the EPO bank account on the next Monday.
• There was an Italian lawyer under ARticle Article 134(8) appointed, but that representative did not submit a debit order and indicated that the payment would be made by bank transfer.
• The Board: “under Article 7(3) of the Rules relating to Fees it is of no relevance whether the banking establishment through which payment is made has a subsidiary in one of the contracting states or not. What matters is whether the payment, through a banking establishment, was made in a contracting state (see T 401/97, points 4 and 5 of the Reasons). In the present case, the order to transfer the amount of the payment was given in Sao Paulo, Brazil, and therefore not in a contracting state. Article 7(3) of the Rules relating to Fees is thus not applicable.”
• The RE request is considered to be not filed in the two-months period. “ Even if the cause of non-compliance had, as alleged by the appellant, only been removed on 11 March 2019, the prescribed fees for re-establishment of rights were still only paid on 17 February 2020. This would in any case be long after the expiry of the two-month time limit under Rule 136(1) EPC.”
• The removal of the cause of non-compliance was actually 1 February 2019 when the appointed representative was informed by the EPO, not 11 March 2019 when the applicant, a natural person in Brazil was allegedly informed of the situation.
• A letter with a request for re-establishment ('Memorandum in support of the request for further processing'  but referring to all due care) was filed 31.03.2019.
• The re-establishment fee was (according to the decision) paid with the Notice of appeal. The submitted Form 1038E indicates the debit order for the appeal fee.
• The impugned decision of the Receiving Section indicates that the RE request is deemed to not have been filed (at that time, the fee had not been paid) and that the European patent application is deemed to be withdrawn with legal effect of a certain date (expiry of the original period) and that all fees paid after the date of legal effect will be refunded once the decision becomes final. 
• The EPO had issued a Notice under Rule 51(2) concerning the renewal fee for the 3rd year in the course of the proceedings.
• The renewal fee for the 4th year was paid in the course of the appeal proceedings.
• The original period was for the fees under Rule 159. The Italian lawyer had only filed the translation(s) and the  Form 1200 Request for entry into the European phase, indicating that the fees would be paid by bank payment and not including a debit order.

EPO Headnote

If the European Patent Office issues a promise or statement on how to act in a given area, the principle of legitimate expectations requires that promise or statement to be honoured unless there is good reason not to do so. Users and representatives cannot be expected to question, without any apparent reason, statements on the extension of time limits which are made in publications under Rule 134(4) EPC. Even in the absence of a general dislocation in the delivery or transmission of mail, they can rely on such publications without suffering any disadvantages

EPO J 0010/20 J10/20 J 10/20

https://www.epo.org/law-practice/case-law-appeals/recent/j200010eu1.html

Summary of Facts and Submissions

I. The appeal of the applicant (appellant) lies against the decision of the Receiving Section of 5 December 2019 on European patent application No. 16874169.2. In this decision, the appellant's request for re-establishment of rights into the period for filing a request for further processing was deemed not to have been filed and the European patent application was deemed to be withdrawn with effect of 17 July 2018.

II. On 16 July 2018, the appellant filed Form 1200 for entry into the European phase of the international application No. PCT/BR2016/050317.

T 1295/20 - Using webform filing in appeal proceedings

 Key points

• This is an interlocutory decision in examination appeal.  The Notice of appeal lacked the address of the appellant (Rule 99(1)(a). The Registrar invites on 13.07.2020 the applicant to remedy the deficiency within two months (Rule 101(2). The applicant submits the address with a letter of 22.07.2020, however using webform filing. The letter includes the signatures of a European patent attorney.
• Webform filing is not permitted inter alia for appeal proceedings according to the Decision of the President in OJ 2018, A45. That decision provides that "Documents filed in contravention of paragraph 1 will be deemed not to have been received. The sender, if identifiable, will be notified without delay."
• In this case, the sender was notified by the Registrar on 22.10.2020, well after the expiry of the two-month period. Hence, the document is in principle deemed not to have been received and the appeal inadmissible. 
• The appellant files a letter with the address using online filing on 03.11.2020 and (auxiliary) submits a request for further processing with payment of the fee. 
• The present Board decides that the principle of good faith (legitimate expectations) applies. The EPO should have informed the applicant of the error with the webform letter of 22.07.2020 as the error was clear (e.g. in the footer of the letter, receipt by webform was indicated), the appellant could easily be contacted (it was just the applicant on file) and there was still enough time until the expiry of the period. 
• The appeal is therefore admissible and the further processing fee is refunded.
• The Board: “Die Beschwerdeführerin konnte daher erwarten, dass sie unverzüglich auf die nicht statthafte Einreichung ihres Schreibens vom 22. Juli 2020 mittels Web-Einreichung hingewiesen würde. Dies hätte es ihr - angesichts der fast 2 Monate vor Fristende der ihr gesetzten Zweimonatsfrist erfolgten Nachreichung ihrer Anschrift mittels Web-Einreichung - erlaubt, die fehlende Anschrift mittels einer zulässigen Einreichungsform noch fristgerecht nachzureichen.”
• As a comment, see e.g. also T 1633/18 regarding webform filing for an appeal document, and the principle of protection of legitimate expectations. Moreover, T0662/09 held that “It is standard case law that the provisions of Rule 99(1)(a) EPC [i.e. including the address] are satisfied if the notice of appeal contains sufficient information for the identification of the party.” The Notice of appeal mentioned the name of the appellant, which appears to be the applicant on file, and was submitted by the representative on file. I'm not sure if the invitation of 13.07.2020 was justified from the outset, I'm also not sure if the Board can review the decision of the Registrar to send out the invitation under Rule 101(2).
• The order of the decision is that “ 1. Die Behebung des Mangels der fehlenden Anschrift ist als rechtzeitig zu betrachten” (and refund of the FP fee)  I note that the Board does not decide that the appeal is admissible. I also note that the Notice of appeal was filed using OLF on 16.04.2020 and already included the grounds such that it may possibly not relevant that a copy of the Notice of appeal was filed with webform filing also on 22.07.2020, so about 4 months after the refusal decision dated 16.03.2020. 

EPO T 1295/20 - https://www.epo.org/law-practice/case-law-appeals/recent/t201295du1.html

Sachverhalt und Anträge

I. Am 16. April 2020 wurde Beschwerde gegen die Entscheidung der Prüfungsabteilung über die Zurückweisung der europäischen Patentanmeldung Nr. 17 181 318.1 eingelegt.

II. Mit einer Mitteilung gemäß Artikel 108 Satz 1 und Regel 101 (2) EPÜ vom 13. Juli 2020 beanstandete die Geschäftsstelle der Kammer, dass die Beschwerdeschrift entgegen Regel 99 (1) a) EPÜ in Verbindung mit Regel 41 (2) c) EPÜ nicht die Anschrift der Beschwerdeführerin enthielt. Die Beschwerdeführerin wurde aufgefordert, diesen Mangel innerhalb einer Frist von zwei Monaten nach Zustellung dieser Mitteilung zu beheben. Sie wurde auch darauf hingewiesen, dass wenn dieser Mangel nicht rechtzeitig behoben werde, die Beschwerde voraussichtlich gemäß Artikel 108 Satz 1 EPÜ in Verbindung mit Regel 101 (2) EPÜ als unzulässig zu verwerfen sei.

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.

J 0006/19 - Retraction of withdrawal

Key points

• The applicant withdrew an already published Euro-PCT patent application with a letter filed on 19.12.2018. On 20.12.2018, the EPO issued the Form 205 "Closure of the procedure". The withdrawal was “published in the European Patent Register early in the morning of 21 December 2018.” 
• The applicant requested a correction of the withdrawal on 21.12.2018 received at 10:57 hrs.
• The applicant submitted that the correction request was timely filed, inter alia because it was “entitled to the protection of its legitimate expectation that its request for retraction would be filed in due time because it relied on the advice given orally on 20 December 2019 by the formalities officer that this request could be filed "...within two days", i.e. until 21 December 2018”.
• The Legal Board does not allow the appeal (against the decision to refuse the requested correction).
• The Legal Board: “In this case, the withdrawal appeared in the European Patent Register early in the morning of Friday, 21 December 2018, after the publication run. The public had thus already been officially notified of the withdrawal of the application when the request for retraction of the withdrawal was received by the EPO on 21 December 2018 at 10.57 hrs. Furthermore, at the time of the official notification, the public had no reason to suspect that the withdrawal could be erroneous and later retracted. As already noted, the request for withdrawal was unqualified, unambiguous and unconditional. And the request for retraction of the withdrawal, filed on 21 December 2018, would not have been available for file inspection until at least the following day, 22 December 2018.”
• As to the argument based on legitimate expectations, the Legal Board notes the following.
• “The principle of the protection of legitimate expectations governs all procedural action taken by EPO employees vis-à-vis parties to proceedings, including telephone calls, which are not part of the formal procedure ”
What was said during the phone call was not decisive, because the Legal Board recalls that “in any case the authorised representative is expected to be aware of the relevant law and case law”.
• “In particular [representatives] are expected to know that a filed document is likely to become visible in the European Patent Register once it has been coded by the EPO (see FAQ - European Patent Register on the EPO website). In this case, Form 2058, "Closure of the procedure in respect of application n° 15848194.5", was issued on 20 December 2018. The appellant could then have expected the withdrawal to be published early in the morning of the following day, after the publication run. Thus, it was the appellant's own responsibility to file the request for retraction before the withdrawal appeared in the Register.”
• The cited FAQ is probably this one. It includes the remark that: "When will a document or correspondence become visible in the European Patent Register? For publicly available outgoing communications: on the day after the date of despatch. For publicly available incoming communications: once the filed document has been coded by the EPO. Please note that the date displayed alongside a document in the All documents view is the date of receipt by the EPO."
• Therefore the request for correction was not timely filed, according to the Legal Board.

Disclosure: my firm was involved.

EPO J 0006/19 -  link

Text of the decision omitted here because it contains personal details (names of persons involved).

J 0003/20 - Designated states and divisional application

Key points

• In this examination appeal, the applicant actively withdrew the designation of GB in the course of proceedings. The applicant then tried to file a divisional application requesting to have all EPC Contracting States designated, i.e. trying to reinstate GB as designated state.
• The problem with this request is that Article 76(2) states that : “All the Contracting States designated in the earlier application at the time of filing of a European divisional application shall be deemed to be designated in the divisional application.”
• The Legal Division rejected the request concerning GB, the Legal Board of Appeal dismisses the appeal.
• The Legal Board of Appeal: “Under Article 76(2) EPC only those states that had been designated in the earlier application at time of filing the divisional can be designated in the divisional. A designated state forfeited in the parent application at time of filing the divisional cannot be revived in the divisional one” (emphasis in the original).
• The applicant also requested a correction of the withdrawal of the designation of GB - in the parent, as I understand it - under Rule 139 EPC. The Board does not admit the request under  ‘Article 12(4) to (6) RPBA 2020’
• “In the present case the appellant submitted its request for a correction of the withdrawal of Great Britain as designated state and the facts underlying this request for the first time with the grounds of appeal.
  During the first instance proceedings it did not give the slightest hint that the representative had withdrawn the designation of Great Britain in the earlier application (parent) contrary to the applicant's true intention, nor did it request a correction of the withdrawal although at that time the applicant was already aware of the relevant facts and thus could and should have presented them.
  Thus, the appellant presented a completely fresh case for the first time in the appeal proceedings, which is tantamount to treating the appeal as a new independent proceeding rather than as a judicial review based on the facts presented in the first instance.”
• “The circumstances of the case do not justify the admittance of these new submissions either.”
• In the parallel case J 14/18, the request for correction was held inadmissible under Art. 12(4) RPBA 2007 since “Under Article 114(2) EPC and Article 12(4) RPBA 2007 the board has the discretion not to admit facts and evidence which could and should have been presented in the first instance proceedings.”
• As an exercise for the reader, is a request under Rule 139 a 'fact'  or 'evidence' in the sense of Article 114(2) EPC?
• The appellant also invoked the principle of the protection of legitimate expectations during the oral proceedings before the Board. The Board does not admit these submissions.
• “Under Articles 12(4) and (6) and 13(1) RPBA 2020 the board has the discretion not to admit new submissions.”
• “Moreover, a party has to present the complete case already with the statement of grounds of appeal (Article 12(3) RPBA 2020) which requires a complete preparation considering all the relevant documents that are available. Thus, no reasons are apparent that could justify why the appellant presented the new objection and the underlying facts for the first time at such a late stage of the proceedings thereby counteracting principles of procedural economy. Therefore, the appellant should have filed the new submissions already during the first instance proceedings”.
• “ If the appellant had really trusted the content of the communication sent by the EPO on 10 August 2016 in the case J 14/18, it would have been aware of this fact from the moment of taking note of that information. Hence, the appellant could have submitted these facts already during the first instance proceedings.”

Headnote

Under Article 76(2) EPC only those states that had been designated in the earlier application at time of filing the divisional can be designated in the divisional. 

A designated state forfeited in the parent application at time of filing the divisional cannot be revived in the divisional one.

EPO J 0003/20 -  link

In substance the same analysis was given in the parallel cases J 14/18, J 13/18, and J 12/18, all of 19.05.2020 and all with the same applicant.

Reasons for the Decision

1. Article 76(2) EPC

1.1 As correctly pointed out in the appealed decision, the inclusion of Great Britain as validly designated state in the divisional application on file was not possible because the appellant had withdrawn the designation of this state in the earlier application (parent) previously, before the time of filing of the divisional application.

1.2 According to Article 76(2) EPC all the Contracting States designated in the earlier application (parent) at the time of filing of a European divisional application shall be deemed to be designated in the divisional application. The appellant considered that the wording of this provision does not exclude the designation of Contracting States in a divisional application even if the designation of these states had already been withdrawn in the earlier application at the time of filing the divisional application.

T 2277/19 - You get what you (don't) see

Key points

• This concerns a patentee appealing against the grant because after the grant he realized that the Druckexemplar is not the version that he thought would be granted.
• Board 3.2.02  does not follow T 1003/19 (Board 3.3.05) and T 2081/16 ( Board 3.5.03).
• The present Board: “in the board's view, there is no legal basis in the European Patent Convention for a distinction between the text referred to in a communication under Rule 71(3) EPC and that reflecting what the examining division actually intended. Moreover, Rule 71(6) EPC addresses the possibility that the text communicated under Rule 71(3) does not reflect the appellant's requests. In the board's judgement, Article 71(3) EPC thus imposes on the applicant a duty to check and verify this text. The fact that an applicant does not exercise its right to request amendments under Rule 71(6) EPC can therefore only be interpreted as approval of the communicated text, i.e. the text intended for grant. Whether the applicant notices a possible error has no effect on the fact that this approval is binding.”
• The Board refuses to refer questions to the Enlarged Board of Appeal: “The question does not warrant a referral to the Enlarged Board of Appeal, since the board has no doubt as to how to answer the question on the basis of the European Patent Convention”. 
• I note that the issue with the Druckexemplar present application appears to be a case of ‘unmarked Examiner's amendments’  in the Rule 71(3) Communication. I realize that ‘Examiner's amendments’ is USA terminology; for the EPO ‘amendments by the examining division of own motion’ is more appropriate. Though I suspect that it actually boils down to hiccups in the software systems used by the EPO in the preparation of the electronic Druckexemplar, in the sense that the Examiner does not forget to include changes he makes in the ‘special field provided at the bottom of page 1 of Form 2004C’, but rather that somehow pages are deleted or reinstated in the eDREX without any person in the EPO consciously taking an action to that effect.
• One may also ask whether the ‘the text communicated to him’ of Rule 71(5) is affected by a content of the "special field provided at the bottom of page 1 of Form 2004C" that is inconsistent with the Druckexemplar as included in the Rule 71(3) Communication.
• The principle of good faith may possibly require that, since the EPO provides a "special field at the bottom of page 1 of Form 2004C" for mentioning any amendments made by the examining division in the Rule 71(3) EPC Communication, the EPO actually uses that field, such that the applicant has a legitimate expectation that there are no further amendments than those mentioned in that field (i.e. if the field is empty, there are no amendments made by the EPO). Possibly an appeal against a grant can be used to invoke the protection of such legitimate expectations. 
• I use the opportunity to highlight that the marked-up text intended for grant is included in the Rule 71(3) Communication. The clean copy version is only placed in the (public) file. 

EPO T 2277/19 -  link

Reasons for the Decision

1. Admissibility of the appeal

Article 107 EPC, first sentence reads as follows: "Any party to proceedings adversely affected by a decision may appeal." It follows from this sentence that the appeal proceedings are open only to a party which has been adversely affected by the impugned decision.

In the present case, the appeal is not admissible since the appellant is not adversely affected by the decision to grant.

T 0703/19 - XML debit orders and good faith

Key points

• In this opposition appeal, the patentee files a Notice of appeal and uses Form 1038E where the appeal fee is indicated, but the payment method is "not specified". As readers may know, this is something the EPO Online Filing Software allows and even can have as a default setting. You have to actively check "debit order" if you forget the filing software gives only a very subtle warning even if you have already specified a fee to be paid (a small white triangle, I believe). In this case, the appellant had checked the appeal fee but not checked "debit order". 
• The issue is not whether the debit order was valid. Rather, the appellant invokes the principle of good faith (EPO should inform parties of clear mistakes which they can still repair, G2/97) because the Notice was paid one month before the time limit and the Notice contained the express statement "Die Beschwerdegebühr wird hiermit via Online-Gebührenzahlung entrichtet". The appellant filed this request (and paid the appeal fee) after receiving the Rule 112 notice of loss of rights from the "Geschaftsstellenbeambtin".  
• The Board grants the request and considers the appeal fee to be timely paid.
• The Board notes that the ADA are not outside the scope of G2/97. "Allerdings hat die Tatsache, dass die Gebühr nun über die Online-Gebührenzahlung möglich ist und von den Vorschriften über das laufende Konto reguliert wird nicht zur Folge, dass damit jeglicher Anspruch auf Vertrauensschutz automatisch erlischt." 
• The Board recalls that in G2/97, the Enlarged Board had assumed that documents received by the EPO are read (by the EPO). The present Board concludes that users of the EPO may trust that a plausibility check is done (by the EPO) when an appeal is filed.
• In the present case, the error was clear to spot. In particular, because of the unambiguous statement in the appeal letter that the debit order was attached which provides the required statement of intention to pay with the filing of the notice of appeal. Moreover, there was still enough time before the expiry of the appeal period.
• " Die Beschwerdeführerin konnte daher erwarten, dass sie auf die fehlenden Angaben unter Rubrik "Zahlungsart" hingewiesen würde, was es ihr in Hinblick auf die über einen Monat vor Fristende erfolgte Einreichung der Beschwerde erlaubt hätte, die Beschwerdegebühr fristgerecht zu entrichten." 
• The above decision makes sense to me. I understand it also reflects first-instance practice. I really hope that the EPO updates the filing software to address this trap for parties (I am not sure if it is a bug or a feature, but this decision shows that there should be a better warning in the software in my view).
• Note that the oppositions were withdrawn already before the filing of the notice of appeal.

EPO T 0703/19 (07.08.2019) - link
ECLI:EP:BA:2019:T070319.20190807

Sachverhalt und Anträge

I. Mit der am 30. Januar 2019 zur Post gegebenen Zwischenentscheidung hat die Einspruchsabteilung festgestellt, dass das Patent in der Fassung des Hilfsantrags 1 die Erfordernisse des EPÜ erfüllt. Die beiden Einsprüche gegen das Patent wurden mit Schreiben vom 1. Februar 2018 sowie vom 11. September 2018 zurückgenommen.

II. Die Patentinhaberin (Beschwerdeführerin)legte am 8. März 2019, und somit innerhalb der dafür vorgesehenen Zweimonatsfrist (Artikel 108 Satz 1), auf dem Wege der Online-Einreichung des EPA Beschwerde gegen die Entscheidung der Einspruchsabteilung ein. Im Zuge der Online-Einreichung des EPA wurde das Formular 1038 mit dem Titel "Begleitschreiben für nachgereichte Unterlagen" generiert, dem auch die Beschwerdeschrift als PDF angehängt war.

III. In der Beschwerdeschrift machte die Beschwerdeführerin unter anderem folgende Angabe: "Die Beschwerdegebühr wird hiermit via Online-Gebührenzahlung entrichtet". Auf dem Begleitschreiben für nachgereichte Unterlagen finden sich Angaben bezüglich der Art der Gebühren ("Beschwerdegebühr für eine Beschwerde..."), des zu zahlenden Betrags ("EUR 2 255.00"), nicht aber zur Zahlungsart. Zu letzterer ist "Nicht angegeben" aufgeführt. Die Angabe der Kontonummer fehlt. Eine Abbuchung der Beschwerdegebühr von dem laufenden Konto der Vertreterin der Beschwerdeführerin fand nicht statt.

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.

T 0613/14 - Reimbursement of appeal fee beyond R.103

Key points

• This is an opposition appeal. " The appellant withdrew its appeal but maintained its request for reimbursement of the appeal fee." " The appellant no longer bases its request for reimbursement of the appeal fee on Rule 103 EPC. " 
• " The appellant is of the opinion that the appeal fee should be reimbursed on the ground that it had filed the appeal based on misleading information provided by the opposition division. The appellant thus invokes the principle of protection of legitimate expectations as a basis for reimbursement." 
• Requests for reimbursement of the appeal fee have exceptionally been allowed on the basis of the principle of protection of legitimate expectations in cases where Rule 103 EPC provided no basis for ordering reimbursement ([see J 30/94; J 38/97 T 308/05; T 1785/15]). Following this case law, the issue to be decided is whether the statement by the opposition division that the rejection of the appellant's request to correct the decision to revoke European patent EP 1 730 151 and the minutes of the oral proceedings before the opposition division on 19 September 2013 constituted a decision open to appeal and created a legitimate expectation that an appeal would be found admissible and examined as to its substance.
• Hence, Rule 103 is not the exclusive basis for a refund of the appeal fee.
• Turning to the facts of the case;' The initial appeal concerned two distinct procedural aspects, namely, the correction of the opposition division's decision posted on 8 November 2013 and the correction of the minutes of the oral proceedings of 19 September 2013, also posted on 8 November 2013." 
• "[Appellant's] professional representative should have realised that the refusal to correct the minutes of the oral proceedings of 19 September 2013 did not constitute a decision open to appeal" 
• " there is no established case law on the issue of whether or not the rejection of a request for correction of a decision under Rule 140 EPC is open to appeal." 
• " However, for the above reason, the board considers the opposition division's statement to have created a legitimate expectation that an appeal would be found admissible and examined as to its substance, at least in respect of the request for correction of the decision."
• Therefore, the refund of the appeal fee is allowed.

EPO T 0613/14 - link

Reasons for the Decision

1. Appeal procedures are terminated, as far as the substantive issues are concerned, when the sole appellant withdraws the appeal (G 8/91, OJ EPO 1993, 346). However, the boards of appeal, in the exercise of their inherent original jurisdiction, still have to decide on requests concerning procedural questions arising from the former proceedings (see e.g. T 41/82, OJ EPO 1982, 256, reasons, point 6; J 37/97 of 15 October 1998, reasons, point 2; T 308/05 of 27 February 2006, reasons, point 1).

2. The appellant withdrew its appeal but maintained its request for reimbursement of the appeal fee. In accordance with the above decisions, the procedural request for reimbursement has to be examined irrespective of the withdrawal of the appeal by the appellant.

3. The appellant no longer bases its request for reimbursement of the appeal fee on Rule 103 EPC. Indeed, reimbursement of the appeal fee according to that provision can only be ordered if the appeal is allowed. However, since the appellant withdrew its appeal, the proceedings have been terminated without decision on the substantive issues. Therefore, Rule 103 EPC provides no basis for ordering reimbursement.

Reimbursement can only be requested on a basis other than Rule 103 EPC. The appellant is of the opinion that the appeal fee should be reimbursed on the ground that it had filed the appeal based on misleading information provided by the opposition division. The appellant thus invokes the principle of protection of legitimate expectations as a basis for reimbursement.

4. Requests for reimbursement of the appeal fee have exceptionally been allowed on the basis of the principle of protection of legitimate expectations in cases where Rule 103 EPC provided no basis for ordering reimbursement (see J 30/94 of 9 October 1995, reasons, point 3.3; J 38/97 of 22 June 1999, reasons, points 5.2 and 5.3; T 308/05 of 27 February 2006, reasons, points 5 and 6; T 1785/15 of 9 May 2016, reasons, points 2.2 to 2.4). Following this case law, the issue to be decided is whether the statement by the opposition division that the rejection of the appellant's request to correct the decision to revoke European patent EP 1 730 151 and the minutes of the oral proceedings before the opposition division on 19 September 2013 constituted a decision open to appeal and created a legitimate expectation that an appeal would be found admissible and examined as to its substance.

5. The initial appeal concerned two distinct procedural aspects, namely, the correction of the opposition division's decision posted on 8 November 2013 and the correction of the minutes of the oral proceedings of 19 September 2013, also posted on 8 November 2013.

6. Correction of the minutes posted on 8 November 2013

6.1 It is constant case law that the minutes of the oral proceedings are neither a decision nor part of the decision announced at the oral proceedings (T 838/92 of 10 January 1995, reasons, point 3; T 231/99 of 31 August 1999, reasons, points 1.1 and 1.2; T 212/97 of 8 June 1999, reasons, point 2.2; T 68/02 of 24 June 2006, reasons, point 6.2). Likewise, a correction of the minutes by the competent department before which oral proceedings had been held is not considered a decision within the meaning of Article 106(1) EPC (see T 231/99 of 31 August 1999, reasons, points 1.3 to 1.5). The question of whether the rejection of a request for correction was a decision was left undecided in case T 231/99 of 31 August 1999 (see reasons, point 3), but there is no apparent reason why such a rejection should become the subject of an appeal if the minutes as such are not a decision open to appeal.

6.2 Given that professional representatives must be expected to be acquainted with the above case law, the appellant who was represented by a professional representative should have realised that the refusal to correct the minutes of the oral proceedings of 19 September 2013 did not constitute a decision open to appeal. Therefore, the appellant could not have legitimately relied on the erroneous statement by the opposition division as regards the appeal against the rejection by the opposition division of the appellant's request to correct the minutes.

7. Correction of the decision posted on 8 November 2013

7.1 As regards the appeal against the rejection by the opposition division of the appellant's request of 3 December 2013 to correct the opposition division's decision posted on 8 November 2013, the board is aware of decisions which consider that a rejection of such a request can, in principle, be contested by means of an appeal (see T 1063/02 of 16 June 2004, reasons, point 1, referring to G 8/95, OJ EPO 1996, 481 [which is superseded by decision G 1/10, OJ EPO 2012, 376]; J 17/04 of 9 April 2005, reasons, point 1, referring to J 12/85, OJ EPO 1986, 155).

7.2 In contrast to a request for correction of the minutes or the decision to grant (an issue considered by the Enlarged Board of appeal in decision G 1/10, OJ EPO 2012, 376), there is no established case law on the issue of whether or not the rejection of a request for correction of a decision under Rule 140 EPC is open to appeal. It cannot, therefore, be ruled out, and is even likely, that the appellant relied on the opposition division's statement when filing the appeal.

7.3 The appeal having been withdrawn, the board does not need to decide on whether, and if so, to what extent, the refusal of a request for correction of a decision under Rule 140 EPC can become the subject of an admissible appeal. However, for the above reason, the board considers the opposition division's statement to have created a legitimate expectation that an appeal would be found admissible and examined as to its substance, at least in respect of the request for correction of the decision.

However, in its preliminary opinion, the board took the position that the appeal against the opposition division's refusal of the request to correct its decision was not admissible. The board thus deprived the appellant of its legitimate expectations. After the board had maintained its preliminary opinion during the oral proceedings, the appellant withdrew its appeal. Under these circumstances, the board considers it justified to order the reimbursement of the appeal fee in accordance with the case law cited above (point 4).

Order

For these reasons it is decided that:

The request for reimbursement of the appeal fee is allowed.

T 1633/18 - Webform filing apeal

Key points

• In this examination appeal, the Notice of appeal was filed with webform filing, which is expressly not allowed; the documents are deemed not received (EPO 2018, A45). Nevertheless, the EPO accepted the documents (the documents were added to the file, the debit order for the appeal fee was carried out; the EPO did not notify the appellant). 
• " Since both letters were received well before the expiry of the respective time limits (for filing the appeal and for filing a statement of grounds of appeal), by not observing its duty to inform the appellant without delay, the EPO deprived it of the opportunity to resubmit its letters by correct means of filing documents." 
• Therefore, under the principle of protection of legitimate expectations, the documents are deemed to be filed (the appellant had also resubmitted the documents on paper when invited to do so by the Board).
• The appeal is nevertheless inadmissible, because the Statement of grounds was only an indication that arguments will be filed ("In the submission to be made by 29 May 2018, the Applicant will submit substantive arguments why the Examiners of the Examination Division are over-severe in their assessment" ).
• As a comment, the appellant was represented by a professional representative working at a (small, UK) patent attorney firm.
• As a further comment, it is rather surprising that the EPO carried out* a debit order filed on 28.03.2018 with webform filing. Since 01.12.2017, webform filing is not an accepted means of filing a debit order (just like PDF documents). Compare T 590/18 . (* = there is a refund of the appeal fee because the fee was paid twice by the same payer on the same date referring to two different vouchers. There are no vouchers visible in the online file but I think online fee payment (a form of debit order) does not show up in the online file; perhaps credit card payment also is processed as "voucher" by the EPO. In any case, the Notice of appeal states  "the Applicant herewith authorizes deduction of an associated appeal fee"; strictly speaking the appellant may have additionally paid the appeal fee twice with online fee payment but more likely that debit order in the letter was processed). 
• As a final comment, I am not aware of any logic why webform is excluded for appeals (and also from opposition, limitation and revocation proceedings). Webform filing is intended to replace fax, and faxes are perfectly fine in appeal. I am also not aware of the EPO having indicated a reason for the exception. Of course, no smartcard is required for webform filing. However, already since 16.11.2015 the requirement of an 'enhanced electronic signature' for appeal documents is abolished. Faxes are also acceptable and don't use the smartcard at all. Facsimile signatures are fine for fax but apparently not if they are filed as a PDF document using Webform Filing (note that furthermore fax shows the sender's fax number whereas Webform filing is set up to always have a sender's email address). If the reason is to exclude the filing of important documents, why is a withdrawal of an application not excluded from WWF?

EPO T 1633/18 - link

Reasons for the Decision

1. Filing of documents in respect of appeal proceedings using the EPO Web-Form Filing service

1.1 The contested decision was dispatched on 29 January 2018. The applicant submitted both the notice of appeal dated 28 March 2018 and the further letter dated 14 May 2018 by using the EPO Web-Form Filing service.

1.2 However, this service may not be used for filing documents in respect of appeal proceedings (see Article 2(1) and (2) of the Decision of the President of the EPO dated 10 September 2014 concerning the filing of documents using the EPO Web-Form Filing service, OJ EPO 2014, A98; Rule 2 EPC). The Board notes that this decision has been superseded by the Decision of the President of the EPO dated 9 May 2018 concerning the electronic filing of documents, which entered into force on 1 June 2018 but leaves the provisions concerning the use of the EPO Web-Form Filing service essentially unchanged (see Article 3 of the Decision dated 9 May 2018, OJ EPO 2018, A45). If documents in respect of appeal proceedings are nonetheless filed using the EPO Web-Form Filing service, they are deemed not to have been received.

T 0590/18 - Paper debit orders

Key points

• In this opposition appeal, the appellant filed a paper debit order for the appeal fee after 01.12.2017, i.e. when paper debit orders were no longer allowed. 
• The Opposition Division informs the appellant (opponent) that the debit order is not processed. As a comment, I don't think that the OD has any competence in the file after the decision, the case is at the Boards. The EPO accounting department is as such not an organ in the sense of the EPC. If a party and the EPO disagree about whether a debit order is valid, the decision is taken not by the accounting department but by the competent body (e.g. the Examining Division), in my view.
• In response, the appellant argues that even on 15.03.2018, the EPO referred to paper debit orders (Form 1010) in the "Guide for applicants" on the EPO website. The appellant argues legitimate expectations. The appellant also argues that on 26.02 of the appeal period expiring 28.02, there were internet problems. Therefore a paper debit order was filed on (the morning of) 27.02. The appellant first argued that the internet problems were on 28.02 (or actually on 18.02). The appellant acknowledged that is was familiar with the Decision abolishing paper debit orders. 
• The Board observes correctly that the debit order was not processed. The Board in the next sentence says that the payment could be considered made (implicitly: based on the principle of legitimate expectations) if the EPO website had (implicitly: misleadingly) referred to paper debit orders. As a comment, the Board does not here decide itself whether the debit order was invalid (in my view, the Board is the only competent body to do so, T152/82 r.8, the actual processing of the debit order by the EPO accounting department being legally irrelevant; if only because the right to be heard and to oral proceedings does not apply to the accounting department - alternatively the Board needs to decide whether the filed paper debit order makes the appeal admissible (not deemed not filed under Article 108), as in T152/82).
• The Board rejects the argument based on legitimate expectations, because the representative knew the new ADA rules, and because there was still sufficient time to effect payment on (the afternoon of 27.02) and 28.02.
• The appellant had also argued that the Decision of the President changing the ADA was invalid. The Board rejects this arguments, noting that the ADA are established under Rfees5(2) which give the President the authority to set up additional payment methods.
  " Innerhalb dieses Systems stellt sich die Möglichkeit zur Einreichung der Beschwerdegebühr mittels eines Abbuchungsauftrags als zusätzliche, vom EPÜ nicht zwingend geforderte Zahlungsart dar. Aus dieser Feststellung folgt ohne Weiteres, dass ein solcher vom Präsidenten des Amtes zusätzlich eröffneter Zahlungsweg durch eine Entscheidung des Präsidenten des Amtes auch wieder geschlossen oder - wie im vorliegenden Fall geschehen - in der Weise modifiziert werden kann, dass nur noch in einer bestimmten Form übermittelte Abbuchungsaufträge anerkannt werden." 
• As a comment, from the fact that the ADA could be abolished by the President, in my view does not follow that the ADA are outside the rule of law, or that the President can set the ADA (and carry out debit orders) in any way. In particular, I don't think that the ADA (and the processing of debit orders) can be capricious, nefarious, or discriminatory. Based on this understanding that the rule of law sets limits to the ADA, the question arises if prescribing a very specific format without a possibility for a correction of an otherwise perfectly clear debit order is within those limits. The Board does not decide on that issue in this case.
• The Board rejects the appellant's argument that the EPO should accept paper debit orders, because the ADA are at the President's discretion under Rfees5(2).
• As a further comment, the appeal is stated to be against the "decision" (of the OD) to not accept the debit order for the appeal fee. The dictum is that the appeal fee is considered to be not timely paid. The question now is if the Board is going to decide on the appeal against the decision of the OD maintaining the patent in amended form (and finds the appeal to be "not be deemed to have been filed" under Article 108 for failure to pay the appeal fee). 

EPO Headnote

1. Durch einen nach dem 1. Dezember 2017 in Papierform (EPA Form 1010) erteilten Abbuchungsauftrag kann die Zahlung der Beschwerdegebühr allenfalls dann bewirkt werden, wenn sich die Beschwerdeführerin mit Erfolg darauf berufen kann, sie habe in einem aktuellen Internet-Auftritt des Amtes noch nach Inkrafttreten der Änderung einen eindeutigen Hinweis auf die Möglichkeit der Zahlung der Beschwerdegebühren mittels des Formulars EPA-Form 1010 gefunden, auf die Richtigkeit dieses Hinweises vertrauen durfte und auch tatsächlich darauf vertraut hat.

2. Ein solches Vertrauen wird nicht begründet durch das Auffinden der pdf-Version einer vor Inkrafttreten der Änderung publizierten Broschüre.

3. Der Begründung schutzwürdigen Vertrauens steht die Kenntnis der Beschwerdeführerin von der Änderung der Zahlungswege entgegen.

EPO T 0590/18 -  link

Sachverhalt und Anträge

I. Gegen die Entscheidung der Einspruchsabteilung vom 18. Dezember 2017, das Europäische Patent Nr. 1 849 951 in geändertem Umfang, das heißt auf der Basis des ersten Hilfsantrags, aufrechtzuerhalten, haben beide Parteien Beschwerde eingelegt. Die Beschwerdeschrift der Beschwerdeführerin (Einsprechenden) trägt das Datum 26. Februar 2018. Sie ist ausweislich des Posteingangsstempels am 27. Februar 2018 beim Europäischen Patentamt (im Folgenden: Amt) eingegangen.

In ihrer Beschwerdeschrift hat die Beschwerdeführerin (Einsprechende) unter anderem das Folgende ausgeführt: "Die amtliche Beschwerdegebühr in Höhe von 1.880,00 ¤ wird gemäß beigefügtem Formblatt 1010 entrichtet". Das Formblatt trägt ebenfalls das Datum 27. Februar 2018 und ist auch an diesem Tag beim Amt eingegangen. Dementsprechend hat sie auf dem der Beschwerdeschrift beigefügten Formblatt EPA Form 1010 angekreuzt, die Beschwerdegebühr solle von dem dort genannten Konto abgebucht werden. Auf diesem, beim Amt geführten Konto mit der Nr. 28 000 799 war zum maßgeblichen Zeitpunkt eine ausreichende Deckung vorhanden.

II. Mit Bescheid vom 8. März 2018 teilte die Einspruchsabteilung der Beschwerdeführerin (Einsprechenden) mit, das Amt akzeptiere seit dem 1. Dezember 2017 nur noch Abbuchungsaufträge / automatische Abbuchungsaufträge, die in einem elektronisch verarbeitbaren Format (XML) eingereicht werden. Abbuchungsaufträge, die unter anderem per Post auf dem Formblatt EPA Form 1010 eingereicht werden, seien nun ungültig und würden nicht mehr ausgeführt. Den auf dem Formblatt EPA Form 1010 erteilten Abbuchungsauftrag der Beschwerdeführerin (Einsprechenden) hat das Amt deshalb nicht ausgeführt. Das Amt hatte auf die Änderung der Möglichkeiten zur Zahlung der Beschwerdegebühr im Amtsblatt am 18. Oktober 2017 hingewiesen (ABl. EPA 2017, Zusatzpublikation 5).

III. Gegen die Entscheidung, den auf dem Formblatt EPA-Form 1010 erteilten Abbuchungsauftrag nicht zu akzeptieren, wendet sich die Beschwerdeführerin (Einsprechende) in ihrem Schriftsatz vom 16. März 2018.  [i.e. the impugned "decision"  is that of 08.03.2018, not the decision of 18.12.2017 to maintain the patent in amended form] [...]

Entscheidungsgründe

1. Der Antrag ist zulässig.

Die Kammer hält an ihrer bereits in der Mitteilung vom 18. April 2018 zum Ausdruck gebrachten Auffassung fest, wonach das Schreiben des Amtes vom 8. März 2018 als Mitteilung über den Verlust des Beschwerderechts im Sinne von Regel 112(1) EPÜ und der Antrag der Beschwerdeführerin vom 16. März 2018 als ein solcher nach Regel 112(2) EPÜ anzusehen ist.

2. Der Antrag auf Feststellung der fristgerechten Zahlung der Beschwerdegebühr war zurückzuweisen.

2.1 Dem Hauptantrag der Beschwerdeführerin (Einsprechenden) auf Feststellung, dass die von ihr eingelegte Beschwerde zulässig ist, kann auf der Grundlage der mündlichen Verhandlung vom 4. Juli 2018 nicht stattgegeben werden. Die Ladung zur mündlichen Verhandlung erfolgte ausweislich der Mitteilung der Kammer gemäß Regel 100(2) EPÜ ausdrücklich nur zum Zwecke der Erörterung der Frage, ob dem Antrag der Beschwerdeführerin (Einsprechenden) auf Feststellung der fristgerechten Zahlung der Beschwerdegebühr stattgegeben werden kann. Die Frage, ob ihre Beschwerde auch zulässig ist, geht darüber hinaus.