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.

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 2170/21 - Debit order for oppo fee instead of appeal fee

Key points

•  In translation: "III. The patent proprietor filed its notice of appeal pursuant to Article 108, first sentence, EPC on 2 December 2021 through its representative electronically using the EPO Online Filing Software ('OLF') []. The filing was made using the form "Submission in opposition proceedings." In this form and also in the notice of appeal submitted as an annex, the appellant patent proprietor was named as opponent (page 1 of the form: "representing the opponent(s) dormakaba Deutschland GmbH"; page 1 of the notice of appeal: "In the name and on behalf of the opponent, i.e., dormakaba Deutschland GmbH"). Instead of the payment of the appeal fee announced in the notice of appeal (page 2: "The official appeal fee is paid."), this form authorizes the EPO to debit an opposition fee from the representative's deposit account (page 2: "010 Opposition fee ... Amount to be paid 815.00"). The opposition fee was debited from the deposit account on December 3, 2021, with the debit date of December 2, 2021."
•  On December 22, 2021, and thus undisputedly after the expiry of the time limit for payment of the appeal fee, the representative requested corrections to the debit order of December 2, 2021, under Rule 139, first sentence, EPC. The corrections concerned the debiting of an appeal fee and the amount to be debited, EUR 2,705. The (full) appeal fee was debited from the representative's current account on December 23, 2021, with the debit date of December 22, 2021."
•  On the admissibility of the various arguments and request about the admisisibility of the appeal: "The possibility of correcting the fee payment under Rule 139 EPC is, in principle, not a question of fact requiring proof, but a question of law. As mentioned above, the relevant facts to be considered for assessing this legal issue were, for the most part, already on file. As is also clear from the submissions of the parties, the case law of the Boards of Appeal has not developed uniformly over the years (see below). Furthermore, a large number of appeal decisions based on facts comparable to the present case are not available. Under these circumstances, it is unreasonable to expect the parties not to subsequently supplement their arguments, particularly regarding legal interpretation. Arguments regarding legal interpretation should, in principle, not be surprising or unreasonable for the Chamber. This likely follows from the legal principle "the court knows the law" (iura novit curia)."
•  The Board sees no reason to question the general possibility of correcting an erroneous fee payment under Rule 139 EPC, following decision T 0071/21, point 6.3 of the Reasons, cited by the Respondent, and the other decisions cited therein."
• "The board agrees with the respondent that re-establishment of rights under Article 122 EPC may also be an appropriate means of retroactively correcting the serious legal consequences of insufficient fee payment. The consequences of insufficient fee payment are that the appeal fee is deemed not to have been paid and thus the appeal is deemed not to have been filed, which in turn amounts to a failure to comply with a time limit. Had the appellant been unsuccessful in its request for correction under Rule 139 EPC, this option would – at least in theory – still have been open to it. However, this possibility does not preclude the application of Rule 139 EPC. The EPC does not contain a mutual exclusionary rule between Rule 139 and Article 122 EPC comparable to Article 121(4) or Rule 136(3) EPC."
• "the Board does not see any threat to legal certainty or a change of will on the part of the patent proprietor. The Board has no indications, let alone evidence, that the requested correction—namely, the payment of the appeal fee from the representative's current account—was not originally intended. This cannot be deduced from the patent proprietor's notice of appeal. The mere fact that the wording used is open does not justify a serious suspicion that the use of the incorrect form was not accidental, but deliberate. "
• " For these reasons, the board decided to grant the request for correction under Rule 139 EPC. The appeal is therefore deemed to have been validly filed. "
• The appeal is examined on the merits and is dismissed.

EPO 

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

T 0186/22 - Specifying an incorrect deposit account number

Key points

•  In translation:  "The patent proprietor filed an appeal on January 31, 2022. In its notice of appeal, it stated that the appeal fee would be paid by direct debit from the deposit account via Online Filing 2.0. A direct debit order was issued on Form 1038 APPEAL dated the same day. This form listed the representative association as the account holder and indicated the deposit account number as 28000017."
•  By letter dated 11 February 2022, the patent proprietor clarified that it had made an error regarding the deposit account number and that the correct deposit account number was 28001760. It filed a request for correction of the debit order pursuant to Rule 139 EPC."" 
• The appeal fee was debited by the EPO from deposit account 28000017.
• "The fact that the appeal fee was debited from a third-party account rather than from the patent proprietor's account cannot alter the fact that the requirement of Article 108, second sentence, EPC is met. This provision does not require that the appeal fee be paid by the appellant. Rather, it is irrelevant to the question of whether the appeal is deemed to have been filed who paid the appeal fee. It is sufficient that an appeal fee (in the correct amount) was paid before the expiry of the appeal period."
• The reverse is not true: if the EPO finance department does not carry out the debit order, that does not mean that the payment is invalid.
• "Notwithstanding the foregoing, the patent proprietor's request under Rule 139, first sentence, EPC was also to be granted.  "
• "Even assuming that legal certainty must be taken into account, although the Enlarged Board of Appeal did not mention it as a prerequisite for correction, the opponent's arguments are unconvincing. The mere fact that these are inter partes proceedings does not mean that the criterion of "legal certainty" is to the detriment of the petitioner (see T 445/08 of 26 March 2015, Reasons 10, 11, 13.6; T 317/19, Reasons 2.4.3(a) and 2.4.4(a)). Thus, in inter partes proceedings T 445/08, the board concluded that legal certainty did not preclude the request for correction (T 445/08 of 26 March 2015, Reasons 13.6).

  In the present case, too, legal certainty or the interests of the opponents do not preclude granting the request for correction. It was obvious to the opponent (and to the public) from the outset that the patent proprietor intended to file an appeal. The fact that this filing might have been erroneous was not apparent from the appeal or the debit order. Rather, the patent proprietor itself indicated this in its letter of February 11, 2022, and filed a request for correction in the same letter. This request for correction was also filed promptly, namely 10 days after the filing of the notice of appeal and the debit order."

• The opponent also appealed, and the patent was revoked.

EPO 

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

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

Key points

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

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

T 0130/19 - Correction of error appeal fee debit order

Key points

• The proprietor files an appeal using Form 1038E, specifying the appeal fee in the correct amount, but leaving the payment method as "Not specified". (The EPO Online Filing Software allowed for this).
• "due to the erroneous indication "not specified" in the "Method of payment" box on Form 1038E, the debit order for the payment of the appeal fee was not carried out before expiry of that time limit."
• " With letter of 7 February 2019 the appellant requested a correction under Rule 139, first sentence, EPC of Form 1038E submitted with the notice of appeal in the manner specified in above point VI."
• "It is undisputed that the requested correction fulfills the conditions set out in point 37 of the Reasons for decision G 1/12 (OJ EPO 2014, A114). The Board refers to decision T 0317/19 of 22 October 2019 which relies upon decision G 1/12 in which a correction under Rule 139, first sentence, EPC in a similar factual situation concerning an appeal in an ex parte case was allowed. It is in particular referred to the reasoning provided in points 1 to 3 of said decision in which the relevant legal provisions and case law are discussed. The Board fails to discern why the reasoning provided in T 0317/19 regarding the applicability of Rule 139 EPC to a correction of an erroneously filled out payment form in an ex parte case should not apply for an appeal in an inter partes case, since the ruling of G 1/12 upon which it is relied in T 0317/19 clearly applies to both ex parte and inter partes cases. "
• "In the present case, the indication "011 Appeal fee for an appeal filed by an entity other than those referred to in Rule 6(4) and (5) EPC" in original Form 1038E shows that the intention of the patent proprietor was to pay the appeal fee at the same time as filing the notice of appeal. The request for correction was filed on the day that the appellant was informed by a telephone call from the registrar that the payment method had not been specified, i.e. without delay."
• "The Board concludes therefore that the request for correction of Form 1038E is to be allowed and that the appeal is therefore deemed to have been timely filed."

EPO 

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

T 0071/21 - (No) correction of payment method

Key points

• The decision was published already 14.06.2022.
• The opponent tries to pay the appeal fee with using automatic debiting. However, automatic debiting is not available for opponents; this is expressly excluded in the ADA.
• I guess because the EPO's computer systems are set up to deduct fees from the deposit account associated with the application number, this being the applicant/patentee (the EPO systems seem to use the application number even for granted patents).
• Apparently, Form 1038E permits indicating automatic debiting as the payment method, though the opponent had to identify itself as the applicant.
• The Board in machine translation: " However, the content of Form 1038, which was created electronically on January 11, 2021, nevertheless shows the appellant's order to set up an automatic debiting procedure from the appellant's current account and also states the correct number of the patent in suit under "Applicant's or representative's reference". This initially gives the impression that the EPO's online payment system supports or at least allows the filing of non-system-compliant forms. In fact, however, the form shows that this process, which the online payment system itself does not allow for opponents, could have been brought about by the appellant stating the number of the patent in suit and falsely presenting itself to the system as the "applicant" of the patent in suit."
• The Board rejects the plea based on the protection of legitimate expectations, i.e. the rule that the EPO should warn in case of obvious mistakes if there is still sufficient time for a party to correct them. The Board finds that the error was not evident. " This is because the form does not mention a fee at all, nor has the appeal fee been incorrectly quantified (in fact, none at all), nor has a declaration been made which in its content of the declaration was clearly aimed at debiting an appeal fee from the current account." 
• The Board does not permit a correction under Rule 139 of Form 1038E. " the board comes to the conclusion that a correction of the selected illegal payment method under Rule 139 EPC in the sense of these criteria is not possible in the present case."
  " the appellant's declarations regarding the payment of the appeal fee on Form 1038 (establishment of an automatic debiting procedure) must be checked for a deviation from the underlying true intention regarding the selection of the payment method, and not for a deviation from the general intention of "lodging an effective complaint". "
• " The Board comes to the conclusion that, from an objective point of view, both the notice of appeal and Form 1038, in view of the wording chosen, clearly and unambiguously intend the appellant to pay the appeal fee by means of an automatic debit order or by way of an automatic debit procedure to be paid. The fact that the complainant was not entitled to this debiting procedure as a payment method and that she therefore chose an unsuitable method has no influence on the objectively recognizable clarity of this original intention." .
• As a comment, note that this seems to indicate that a correction of the indication of the payment method is not a priori excluded. 
• Re-establishment is, of course, not available.
• The appeal is dismissed.

EPO 

The link to the decision is provided after the jump.

J 0013/21 - RE for EP entry with FP

Key points

•  The applicant requests the re-establishment of rights for entry into the European phase with further processing.
• " EPO Form 1010 ("Payment of fees and expenses") was annexed indicating bank transfer as the mode of payment and the payment of fees including one fee for re-establishment of rights and fees for further processing (except the fee for further processing for the failure to file the written request for examination).
The Receiving Section "expressed its preliminary view that the request for re-establishment of rights was inadmissible because five re-establishment fees were due and only one was paid. In response to this communication, the applicant, in a letter dated 18 May 2020, submitted further reasons for the admissibility of the request, requested correction of a transcription error in the fee calculation sheet (Form 1010) under Rule 139 EPC and paid four additional re-establishment fees."
• The Receiving Section rejects the request.
• In appeal, the applicant requests a correction of the fee calculation sheet. 
• The Legal Board: "In accordance with Rule 139, first sentence, EPC, only errors in documents filed with the EPO may be corrected. Consequently, an error in a bank transfer order cannot be corrected under Rule 139 EPC because it is not an error in a document filed with the EPO but a document filed with a bank. The requested correction of Form 1010 (whether allowable or not) would not remedy the non-payment, which was not caused by the indications in Form 1010 but by the transfer order given to the bank." 
• More importantly, the appellant challenged the Receiving Section's view that five RE fees would be due.
• The Legal Board, turning to the precedent: " In J 26/95, the Legal Board of Appeal was dealing with a case where the applicant had failed to reply to a communication pursuant to Article 96(2) and Rule 51(2) EPC 1973. This led to the application being deemed to be withdrawn. The applicant had also failed to pay a renewal fee in due time. The applicant submitted that only one fee was due in connection with its requests for re-establishment in respect of both time limits missed since both time limits had not been complied with for the same reason (serious financial difficulties). However, the Board held that where time limits expiring independently of one another have been missed by the applicant, each resulting in the application being deemed withdrawn, a request for re-establishment had to be filed in respect of each unobserved time limit. Consequently, a fee for re-establishment had to be paid for each request. It was irrelevant whether the requests for re-establishment were based on the same or different grounds."
• The Legal Board, turning to the present case: "In the Board's view, the individual acts required under Rule 159(1) EPC do not form a unitary procedural step but are legally independent requirements subject to independent time limits although some of them may coincide in a particular case. The legal consequences and possible remedies of not fulfilling the requirements of Rule 159(1) EPC are not identical. The legal consequence provided in Rule 160 EPC (application deemed to be withdrawn) does not apply to all of these requirements. In contrast to some other requirements listed in Rule 159(1) EPC, non-payment of the third renewal fee within the time limit provided for in Rule 159(1)(g) EPC does not lead to an immediate loss of right since the fee can still be paid within a further period of six months. On the other hand, the remedy of further processing is not available with respect to this requirement."
• " It follows from the above that in the current case the appellant had to pay more than one re-establishment fee. However, only one re-establishment fee was paid in due time. The remaining re-establishment requests are not deemed to have been filed since the required fees were not paid within two months from the removal of the cause of non-compliance (Rule 136(1) EPC), "

• As a comment, the Board here does not say that five RE requests were necessary. The reasoning seems to only distinguish between the payment of the renewal fee with a surcharge on the one hand and the other acts with further processing on the other hand. See also  T1823/16.

•  

EPO 

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

J 0006/21 - Computer says no, Legal Board says yes

 Key points

•  According to the Examining Division, a fee was not paid (incidentally, the fee for restoration of the right of priority payable to the EPO in the regional phase).
• The issue is that automatic debit orders in six unrelated applications were revoked by the account holder on the same day as the filing of the debit order for the payment of the fee in the present case. Moreover, on the same day the account was replenished as well and fees for those other applications were deducted.
• “ [The automatic debit order] revocation notice was received at 15:23 CET. The electronic receipt confirming the revocation indicated that "[t]he automatic debit order for the following application [...] ceased to be effective on the date of receipt of your instruction revoking it." Seven application numbers were mentioned on this receipt notice. However, at this point in time, according to the competent EPO department, "the EPO system could not react in time to prevent debiting of fees". The fees relating to six of the seven application numbers were therefore debited on 2 June 2020”
• “the appellant was informed that the revocation took effect on the same date as the request for revocation was received. This information is in line with ADA, points 6.2. and 6.3: the execution date of the debit orders was 2 June 2020 and the notice of revocation was received on 2 June 2020. Only if the notice of revocation were received after the execution date, would it be not effective. Accordingly, the appellant could assume that the automatic debit orders, which were revoked on 2 June 2020, would not be executed on that day. Decisively, had the six (of the seven) fees, which pertained to these wrongly executed automatic debit orders, not been debited on 2 June 2020, the account would have contained sufficient funds for the debit order mentioned above under (b).”
• “In these circumstances, it must be deemed in the appellant's favour that the deposit account had sufficient funds for the relevant fee on 2 June 2020, so that this date is considered as the date on which the payment was made”
• As a comment, this decision illustrates that it is the Examining Division (or Receiving Section or Opposition Division) who decides whether payment has been made and hence whether the debit order was effective, not the EPO Accounting Department or the EPO computer systems. Even if the EPO computer systems do not process the debit order correctly and the amount is not actually deducted from the deposit account, the Examining Division can still decide that the fee was paid and in fact, it is the Examining Division who decides that the fee was not paid and hence the relevance act was not validly performed. That decision is appealable. 

J 0006/21 

link  under "read more"

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. ... .

T 1000/19 - Debit orders can be corrected (III)

Key points

• The opponent had filed an opposition. However “[t]he electronic EPO Form 2300E, however, did not indicate any payment method in box X. "Payment". This Form rather displays in box X. the message "Not specified"”. The PDF letter included the statement that essentially a debit order was given for the opposition fee.
• The Board first notes that this remark in the PDF letter is not a valid debit order: “the ADA in force since 1 December 2017 have decisively changed the legal situation regarding the requirements for a valid payment by order to debit a fee from a deposit account at the EPO which entails that the "intention to pay"-case law developed under different previous versions of the ADA does no longer appear to be applicable.”
• However, the Board finds that the debit order can be corrected (this is the same conclusion as in J 8/19; not cited in the present case. I  note that the present decision text largely corresponds to the preliminary opinion issued 13.09.2019, i.e. before J8/19 was issued).
• “The Board fails to discern why the lines of argument set out in G 1/12 regarding the applicability of Rule 139 EPC should not equally apply to a correction of an erroneously filled payment form (T 317/19 []). Rather, the applicability of Rule 139, first sentence EPC (Rule 88, first sentence EPC 1973 respectively) to debit orders has been acknowledged or at least not ruled out by the Boards of Appeal, e.g., in T 152/82 (point 7. []) and in T 17/83 [r.6]).”
• “In contrast to T 152/85 where no document containing an error was filed, the opponent in the present case filed the electronic form EPO 2300E and hence a document in the sense of Rule 139, first sentence EPC (T 317/19, point 2.4.2.(c) of the reasons). Furthermore, the mistake was made in this document by not activating the payment method in box X. "Payment" of said EPO Form 2300E.”
• The correction is also allowed. “In the present case the mistake can be seen in an omission to activate the intended payment method in box X. of the electronic Form 2300E which by default displays the message "Not specified"”. The request was also filed without delay and sufficiently supported by evidence. 
• “Since an allowable correction has retroactive effect (G 1/12, point 37 of the reasons, last sentence) the opposition fee is found to have been validly paid within the period of nine months on 24 January 2018 when EPO Form 2300E and the accompanying letter were received by the EPO, and the opposition is deemed to have been filed pursuant to Article 99(1) EPC. The Board notes that on the basis of the file there is no reason to doubt that the professional representative's deposit account was sufficient on that date”. 
• The Board decides that the request for correction is allowed and the opposition is “deemed to have been filed”.
• I note that the Board does not comment on T170/83 (Debit Order III) holding that “the running of deposit accounts falls outside the grant or opposition procedures it is not governed by Rule 88, lst sentence, EPC.”, cited in Guidelines A-X 7.1.1. for the position that “It is not, therefore, a procedural declaration which may be corrected pursuant to Rule 139. The same applies to debit orders (see T 170/83, reasons 8).”
  
  
• Readers may be interested to learn that Bühler writes in Singer/Stauder/Luginbühl EPÜ, 8th. ed. 2019, Art.108, rdn.32, that if the reduced appeal fee is stated by mistake in a debit order, a correction under Rule 139 may provide a way out, in particular when in the Notice of appeal the debiting of the appeal fee is referred to without mentioning the amount. 

EPO T 1000/19 -  link

Reasons for the Decision

1. The appeal is admissible.

2. Since the appeal is also allowable the decision can be issued in the written proceedings without oral proceedings.

3. The present Board considers it as highly questionable whether the case law according to which under certain circumstances the "intention to pay" a fee by order to debit the amount from a deposit account with the EPO can still be regarded as a valid payment, even if the debit order is deficient, still applies under the version of the ADA in force since 1 December 2017 which is applicable to the case at issue. This case law is represented e.g. by T 1265/10, which is one of the most recent decisions and in particular discussed in the present appeal proceedings, as well as by T 152/82 of 5 September 1983 and T 806/99 of 24 October 2000.

3.1 In these decisions the "intention to pay" was accepted as valid payment of a fee under the proviso that the ADA in the version underlying the respective decision "do not preclude such a step", i.e., to carry out the debit order (T 152/82 point 4 of the reasons), "the debit order is not subject to any further formal requirement" (T 806/99 point 3.1 of the reasons), or "the ADA do not indicate what should happen in case one of the formal requirements are not complied with" (T 1265/10 point 8.1 of the reasons).

3.2 Contrary to the previous versions of the ADA underlying those cases the ADA in force since 1 December 2017 and applicable to the case at issue clearly and expressly define that the EPO will accept and process debit orders only if they are filed in an electronically processable format (point 5.1.2 ADA) using the electronic means listed therein. Furthermore, point 5.4.2 ADA explicitly provides: "If a debit order is submitted via a non-accepted means of filing or an invalid format, the date of receipt will not be regarded as the payment date."

3.3 Therefore, the ADA in force since 1 December 2017 have decisively changed the legal situation regarding the requirements for a valid payment by order to debit a fee from a deposit account at the EPO which entails that the "intention to pay"-case law developed under different previous versions of the ADA does no longer appear to be applicable. To this extent the Board cannot find fault with the Opposition Division's findings following decision T 198/16.

3.4 However, this legal question as well as the question whether the principle of legitimate expectations (good faith) applies do not need to be finally decided upon in the case at issue, since the Board considers not only that Rule 139 EPC (correction of errors in documents filed with the EPO) is principally applicable but also that its requirements are complied with.

4. Rule 139 EPC

Under Rule 139, first sentence, EPC linguistic errors of transcription and mistakes in any document filed with the EPC may be corrected on request.

Applicability of Rule 139 EPC

4.1 The Opposition Division's decision that Rule 139 EPC was not applicable in the present case, since the procedure of Rule 139 EPC was not time-barred and could therefore not be applied to the non-extendable time limit for filing a valid opposition is legally incorrect. The Enlarged Board of Appeal in decision G 1/12 (OJ EPO 2014, A 114) held that the general procedure for correcting errors under Rule 139, first sentence EPC was available in cases of an error in the appellant's name in a notice of appeal. Whether a notice of appeal in compliance with Rule 99(1)(a) EPC contains the name and address of the appellant is inextricably related to the question whether the appeal has been validly filed within the 2-months (non-extendable) time limit according to Article 108, first sentence EPC as one of the conditions for the admissibility of the appeal. There can be no doubt that the ratio of G 1/12 also applies if the admissibility of an opposition, or the question, whether an opposition is deemed to have been filed according to Article 99(1) EPC is concerned (T 615/14 of 27 October 2015, T 579/16 of 18 January 2017). Hence, Article 139, first sentence EPC is applicable in the case at issue.

4.2 Furthermore, the Board fails to discern why the lines of argument set out in G 1/12 regarding the applicability of Rule 139 EPC should not equally apply to a correction of an erroneously filled payment form (T 317/19 of 22 October 2019, point 2.3.3(c) of the reasons). Rather, the applicability of Rule 139, first sentence EPC (Rule 88, first sentence EPC 1973 respectively) to debit orders has been acknowledged or at least not ruled out by the Boards of Appeal, e.g., in T 152/82 (point 7. of the reasons: "The application of Rule 88 EPC, which is possible per se...") and in T 17/83 of 20 September 1983 (point 6. of the reasons: "it cannot be ruled out that Rule 88, first sentence EPC also applies to debit orders").

4.3 In case T 152/85 of 28 May 1986 the notice of opposition contained no reference to payment of the opposition fee and the fee was not paid in time. The Board held that the payment of an opposition fee was a factual requirement and thus the failure to pay the fee a factual mistake (point 2 of the reasons). It appeared to be clear from the wording of Rule 88 EPC that this rule only applied to mistakes made in a document but not to other kinds of mistakes (l.c.).

4.4 The present Board fully agrees with the findings in T 152/85, which however does not preclude the application of Rule 139, first sentence EPC in the case at issue. According to the clear wording of Rule 139, first sentence EPC and as pointed out in T 152/85 this provision requires that the mistake to be corrected was made in any document filed with the EPO. In contrast to T 152/85 where no document containing an error was filed, the opponent in the present case filed the electronic form EPO 2300E and hence a document in the sense of Rule 139, first sentence EPC (T 317/19, point 2.4.2.(c) of the reasons). Furthermore, the mistake was made in this document by not activating the payment method in box X. "Payment" of said EPO Form 2300E.

Requirements for corrections according to Rule 139, first sentence, EPC

4.5 In its decision G 1/12 (point 37. of the reasons) the Enlarged Board referred to the large body of case law of the Boards of Appeal on corrections under Rule 139, first sentence EPC according to which the following principles were established:

4.5.1 The correction must introduce what was originally intended (l.c., point 37(a) of the reasons). In the absence of any contrary requirement in Rule 139 EPC, the Board is not prevented from using indications of the appellant's original intention outside the document to be corrected. This is fully in line with G 1/12, where it is stated in point 28 of the reasons: "in the event of a deficiency as to the appellant's identity the Board must establish the true intention of the appellant on the basis of the information in the appeal or otherwise on file".

The Board has no doubt and finds it as sufficiently proven (G 1/12, point 37(b) of the reasons) that from the passage "we [the representative of the Opponent, Cabinet Beau de Lomenie] have today authorized the Treasure and Account Department of the EPO to debit the due opposition fee of 785 ¤ from our deposit account" in the letter accompanying the notice of opposition the clear intention of the opponent's representatives can be derived to pay the opposition fee by means of the attached EPO Form 2300E thereby taking into account the whole content of said opposition letter (see II. above).

4.5.2 The error to be remedied may be an incorrect statement or an omission (G 1/12, point 37(c) of the reasons). In the present case the mistake can be seen in an omission to activate the intended payment method in box X. of the electronic Form 2300E which by default displays the message "Not specified".

4.5.3 Finally, the request for correction must be filed without delay (G 1/12, point 37(d) of the reasons). The EPO informed the opponent/appellant with communication of 20 February 2018 (noting of loss of rights, Rule 112(1) EPC) that the opposition was deemed not to have been filed on the grounds that the opposition fee had not been paid. With letter dated 7 March 2018 the opponent requested an appealable decision on this matter and requested "that the EPO withdraw the corresponding sum from our deposit account" (page 16, second paragraph). This request, which is to be interpreted as a request for correction according to Rule 139, first sentence EPC, was hence filed about two weeks after the opponent was informed of the mistake. The request for correction is therefore considered to have been filed without delay. If, in addition, a corrected electronic debit order (new EPO Form 2300E) had been regarded as necessary by the EPO for formal purposes, the appellant should have been informed accordingly. However, it is not apparent from the file that such a demand or invitation has been sent by the EPO to the opponent/appellant.

4.6 Since an allowable correction has retroactive effect (G 1/12, point 37 of the reasons, last sentence) the opposition fee is found to have been validly paid within the period of nine months on 24 January 2018 when EPO Form 2300E and the accompanying letter were received by the EPO, and the opposition is deemed to have been filed pursuant to Article 99(1) EPC. The Board notes that on the basis of the file there is no reason to doubt that the professional representative's deposit account was sufficient on that date (Articles 5(2), 7(2) RFees in conjunction with point 5.4.1 of the ADA).

5. The board concludes that the requirements for the correction requested by the appellant are met, and thus that the correction of the error made in EPO Form 2300E regarding the payment of the opposition fee according to the ADA is to be allowed. Consequently, the correction under Rule 139 EPC having effect ex tunc, the opposition is retroactively deemed to have been filed.

Order

For these reasons it is decided that:

1. The request for correction under Rule 139, first sentence, EPC is allowed.

2. The opposition is deemed to have been filed.

T 0600/18 - Paper debit order, no RE

Key points

• The appellant filed a Notice of appeal by fax on 28.02.2018. Form 1010 was sued for the debit order. The form was signed by the in house professional representative. The debit order is invalid and a request for re-establishment was filed. 
• “The appellant submitted that, due to security considerations and the fact that it operated in the aerospace and defence sector, the EPO's online filing software was not available on its general computers but only on the machines of three paralegals responsible for online filing.”
• On the day at issue, all three paralegals were absent. Moreover, a storm was predicted for 1 March, the last day of the appeal period. Therefore, the patent attorney had himself filed the Notice of appeal of 28 February: “Since none of the regular paralegals was present and the normal way to pay the fees was thus unavailable, the patent attorney in charge of the case decided, under the pressure of the special situation, to use an alternative method of payment, by debit order form 1010.”
• The Board notes that the Notice includes the statement ‘we pay herewith the fee for appeal’. 
• The Board:  “This hints at the assumption (later acknowledged) that, when signing the Notice of Appeal, the patent attorney considered that the appeal fee had already been validly paid using form 1010. ”
• The Board recalls that “a mistake by the representative himself or herself is not normally excusable.”
• “In the present case, it seems that the failure to comply with the time limit to pay the appeal fee was caused by the mistaken belief of the representative that an outdated way to make payments was still acceptable, which was not in fact the case. Thus, at the time of leaving the office, the representative was under the impression that everything necessary to comply with the time limit had been performed. As a consequence, the correct payment was only performed when the representative's firm was made aware of the mistake.”
• The request for re-establishment is refused.

EPO Headnote

No conclusive case has been submitted with the request for re-establishment of rights that explains why an attempt was (erroneously) made to pay the appeal fee using a form that was no longer accepted at the EPO.
Article 122 EPC and the relevant case law does not excuse mistakes by the representative himself or herself that are caused by the ignorance of the latest provisions even if the representative does not normally perform the duty of paying fees himself or herself.
As he or she is the one that is expected to instruct and supervise his or her staff, he or she must always keep informed of the latest developments on how to handle the payment of fees.
As he or she is expected to remember what he or she has learned even in stressful situations it cannot be acknowledged that the mistake has happened despite all due care having been taken.
The situation (stress caused by an upcoming snow storm) cannot be equated with one where a patent attorney was incapable of taking sound decisions due to sudden serious illness or a sudden and unexpected bereavement.


EPO T 0600/18 -  link

Reasons for the Decision

1. The request for re-establishment of the right to appeal the decision of the opposition division dated 22 December 2017 is inadmissible.

1.1 The request has been submitted in writing within two months of the removal of the alleged cause of non-compliance on 2 March 2018 and both the missed appeal fee and the fee for re-establishment have been paid within this time limit.

1.2 However, the request is not admissible for the following reasons.

1.3 Rule 136(2) EPC, 1st sentence, states that the request "shall state the grounds on which it is based and shall set out the facts on which it relies".

1.4 This has been interpreted by the case law of the Boards of Appeal as implying that a conclusive case setting out and substantiating the grounds and facts on which the request relies has to be made (see Case Law of the Boards of Appeal, 9th edition, July 2019, III.E.4.4).

1.5 In the present case, however, no explanation has been given of why the Notice of Appeal filed on 28 February 2018 states "We pay herewith the fee for appeal" and why Form 1010 was submitted on paper, a method of paying that had no longer been acceptable at the European Patent Office since 1 December 2017. This hints at the assumption (later acknowledged) that, when signing the Notice of Appeal, the patent attorney considered that the appeal fee had already been validly paid using form 1010. Thus, the fact that none of the three paralegals able to submit online payments had been present on that day is of no relevance in deciding the case. The same applies to the fact that, due to severe weather conditions, neither the patent attorney nor any of the three relevant paralegals were present in the appellant's office on 1 March 2018.

1.6 Thus, the request for re-establishment does not contain a conclusive case setting out the grounds for the failure to pay the appeal fee in time. Rather, it gives an explanation of why the usual paralegals were not in a position to act. However, the present case is not one where no action has been taken at all, but rather one where the wrong action has been chosen. In this respect a conclusive case has not been submitted that explains why an attempt was (erroneously) made to pay the appeal fee using a form that was no longer accepted at the EPO.

1.7 Therefore, the situation on the day (illness of staff and upcoming storm) was merely the reason why the representative had to act himself. The failure to comply with the time limit was then caused by the representative's lack of awareness that there had been a change in the handling of payments at the European Patent Office. The request for re-establishment fails to give any explanation of the reasons for this real source of non-compliance with the time limit.

2. However, even if such an explanation had been given, as has been done later (see the letter dated 27 July 2018) the request for re-establishment would not have been allowable.

2.1 It can be taken as read that wide parts of the UK faced extremely poor weather conditions on 1 March 2018 (https://www.theguardian.com/uk-news/2018/mar/01/beast-from-east-storm-emma-uk-worst-weather-years). However, on the afternoon of 28 February 2018 the situation was not so extreme that there was an immediate need to evacuate the office or the like. The patent attorney in charge of the case was still able to perform his duties, albeit under pressure to let his staff leave early enough to get home safely.

2.2 For the reasons set out above, the cause of non-compliance with the time limit was the decision of the patent attorney to chose a payment method that was outdated at that stage.

2.3 The case law regarding isolated mistakes within a normally satisfactory system refers to systems where the representative has entrusted tasks such as the monitoring of time limits to well trained staff who operate under his or her supervision. However, as set out for instance in decisions T 1095/06, T 592/11 and R 18/13, a mistake by the representative himself or herself is not normally excusable.

2.4 In the present case the representative was forced by the circumstances to act himself, instead of his well trained and supervised staff. However, a representative acting himself or herself is expected always to be informed of the relevant procedural provisions. In the present case, it seems that the failure to comply with the time limit to pay the appeal fee was caused by the mistaken belief of the representative that an outdated way to make payments was still acceptable, which was not in fact the case. Thus, at the time of leaving the office, the representative was under the impression that everything necessary to comply with the time limit had been performed. As a consequence, the correct payment was only performed when the representative's firm was made aware of the mistake.

2.5 This mistake has been made under the stress of the situation, which might have slightly exceeded other stressful situations an attorney often has to face in the workplace. However the situation as submitted by the appellant cannot be equated with one where a patent attorney was incapable of taking sound decisions due to sudden serious illness or a sudden and unexpected bereavement, as in cases T 525/91 or T 387/11.

2.6 Article 122 EPC and the relevant case law do not excuse mistakes by the representative himself or herself that are the result of ignorance of the latest provisions, even if the representative does not normally perform the duty of paying fees himself or herself. As he or she is the person who is expected to instruct and supervise his or her staff, he or she must always keep informed of the latest developments on how to handle the payment of fees. As he or she is expected to remember what he or she has learned even in stressful situations, it cannot be accepted that the mistake has been made despite all due care having been taken.

2.7 Therefore, even if the appellant had presented its full and conclusive case within its initial request re-establishment could not have been granted.

3. Since the appeal fee has not been paid in due time, according to the reasons set out in decision G 1/18 the appeal is to be treated as not having been filed.

4. As a consequence, the appeal fee has been paid without any legal basis and is to be reimbursed.

Order

For these reasons it is decided that:

1. The request for re-establishment of rights is refused as inadmissible.

2. The appeal is deemed not to have been filed.

3. The appeal fee is to be reimbursed.

New Rfees7 and the ADA

• The February OJ was recently published and contains no amendment of the ADA.
• The arrangements for deposit accounts (ADA) point 4.1 provides that “the ten-day fail-safe provision of Article 7(3)(a) and (b) RFees, second half-sentence, and Article 7(4) RFees apply mutatis mutandis to replenishment payments.” (OJ 2019 sp4)
• However, the ‘the ten-day fail-safe provision’ is abolished with effect of 1 April 2020 (OJ 2020 A3), in the sense that it is no longer ‘ten days’.
• Rfees 7 is the rule about fee payments made with bank transfer, in case the payer initiates the bank transfer before the expiry of the period, but the money only actually enters the EPO bank account after the expiry of the period. ADA 4.1 provides that the rule applies (more or less) also for replenishment payments to deposit accounts. 
• With effect of 1 April 2020, there is no longer a surcharge payable in case the bank transfer was initiated less than 10 days before the expiry of the period. If the bank transfer is initiated on the last day of the period and the money is received by the EPO later, this is considered to be a timely payment.
• Amended Article 7(3) neither has a sub-paragraph A anymore nor a subparagraph B. Moreover, the rule no longer refers to any ten-day period.
• Perhaps the EPO President of the Office could amend the ADA in time before 1 April 2020. Though it sometimes appears that the EPO department in charge of the ADA is completely separate from the department that looks after the Rfees. 

J 0008/19 - Debit order can be corrected (II)

Key points

• The Legal Board concludes that debit orders can be corrected under Rule 139. This is the same finding as in T 317/19. The reasoning is in fact verbatim the same.
• As a comment, the Legal Board does not engage with  T170/83, cited in the GL for the position that debit orders can not be corrected. My understanding is that T170/83 was established case law, but it appears obsolete by now. The reason for the change appears to be G1/12 holding that “that corrections of errors under Rule 139, first sentence, EPC in documents filed with the EPO are generally applicable”. Since the Legal Board can be assumed to know T170/83, but does not mention T170/83 at all, T170/83 is apparently not actually relevant to the question of whether debit orders can be corrected.
• The Legal Board furthermore confirms that a divisional application must be filed on the date prior to the date of publication of the mention of the grant. Even though the publication of the European patent bulletin occurs at 14:00, filing on the same day at 13:37 is too late.
• The error in the debit order for the appeal fee was of a kind that I didn't know was possible: the form 1038E indicated the correct fee by name ("011 Appeal fee for an appeal filed by an entity other than those referred to in Rule 6(4) and (5) EPC"). The box "for the "Amount to be paid", however, showed only EUR 1 860, rather than the correct amount of EUR 2 255. 
• The decision illustrates that even if the impugned decision is that the European patent application is "not to be treated as a European divisional application since the requirements for filing a divisional application had not been fulfilled, and that all fees paid for this application were to be refunded", an admissible appeal can be filed and oral proceedings can be held before the Board.

EPO J 0008/19 -  link

Summary of Facts and Submissions

I. The appeal lies against the decision of the Receiving Section posted on 5 April 2019 stating that European patent application No. XX XXX XXX.X was not to be treated as a European divisional application since the requirements for filing a divisional application had not been fulfilled, and that all fees paid for this application were to be refunded.

II. The appellant filed European patent application No. XX XXX XXX.X as a divisional application from the earlier European patent application No. YY YYY YYY.Y at 13.37 hrs on 25 April 2018.

T 0317/19 - Debit order can be corrected

Key points

• The Notice of appeal was filed mentioning in the Form 1038 the correct appeal fee indicated but the box for "Method of payment" did not indicate a method but stated "Not specified" (I recall that the EPO online filing software allows for this and only gives a very small warning symbol). 
• The Board allows the request for correction under  Rule 139. 
• “In its decision G 1/12, the EBA has already affirmed that a correction of errors under Rule 139, first sentence, EPC in documents filed with the EPO generally applies.”
• “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 Board here departs from T170/83 r.8 and GL A-X, 7.1.1 which 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 Board in T170/83 had held that “the running of deposit accounts falls outside the grant or opposition procedures it is not governed by Rule 88, lst sentence, EPC [1973 = Rule 139 EPC 2000]”  in order to allow a debit order in Dutch. I think that the decision of the current Board makes more sense and implies that the ADA is not outside the general principles of the EPC (see also here) although the present Board does not expressly say so. 
• As a comment, it is a bit of pity that the present Board does not engage with T170/83 which in my view is the pertinent case law. 
• Note 09.01.2020: today J 8/19 was issued with the same holding that debit orders can be corrected under Rule 139. The reasoning is verbatim the same as in T317/19.

EPO T 0317/19 - link

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division posted on 21 September 2018 refusing European patent application No. 11 760 353.0.

II. On 21 November 2018, the appellant filed a notice of appeal which contained the following sentence: "We are paying the appeal fee from our deposit account no. 28050721 by way of the attached fee sheet". It was accompanied by a filled out Form 1038E (titled "Letter accompanying subsequently filed items"). This form indicated in the "Fees" box the appeal fee ("011 Appeal fee for an appeal filed by an entity other than those referred to in Rule 6(4) and (5) EPC") and in the box for "Amount to be paid" the amount of EUR 2 255. However, the box for "Method of payment" did not indicate a method but stated "Not specified". Consequently, the debit order was not carried out. The balance of the deposit account at this date was well above the amount of the appeal fee.

III. In a communication dated 21 January 2019, the examining division informed the appellant that, pursuant to point 5.1.3 of the "Arrangements for deposit accounts" (ADA), the EPO was only accepting debit orders submitted in electronically processable XML format and that debit orders submitted in any other way were considered invalid and therefore not to be carried out.

IV. With a letter dated 30 January 2019, the appellant submitted that it was paying the appeal fee again from its professional representative's deposit account by way of an attached fee sheet. Form 1038E electronically filed on 30 January 2019 together with the above letter contained correctly filled out boxes for the "Amount to be paid" and for the "Method of payment" indicating "Debit from deposit account" as well as the deposit account number and the account holder. As a consequence, the amount of EUR 2 255 was debited from the above account on the same day.

V. In that same letter, the appellant requested a correction under Rule 139 EPC of Form 1038E filed on 21 November 2018 to specify the representative's EPO deposit account in the method of payment box. As an auxiliary measure, the appellant requested re-establishment of rights under Article 122 EPC and paid the corresponding fee.

VI. Oral proceedings were held before the board on 22 October 2019. The appellant's final requests were that the request for correction under Rule 139 EPC be allowed and that the appeal be deemed to have been filed.

VII. The appellant's arguments where relevant to the present decision may be 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