Tuesday, 27 December 2016

T 1789/11 - Bills, bills, bills

The opponent filed six related oppositions against patents arising from a parent application and five divisional applications from it. The Notices of Opposition each contained a debit order, ordering that the opposition fees to be debited from the opponent’s deposit account. Unfortunately, the opponent's deposit account had only contained sufficient funds for one opposition fee. After the opposition period ended, the deposit account was replenished and the opposition fee was payed with 30% penalty, under rules of the ADA. The proprietor challenges the legality of this. Note the Arrangements for deposit accounts (ADA) has since changed! (Old rulesNew rulesFaq ) 



Reasons for the Decision
1. The admissibility of the appeal
In view of the facts set out at points I, V and VI above, the board finds that the appeal satisfies the admissibility criteria under the EPC and is thus admissible.
2. The admissibility of the opposition
2.1 The appellant has questioned the admissibility of the opposition. Hence the board has considered this issue, since, if the opposition were inadmissible, then the appeal would already be allowable for this reason alone.
2.2 For the reasons set out below, the board finds that the opposition fees for all six notices of opposition were paid on 23 May 2008, the last day of the opposition period, Article 99(1) EPC, extended under Rule 134(1) EPC, and that all six oppositions are therefore admissible.
2.3 According to Article 99(1) EPC, within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the EPO of opposition to that patent. Notice of opposition shall not be deemed to have been filed until the opposition fee has been paid.
2.4 It has not been contested that the mention of grant of the European patent was published on 22 August 2007. Hence the nine-month opposition period under Article 99(1) EPC ended on Thursday 22 May 2008. This was a public holiday (Corpus Christi) in Munich, so that the EPO's filing office in Munich was closed; see OJ EPO 10/2007, page 502. Consequently time limits ending on this day were, following Rule 134(1) EPC, extended until the first day thereafter on which all the filing offices were open for receipt of documents and on which ordinary mail was delivered, namely Friday 23 May 2008. It is now uncontested that a "combined letter" containing arguments and requests relating to all six cases and six notices of opposition, each on a separate EPO form 2300.1 (Notice of opposition to a European patent), including that relating to the present case, were received by the EPO in time on 23 May 2008. Each notice of opposition form bears a "Opponent's Reference" of the form "8501 50x E-EP", where x=1 for the parent case and 2 to 6 for each of the divisional cases, respectively. For each "Notice of opposition" form the letter also contained a corresponding "Payment of fees and expenses" form (EPO form 1010), also known as a "debit order", bearing the same reference number as "Payer's Reference". Copies of these forms were provided by the opponent at the oral proceedings before the opposition division and are annexed to the minutes. They have also been filed as annex "BOA2" to the statement of grounds of appeal. The combined letter listed all six cases by publication number, starting with that deriving from the parent application (EP 0 717 354), and stated, regarding fee payment, that "The opposition fee of 670 EUR is to be debited from deposit account no. 28000945 (cf. attached EPO form 1010)." In the "combined letter" the opponent requested that the opposition division examine all six oppositions simultaneously in the same procedure, the opposition division subsequently denying this request. The details of the payment of the opposition fees in all six cases have been challenged by the appellant.
2.5 In a submission received on 29 October 2010, the proprietor stated that online file inspection revealed that in all five divisional cases the opponent had made a payment of ¤ 201 on 30 May 2008, this being 30 % of the opposition fee, meaning that the opposition fee for the five divisional cases had not been paid prior to expiry of the opposition period. It appeared that the opponent was relying on the Arrangements for Deposit Accounts (ADA) (Supplement to OJ EPO 10/2007, points 6.4 and 6.5), in particular the case in which a deposit account contained insufficient funds to cover the total fee payments indicated for an application, which seemed to only apply to applicantsThe proprietor also argued that T 0152/85 (OJ EPO OJ 1987, 191) stated that failure to pay an opposition fee within the required period could not be rectified after its expiry. The proprietor requested inter alia that all six oppositions be rejected as inadmissible due to late payment of the opposition fee and that a copy of all six originally filed debit orders, or the sole debit order if there was only one, be made available to the proprietor.
2.6 On 22 November 2010 a communication was issued on behalf of the opposition division stating that the letter from the opponent containing the six notices of opposition had also contained six debit orders, one for each opposition, which had now been made open to online file inspection. Debit orders were not usually scanned into the electronic dossier and were therefore not usually open to public file inspection. Instead, they were usually sent directly to the Treasury and Accounts Department of the EPO. The opponent's account had only contained sufficient funds for one opposition fee. These funds had been used to pay the opposition fee for the first mentioned opposition, namely that against the parent application. Hence the opposition fee for the parent application had been paid in due time. Regarding the oppositions against the patents stemming from the five divisional applications, the EPO had requested the opponent to replenish his deposit account and pay an administrative fee of 30 % (¤ 201) for each opposition fee by 30 June 2008, which the opponent had done. Hence the opposition fee for the five divisional cases had also been paid in due time. Arrangements under ADA were available to any interested natural or legal person and thus also applied to opponents. The mention in point 6.3 ADA of a debit order referring to an application did not exclude opponents; this information was merely required to identify the case to which the debit order related. The replenishment of an EPO deposit account was a matter between the deposit account holder and the EPO. Only the end result, namely whether or not a fee was deemed to have been paid in due time, was relevant for the other parties.
2.7 On 25 November 2010 a further letter was received from the proprietor stating that, under Article 8 RFees in the version applicable in 2008, a time limit for payment shall in principle be deemed to have been observed only if the full amount of the fee has been paid in due time. An amount lacking had to be paid within the time remaining before the end of the period. The proprietor also questioned whether the arrangements under points 6.4 to 6.6 ADA for replenishing deposit accounts were based on Article 7(2) RFees, under which the President of the EPO shall lay down the date on which payments of fees by other methods allowed by him/her under Article 5(2) RFees shall be considered to be made. The proprietor argued that Article 7(2) RFees related only to the payment methods set out in Article 7(1) RFees, namely payments and transfers into bank or giro accounts and cheques. Hence there was no basis in the EPC for payment of an opposition fee after expiry of the nine-month opposition period. The proprietor also argued that a request for re-establishment of rights under Article 122 EPC, involving payment of a fee after the relevant time had lapsed, was only available to applicants and proprietors and not to opponents. Hence the proprietor still questioned the admissibility of at least five of the six oppositions.
2.8 The parent case
2.8.1 According to the reasons for the appealed decision (see points 23 to 27), under item 6.3 ADA the opposition against the parent application was deemed to have been filed in due time, since the opposition fee had been paid in due time. The opponent's deposit account had contained sufficient funds to cover the payment of the opposition fee on 23 May 2008, the last day of the opposition period, Article 99 and Rule 134(1) EPC. The copy of the debit order filed by the opponent, which was open to public file inspection, the electronic version being considered to be the original, Rule 147(3) EPC, carried the "Payer's reference" "8501 501 E-EP" which appeared as "Opponent's reference" in the notice of opposition; see page 1.
2.8.2 With the statement of grounds of appeal the appellant filed as annex "BOA1" copies of the debit order forms obtained by public file inspection. These confirm what is contained in the relevant electronic dossiers. The appellant has pointed out that, on the form relating to the parent case, box 3, relating to the patent application/patent No., and the box at line 17, relating to the code for the opposition fee, are both empty. Handwritten additions ("95 119 547.9" and "010", respectively) near to the empty boxes appear to have been made by the EPO. At the oral proceedings before the opposition division the opponent submitted his own copies of the debit orders, now submitted by the appellant proprietor as annex "BOA2" to the statement of grounds of appeal. These copies of the debit orders differ from those on the electronic file in giving a patent number in Box 3 and "010" in the box in line 17. The appellant has also repeated the arguments made before the first instance (summarized above) that ADA only applies to applications, that T 0152/85 excluded payment of the opposition fee after expiry of the opposition period, that applicants and opponents were treated differently under Article 122 EPC, that ADA contravened Article 99(1) EPC, 2nd sentence, EPC, and that ADA contravened Article 8(1) RFees. The appellant has also questioned whether ADA is based on Article 7(2) RFees and whether Article 7(2) RFees contravenes Article 99(1), 2nd sentence, EPC.
2.8.3 The board finds that, even though there are differences between the versions of the debit orders for each of the six cases provided by the opponent and those open to public file inspection in the electronic dossiers, in each case both versions contain sufficient information to identify the case (via the Payer's reference) and fee (due to the insertion of the amount of "670" in lines 17 and 22, corresponding to the opposition fee, Article 2(10) RFees, Supplement to OJ EPO 3/2008). Moreover both versions give the number of the opponent's deposit account. Hence, whichever version one takes, the debit orders were clear and unambiguous, as required by point 6.3, first sentence, ADA. Hence the board does not accept the appellant's argument that further investigations regarding the debit orders are necessary before the board can decide on the admissibility of the six oppositions.
2.8.4 Regarding the appellant's argument that ADA, in the form published in the Supplement to OJ EPO 10/2007, only applied to applications and not to patents, the board agrees with the opposition division that, according to point 1, ADA, the arrangements were available to "any interested natural or legal person" and thus applied not only to applicants and proprietors but inter alia also to opponents. The mention in point 6.3 ADA of a debit order referring to an application did not exclude opponents, this information being required to identify the case to which a debit order related. An application number accompanies a case throughout proceedings before the EPO.
2.8.5 The appellant has provided no evidence, and the board is also unaware of any, that the Treasury and Accounts Department of the EPO erred in its finding that the opponent's deposit account had sufficient funds on 23 August 2008 to cover one opposition fee; see the finding by the EPO dated 30 May 2008 that the opposition fee was paid on 23 May 2008. As the opposition division put it, the replenishment of an EPO deposit account is a matter between the deposit account holder and the EPO. In the board's view, this also applies to the balance of the deposit account at any particular time. The board is also satisfied that the Treasury and Accounts Department of the EPO followed well known established practice in using the limited funds in the opponent's deposit account to pay the opposition fee for the first case mentioned in the "combined letter", namely the parent case. Hence the board finds that the opposition fee for the parent case was paid in due time before expiry of the opposition period.
2.8.6 The appellant has questioned the legal basis for ADA, in the form published in the Supplement to OJ EPO 10/2007, and, in particular, argued that it contravened Article 99(1), 2nd sentence, EPC regarding payment of the opposition fee within the opposition period. Article 99(1), 2nd sentence, EPC states that "Notice of opposition shall not be deemed to have been filed until the opposition fee has been paid". Article 99 EPC, like many other Articles of the EPC, prescribes the payment of a fee but does not specify the modalities of the fee payment itself. This makes good sense, as otherwise a diplomatic conference would be required to amend the EPC every time the EPO wanted to change its arrangements for accepting payments. Hence Article 33(2)(d) EPC 1973 states that the Administrative Council shall be competent, in conformity with the EPC, to adopt or amend the Rules relating to Fees (RFees) which, as set out in Article 51(4) EPC, determine in particular the amounts of the fees and the ways in which they are to be paid. Following a decision of the Administrative Council (see OJ EPO 2007, 533), the Arrangements for Deposit Accounts (ADA), (published in the Supplement to OJ EPO 10/2007) were established within the framework provided by Article 5(2) RFees, which authorizes the President of the EPO to allow methods of paying fees other than payments or transfers into bank accounts held by the EPO. Under Article 7(2) RFees, the President shall lay down the date on which such payments shall be considered to have been made. This provided the basis for point 6.3, 3rd sentence, ADA, that, provided that sufficient funds were in a deposit account, a fee was considered paid on the date of receipt of a debit order. In the present case that debit order was received on 23 August 2008, the last day of the opposition period, Article 99(1) EPC, extended under Rule 134(1) EPC. Put simply, by maintaining a deposit account with the EPO under ADA, the opponent had credit with the EPO. As soon as the opponent, using a debit order, gave his permission for that credit to be used to pay the opposition fee for the parent case, the fee payment prescribed by Article 99(1) EPC occurred.
2.9 The five divisional cases
2.9.1 The question of whether or not the notices of opposition for the divisional cases were deemed filed within the opposition period, Article 99 EPC, depends on the validity of points 6.4 to 6.6 ADA, in the form published in the Supplement to OJ EPO 10/2007, since the opponent complied with these regulations in replenishing his deposit account and paying the 30 % administrative fees in due time. Of particular relevance is the limitation under Article 33(2)(d) EPC 1973 of the powers of the Administrative Council to only amend the Rules relating to Fees "in conformity with this Convention", including Article 99(1) EPC, second sentence, which states that notice of opposition "shall not be deemed to have been filed until the opposition fee has been paid". Point 6.5, first sentence, ADA stated that "If, within a period of one month of receipt of the communication under point 6.4, the amount is sufficiently replenished to enable the total payments indicated for the application to be debited and, within the same period, an administrative fee under point 6.6 is paid, then the date on which the debit order was received is considered to be the date on which payment was made." (Emphasis by the board.) Put simply, point 6.5, first sentence, ADA and, in particular, the highlighted passage stated that the EPO accepted the debit order as a form of payment. Hence the board takes the view that the Administrative Council did act within its powers under Article 33(2)(d) EPC 1973 in allowing fee payments to be made in this way. A debit order had to be received by the EPO within the opposition period for the opposition fee under Article 99(1) EPC to be considered paid. The ADA arrangements did not provide an opportunity for the opponent to somehow avoid paying the fee under Article 99(1) EPC within the opposition period. Moreover the EPO was not favouring the opponent over the proprietor in this situation by somehow giving the opponent "free credit". On the contrary, the opponent had to pay a further administrative fee of 30% of the fee in question, but not less than ¤ 50 or more than ¤ 305, from the deposit account; see point 6.6 ADA.
2.9.2 According to the appellant, T 0152/85 (OJ EPO OJ 1987, 191) stated that failure to pay an opposition fee within the required period could not be rectified after its expiry. This decision concerned the question of whether or not the absence of any mention of payment of the opposition fee under ADA in a notice of opposition could be corrected under Rule 88, first sentence, EPC 1973, which states that inter alia mistakes in any document filed with the EPO may be corrected on request; see points II and IV in T 0152/85. The board notes that the circumstances in the present case differ from those in T 0152/85, since in the present case the opponent made no request for correction and a debit order arrived at the EPO within the opposition period.
2.9.3 The appellant has also argued that, in the event of a deadline for paying a fee being missed, only an applicant can request further processing under Article 121 EPC and only an applicant or a proprietor can request re-establishment of rights under Article 122 EPC. The board is not convinced that these arguments prove that an opponent cannot take advantage of ADA and also points out that, following G 0001/86 (OJ EPO OJ 1987, 447), also an opponent can request re-establishment into the time limit for filing the statement of grounds of appeal. Moreover no request under either Article 121 or 12

2 EPC has been made in the present case.
2.9.4 The appellant has also argued that, under Article 8 RFees in the version applicable in 2008, a time limit for payment shall in principle be deemed to have been observed only if the full amount of the fee has been paid in due time. An amount lacking had to be paid within the time remaining before the end of the period. The board is not convinced that these facts prove that an opponent cannot take advantage of ADA. Article 8 RFees applies to the case in which the EPO receives a payment in due time which is less than the specified fee, in other words there is a "shortfall". This is not the same as the present case, dealt with in point 6.4 ADA, where a deposit account does not contain sufficient funds to cover a fee. In fact, the payments made by the opponent under points 6.5 and 6.6 ADA into his deposit account were sufficient to cover both the five opposition fees and the five administrative fees.
2.9.5 Hence the opposition fees for the notices of opposition in the five divisional cases were paid in due time and the oppositions are therefore admissible.
This decision T 1789/11 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:T178911.20161208. The file wrapper can be found here. Photo by Clker-Free-Vector-Images obtained via Pixabay under a CC0 license (no changes made).

1 comment :

  1. It seems the (old) ADA rules allowed one to shift the moment of committing to a payment to beyond the expiry of the relevant time limit. That does seem strange.

    ReplyDelete

Statcounter