T 0893/13 - Reimbursement of earlier appeal fee
This appeal follows an earlier appeal against the decision of the examination division to refuse the patent application based on a.o. a lack of clarity. In the earlier appeal, the examining division rectified its decision under Article 109(1) EPC and continued examination, only to decide (again) that the application did not comply with a.o. Article 84 EPC.
Reasons for the Decision
1. Following a decision of the Administrative Council of 13 December 2013, an amended version of Rule 103 EPC entered into force on 1 April 2014. According to Article 2(2) of that decision, the new rule also applies to appeals pending at the date of entry into force, hence also to the present one.
2. The relevant parts of Rule 103 EPC as presently in force read as follows:
"(1) The appeal fee shall be reimbursed in full
(a) in the event of interlocutory revision or where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation, [...]
(3) The department whose decision is impugned shall order the reimbursement if it revises its decision and considers reimbursement equitable by reason of a substantial procedural violation. In all other cases, matters of reimbursement shall be decided by the Board of Appeal."
Competence of the board
3. Firstly, it has to be decided whether the board is competent to decide on the appellant's request to have the first appeal fee reimbursed even though the request was filed only after the examining division rectified its decision in response to the first appeal.
3.1 According to Rule 103(2) EPC, the examining division orders reimbursement if it concludes that it is equitable by reason of a substantial procedural violation. Since Rule 103 EPC does not require there to be a request for reimbursement, the examining division has to assess of its own motion whether reimbursement of the appeal fee is equitable under the circumstances (see also G 3/03, OJ EPO 2005, 34, reasons 3, 2nd sentence). The board has no reason to doubt that the examining division fulfilled this obligation, as it also expressly declared in the decision under appeal (page 3, 4th paragraph).
3.2 In J 32/95 (OJ EPO 1999, 713) it was decided that the department whose decision has been impugned does not have the power to refuse a requested reimbursement of the appeal fee but that such power lies with the board of appeal (see the headnotes). This decision was confirmed by G 3/03 (OJ EPO 2005, 34, see headnote 1). New Rule 103 EPC was expressly meant to codify J 32/95 (see OJ EPO Special Edition No. 1, 2003, 184).
3.3 Although under Rule 103 EPC the examining division has the power to order reimbursement of appeal fee, it does not have the power to decide that the appeal fee is not reimbursed (see also G 3/03, reasons 2). Rule 103 EPC expressly provides that "all other matters of reimbursement shall be decided by the Board of Appeal".
3.4 Therefore, according to Rule 103 EPC the board is competent to decide on reimbursement of the appeal fee whenever the examining division revises its decision and does not order reimbursement itself.
4. In T 21/02 it was decided that "Where a request for reimbursement of the appeal fee [...] was submitted only after the contested decision had been rectified [...], failing a decision of the department of first instance, no legal basis exists for the Board of Appeal to decide on that request" (see headnote). It was reasoned that, if an appeal "had been fully dealt with (by way of interlocutory revision) and was, thus, no longer pending, when the request for reimbursement was submitted, [...] the request was submitted in the absence of a pending appeal and could not, hence, constitute an ancillary issue to be dealt with in appeal proceedings" (see reasons 5). It was further argued that, when a request for reimbursement was filed only after rectification, the procedural situation was the same as if "the Board of Appeal had decided upon it and remitted the case to the department of first instance for further prosecution" (see still reasons 5; see also T 242/05, headnote).
5. The board disagrees with this finding.
5.1 In particular, the board disagrees that non-reimbursement of the appeal fee by the examining division in the case of interlocutory revision of its decision must be equated with the situation in which the board of appeal has refused a corresponding request.
5.2 G 3/03 states (reasons 3, 4th sentence) that "In the absence of a request for reimbursement of the appeal fee, the decision of the department of the first instance granting interlocutory revision pursuant to Article 109(1) EPC will make no mention of the issue of reimbursement of the appeal fee, and the appellant will not be adversely affected by the decision."
5.3 Apparently, the appellant is not adversely affected by the granting of interlocutory revision itself. Thus the board takes the main point of that statement in G 3/03 to be that an appellant who did not request reimbursement of the appeal fee is not adversely affected by the fact that the examining division did not order reimbursement.
5.4 Since the examining division is not competent to decide that the appeal fee is not reimbursed, an interlocutory revision without an order for reimbursement cannot be construed as a decision not to reimburse.
5.5 Rather, the board considers that the request for reimbursement of the appeal fee can be validly filed even after the examining division has granted interlocutory revision, since Rule 103 EPC entrusts the board with the decision on "all other matters of reimbursement" based on only the two conditions mentioned: That the decision was rectified and the appeal fee was not reimbursed by the examining division.
6. Therefore, the board considers itself competent to deal with the appellant's request for reimbursement of the first appeal fee.
Termination of financial obligations
7. According to Article 13(2) RFees, rights against the Organisation for the refunding by the European Patent Office of fees are extinguished after four years from the end of the calendar year in which the right arose. The appellant's potential right to have its appeal fee reimbursed arose from the decision of the examining division to grant interlocutory revision. This decision bears the date 26 March 2012, so the Office's potential obligation to reimburse the fee is not extinguished until the end of 2016.
The alleged procedural violation
(Substantive discussion on the procedural violations omitted...)
13. In summary, the board concludes that no substantial procedural error occurred in the examining proceedings leading to the first appeal or the examining division's decision to rectify and that, therefore, the request for reimbursement of the first appeal fee must be rejected.
(...)
Order
For these reasons it is decided that:
1. The appeal is dismissed.
2. The request for reimbursement of the first appeal fee is refused.
This decision T 0893/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2015:T089313.20151109. The file wrapper can be found here. Photo "Galleries of Justice Museum - High Pavement, Nottingham - Debtor's Prison & Dark Cells - Table of Fees" by Elliott Brown obtained via Flickr under CC BY 2.0 license (no changes made).
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