Friday, 20 November 2015

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.

In the first appeal, the appellant did not request reimbursement of the first appeal fee, nor did the examining division order such reimbursement of its own motion. However, after rectifi­ca­­tion, the appellant did request reimbursement of the first appeal fee. In the present appeal, the appellant now (again) requests that the fee for the first appeal be reimbursed.
Reasons for the Decision
Reimbursement of the first appeal fee

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.



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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