Tuesday, 1 March 2016

T 1402/13 - No 50% reimbursement of the appeal fee

This decision relates to a conditional withdrawal of an appeal and a request for reimbursement of the appeal fee since no preliminary opinion was issued by the board and no date for oral proceedings was set. Problem was however that the applicant (appellant) did not pay the renewal fee that was due earlier (31 August 2015) than the withdrawal of the appeal was submitted (19 February 2016). Interestingly, this decision was published straight away, on 25 February 2016, while the applicant could still pay the renewal fee with a 50% surcharge until 29 February 2016. Of course this would not have been (money-) wise because the return of the appeal fee (1240 euro at the time; 50% being 620 euro) would not outweigh the costs for the renewal fee plus surcharge (2340 euro). To be on the safe side, the board could have waited until after 1 March 2016, but they did not.
The conclusion is that one cannot get a reimbursement of the appeal fee when an application is no longer pending. The appeal procedure in this case has ended due to the loss of rights. The declaration regarding the withdrawal of the appeal cannot be effective.

Summary of Facts and Submissions
I. The appeal lies against the decision of the Examining Division dated 17 December 2012. It was filed on 13 February 2013. A statement of grounds was submitted on 24 April 2013.
II. The renewal fee for the 12**(th) year fell due on 31 August 2015 and was not paid by that date.
III. On 18 February 2016 the Appellant submitted a declaration stating: "The Appellant ... hereby withdraws their Appeal against the decision of the Examining Division upon the condition that the withdrawal is received in time to qualify for at least a 50 % refund of the appeal fee."
IV. The Board has neither issued a preliminary opinion nor set a date for oral proceedings.
Reasons for the Decision
1. Procedural declarations may be made with the proviso that certain conditions are met, as long as a case is already pending (J 16/94, referring to Article 108, first sentence, and Rule 64(b) EPC 1973; T 854/02, Reasons 2.1) and these conditions do not concern facts outside the proceedings (T 502/02, Reasons 1, referring to Articles 21 and 111(1), second sentence, EPC). Thus, whereas a conditional appeal is not possible, the conditional withdrawal of an appeal may be valid (T 6/92, Reasons 2 and 3; T 304/99, Reasons 3.1.).
2. The withdrawal of an appeal can, though, only take effect if the appeal is still pending.
3. This is not the case here. Since the renewal fee for the 12**(th) year was not paid in due time, the application is deemed to be withdrawn in accordance with Article 86(1), 3rd sentence, EPC. Such a loss of rights also affects the appeal proceedings. The fact that the Appellant might still reverse the loss of rights by paying the renewal fee plus an additional fee (50 % of the renewal fee) within 6 months after the due date, does not change the current situation, since no such fees have been received by the Office. Thus, at present the application is no longer pending and hence the appeal proceedings have also ended due to the loss of rights. Therefore, the declaration regarding the withdrawal of the appeal cannot be effective.
4. In consequence, the prerequisites of Rule 103(2) EPC are not met. Thus, no reimbursement of the appeal fee or parts of it is possible for as long as the renewal fee plus the additional fee have not been paid.
For these reasons it is decided that:
The request for a (partial) reimbursement of the appeal fee, dated 18 February 2016, is refused.
This decision has European Case Law Identifier: ECLI:EP:BA:2016:T140213.20160225 and can be found here. The file wrapper can be found here.Photo "Flower" by Jeremy Knight via Flickr under a CC-By license (no changes).


  1. The Board states that " Thus, at present the application is no longer pending", however this is within the six months period for paying the renewal fee with an additional fee. Guidelines A-IV.1.1.1 in contrast was amended this year to read "In the event of non-payment of a renewal fee by the due date (Rule 51(1)), the application is pending up to the last day of the six-month period for payment of the renewal fee with an additional fee (Rule 51(2)), [...] even if the fees are ultimately not paid." Did the Board intend to overrule (correct) the Guidelines?

    1. Good point! Of course the Guidelines in A-IV 1.1.1 relate to the filing of a divisional but stating that "Deemed withdrawal of the application takes effect on expiry of the six-month period." indicates that such would be valid in other cases as well. I would say that an application cannot be deemed to be withdrawn for one procedure and not for another.
      Who knows. The Board might have missed this. Interesting.

  2. I would like to respectfully draw the attention to the two commenter above of decision T 736/14 of 25.02.2016.
    In Point 4.2 of the reasons it was held that:
    - "the Boards of Appeal of the EPO are neither bound by nor accountable for the Guidelines for Examination in the EPO",
    - "in their decisions, they are required to comply only with the provisions of the EPC"
    - "they are in no way competent to rule on whether the Guidelines for Examination in the EPO, which are adopted by the President of the EPO in view of Article 10(2)(a) EPC, are consistent with their established jurisprudence"
    - "Pursuant to Art 20(2)RPBA, a board may at best state the grounds for giving a different interpretation of the EPC to that given in these Guidelines, if a board considers that this would be more readily understood".
    Any reference to the Guidelines is thus moot.

    In a letter of 08.03.2016, the applicant reiterated his request for reimbursement of half the appeal fee as he considered that since the file being deemed withdrawn since 31.08.2015, the appeal should as well be deemed withdrawn as of the same date. The only flaw here is then why has the applicant filed a formal withdrawal of the appeal? In any case he could have done this much earlier, as the appeal was filed in Feb/Apr 2013 and the deemed withdrawal occurred in Aug 2015.
    The case having been closed by the decision of the BA, it is more than doubtful that anything will happen from the side of the EPO.

    The lesson is: if you want to withdraw an appeal, do this before a renewal fee is due.

  3. Please have also a look at J 4/11:
    An application which has been deemed to be withdrawn for non-payment of a renewal fee is not pending within the meaning of Rule 25(1) EPC 1973 in the period for filing a request for re-establishment of rights under Article 122 EPC 1973 in respect of such non-payment or in the period after which such an application is filed in the event of such request being refused.
    If an application is deemed withdrawn for non-payment of the renewal fee when it comes to re-establishment under Art 122, then this should apply as well to the withdrawal of an appeal.

  4. Anonymous 11.20 and 12.4217 March 2016 at 17:40

    In Points 19-21 of J 4/11, the BA made clear that the time limit when the application is deemed withdrawn is not the end of the "grace period", but the actual moment from which the grace period starts running.

    In other words as soon as the grace period starts, a divisional application cannot any longer be filed. The wording grace period does not exist any longer, but the mechanism is the same.

    It has to be seen whether the actual version of the Guidelines with respect of filing divisional application is in accordance with case law, and especially J 4/11.

  5. Thank at the anonymous of 17 March! Though J 4/11 has extensively been discussed on the internet and does not quite seem to state what you read into it. The Board states under the "Facts" that " Before the date when the parent application was filed, the grandparent application had been deemed to be withdrawn for non-payment of the renewal fee for the fourth year. However, a request for re-establishment of rights had been filed in the grandparent application before the filing date of the parent application. " Hence, the Board does not answer the question we are dealing with (no RE request can be filed during 6 months period of Rule 51(2). Para. 19 of J 4/11 is about designation fees and the grace period for the request for examination. Para. 20 is about "finally withdrawn" . Para 21. is about the effect of a right to file a RE request. Further, para. 11 starts with "As to the point in time when this deemed withdrawal took place," and concludes that the loss of rights occurs on expiry of the time limit that has not been observed" (citing G 1/90). Moreover, in J 4/11, EPC 1973 is applicable and the whole issue turns up because of deleting "and any additional fee" in EPC 2000.
    As to the Guidelines, the Boards indeed do not even need to overrule the GL. I would rephrase the question as: was the Board even aware of the debate about the issue and the Guidelines having been amended last year to state the opposite? Is this decision precedent or dictum?

  6. another anonymous19 March 2016 at 19:12

    Interesting discussion. I noticed that J 4/11 quotes from G 4/98, which cites J 4/86. J 4/86 is about R. 85b EPC 1973 (grace period for requesting examination) and concludes that the application is deemed withdrawn upon expiry of the regular period. It also discusses the grace period for renewal fees. There seem to be reasons for treating the two differently.

    I don't understand why a (temporary) deemed withdrawal of the application means the appeal is (temporarily?) not pending.

    If a board dismisses an appeal in oral proceedings on 01.04 and later the renewal fee turns out not to have been paid on 31.03, does that mean the decision is without effect because no appeal was pending?