Wednesday, 21 August 2019

T 0703/19 - Legitimate expectation remedies missing appeal fee

In this case, the appellant failed to pay the appeal fee within the 2-month time limit of Art. 108. It would appear that the intention had been to pay when the notice was submitted using online filing, but the correct payment method (via deposit account) was not entered; payment method "not specified"  had been selected. Fortunately, the written notice (attached in pdf format) contained a statement that the appeal fee was "herby paid via online fee payment" and the notice was filed well in advance of the 2-month time limit.

The appellant was not notified of any defect in the notice of appeal, but received a loss-of-rights communication, whereupon the appeal fee was immediately paid along with a request that the fee be considered paid in time. The appellant also filed a request for re-establishment of rights. The appellant's arguments were based on G 2/97and the protection of legitimate expectations.

The statement in the notice of appeal could not, of course, constitute a debit order submitted by electronic means and, as remarked in G 2/97, users of the EPO have a duty to do everything in their power to prevent a loss of rights. This decision also sets out that a Board of Appeal is under no obligation to notify an appellant of a missing appeal fee if there is no indication in any of the filed documents from which the EPO could infer that the appellant would, without such notification, inadvertently miss the time limit. 

It was therefore considered whether the documents submitted in this case contained a clearly identifiable deficiency in this respect. The Board noted that it must be expected that a notice of appeal is read, meaning that some kind of plausibility check is performed. The statement in the notice regarding online fee payment was a clear indication of intent to perform a procedural act. That this intention did not correspond to the factual act was also clearly recognizable. The Board found the circumstances in this case analogous to those in G 02/07, where the notice of appeal made reference to an enclosed cheque which had not been enclosed. 

The appellant could therefore have expected notification from the EPO that the information on payment method was missing, which would have allowed the fee to be paid on time. The appeal was therefore deemed filed and the Board ordered re-imbursement of the re-establishment fee. 

Machine translation of German text
Facts and Submissions
 I. By interlocutory decision of 30 January 2019, the Opposition Division found that the patent in auxiliary request 1 complied with the requirements of the EPC. The two oppositions to the patent were withdrawn by letters of 1 February 2018 and 11 September 2018.
 II. The patent proprietor (appellant) lodged an appeal against the Opposition Division's decision on 8 March 2019, and thus within the two-month time limit provided for therein (Article 108, first sentence), by filing the appeal via EPO online. As part of the online filing of the EPO, Form 1038 entitled "Cover Letter for Subsequent Documents" was generated, to which the notice of appeal was also attached as a PDF.
 III. In the notice of appeal, the appellant made, inter alia, the following statement: "The appeal fee is hereby paid via online fee payment". The accompanying letter for subsequent documents contains information on the nature of the charges ("appeal fee for an appeal ..."), the amount to be paid ("EUR 2 255.00"), but not on the method of payment. To the latter, "Not specified" is listed. The account number is missing. A debit of the appeal fee from the current account of the Appellant's representative did not take place.
 IV. In the communication of 13 May 2019, entitled "Determination of loss of rights under Rule 112 (1) EPC", the appellant was informed that the appeal fee had not been paid and the appeal pursuant to Article 108, second sentence, EPC was therefore deemed not filed. On the same day, the appellant paid the appeal fee and requested that the appeal fee be deemed paid on time. It submitted the statement of grounds on 17 May 2019, and thus within the four-month period foreseen (Article 108, third sentence, EPC).

V. The appellant's reason for considering the claim that the appeal fee was paid on time is based on the protection of legitimate expectations. Following the decision of the Enlarged Board of Appeal G 2/97, appellant argues that the EPO was obliged to draw its attention to the missing details of the method of payment. Such an obligation would be, inter alia, because the error would have been readily apparent and there was also sufficient time to make a timely payment of the appeal fee. In addition, there was no adverse effect on another party in granting her claim, since the two oppositions to the patent were withdrawn.

VI. On 21 June 2019, the appellant applied for re
-establishment and paid the re-establishment fee. It also requested reimbursement of that fee should its legitimate expectations be met in respect of the payment of the appeal fee.
1.          The only subject of the present decision is whether the appeal is deemed to have been filed.
2.          Under Article 108 EPC, the appeal must be lodged within two months of notification of the decision. It shall not be deemed to have been lodged until the appeal fee has been paid.
3.          The decision of the Opposition Division was sent to the Post on 30 January 2019. The deadline for filing the appeal was 9 April 2019. The appeal fee was paid on 13 May 2019. Thus, the appeal is deemed not to have been filed unless one of the remedies - protection of legitimate expectations or reinstatement - is applicable.
4.          The principle of the protection of legitimate expectations requires inter alia that the EPO informs the applicant of an imminent loss of rights if such an indication can reasonably be expected. This presupposes that the deficiency in the EPO is easily identifiable as part of the normal handling of the case in the relevant phase of the procedure and the user can still remedy it in good time (G 2/97, Reasons 4.1).
5.          On the other hand, in G 2/97 the Enlarged Board of Appeal pointed out that users of the European patent system are committed to honest conduct and must do everything in their power to prevent the loss of rights. Thus, neither an indication of a deficiency within the area of ​​competence of a party can be expected, nor can the appellant pass on its responsibility for the fulfilment of the conditions of an admissible appeal to the Board of Appeal (G 2/97, Reasons 4.2).

Easy recognizability and recoverability of the defect
6.          In the present case, the missing payment details were submitted on 8 March 2019, more than one month before the deadline for lodging the appeal. Therefore, there is no doubt that the appellant could have rectified the deficiency in due time if informed about it. The question then arises as to whether the deficiency was easily apparent to the EPO as part of the normal handling of the case during the relevant stage of the procedure.
7.          In G 2/97, the Enlarged Board set an example which the appellant uses as an analogy to the present case: if a letter is received by the EPO expressly mentioning that a check is attached to pay an appeal fee which: But the check is missing, the EPO should draw the appellant's attention to it (G 2/97, Reasons, 4.1).
8.          The present case differs from this example primarily in that the filing of the appeal was made by filing online with the EPO and the appeal fee should be paid in the form of online fee payment as a debit from the current account.
9.          In accordance with Article 5 (2) of the Rules relating to fees, in conjunction with point 5.1. the current account (OJ EPO 2017, Supplementary Publication 5, S.11ff) is debited to the current account solely on the basis of an electronic debit order. Such can be submitted via the online fee payment. Debit orders made by other means, such as submitted on paper or through the web submission are invalid (item 5.1.3). Thus, the statement in the notice of appeal that "the appeal fee ... is hereby paid via online fee payment" cannot be considered a debit order.
10.       However, the fact that the fee is now available through online fee payment and regulated by the current account rules does not mean that any claim for protection of legitimate expectations automatically expires. The question relevant to the present case is not whether the statement made in the notice of appeal constitutes a debit order, but whether the documents submitted contain a readily identifiable defect.
11.       In order to detect a defect, a plausibility check must be carried out. In the example cited in G 2/97, the Enlarged Board assumed that the letter received by the EPO was read, because only then could it be established that the check indicated in the letter was missing. The board is of the opinion that an EPO user may rely on a plausibility check being made when filing an appeal.
12.       In the present case, the following information can be found on the cover letter for documents submitted subsequently: the notice of appeal is given under the heading "Description of the document"; this is followed by the original and the assigned filename - there are no further attachments in this regard; under the heading "Fees", the appellant provided details of the nature of the charges ("appeal fee for a appeal ...") and the amount payable ("EUR 2 255.00"); under the heading "Payment" is under the heading "Payment" "Not specified".
13.       The section "Payment method" allows a selection of different entries - "Not specified" is one of them. This information is relevant when submitting documents for which no fee is due, such as the submission of an appeal.
14.       The Board considers the statement of fees to be an intention to pay the appeal fee at the time of filing the notice of appeal. This corresponds - adhering to the example of the check - the intention to pay the appeal fee with a check.
15.       If there were any doubts as to the intention to pay the appeal fee at the time the appeal was lodged, those doubts would be dispelled with a view to the notice of appeal. By stating "The appeal fee is hereby paid via online fee payment", the appellant's intention to pay the appeal fee with the online filing is clearly recognizable.
16.       The missing indication on the accompanying note on the payment method (and the missing account number) under the heading "Payment" is in clear contradiction to this intention and is therefore evident as a clear defect. In the opinion of the Board, this deficiency becomes apparent when the cover letter is read and confirmed by the notice of appeal. The shortcoming was in any case easily recognizable, since the cover letter and the notice of appeal contain a very limited amount of information.

Responsibilities of the appellant.
17.       In G 2/97, the Enlarged Board made clear that an indication of a deficiency within the remit of one party cannot be expected and that the appellant's responsibility for the fulfilment of the conditions for an admissible appeal is not limited to Board of Appeal. It referred to decisions J 12/94, T 690/93 and T 161/96.
18.       In the Board's view, the present case is different from those decisions:

18.1  In J 12/94, the appellant had expected the EPO to warn it of the threat of loss of rights with regard to entering the regional phase. The board refused to indicate the deficiency, as the EPO relied on the appellant's information - which in retrospect turned out to be false - and did not have the final facts justifying such a loss of rights. The defect was therefore not easily recognizable.
18.2   In T 690/93 the board refused to extend the protection of legitimate expectations to the extent that the appellant must be informed of a lack of a re-establishment fee. It is clear from the facts of the decision that the relevant letter of 22 July 1993, which the Board interpreted as requesting re-establishment of rights, contained no reference to a re-establishment fee.
18.3  In T 161/96, following the decision in T 690/93, the board decided that the EPO was not required to inform the appellant that incomplete payment of the opposition fee was involved, since that deficiency was clearly within the remit of the appellant. However, assuming such an obligation, this presupposes that: (i) the formalities officer of the Opposition Division receives from the Cash and Accounts Directorate within the opposition period, a proof of payment showing incomplete payment, ii) it is objectively precluded that the opponent fails to pay the deficit upon the expiry of the opposition period, and (iii) the opponent may pay the deficit within the opposition period.

19.       The board takes the above decisions that the partial or full payment of a fee falls within the jurisdiction of one party. In addition, all decisions have in common that the defect was not easily recognizable.
20.       However, the fact that the payment of the appeal fee as such falls within the competence of the appellant does not mean that all the related aspects are necessarily affected as well. If that were the case, the Enlarged Board of Appeal in G 2/97 - in the hypothetical example - would not have come to the conclusion that the board should have drawn the appellant's attention to a missing check. Rather, in the board's view, the purpose of the check is that the clearly identifiable intention to perform a procedural act by filing the appeal (payment of the appeal fee) is contrary to the factual act and is easily recognizable. Both are given in the present case.
21.       The appellant could therefore expect to be informed of the missing information under the heading 'method of payment', which would have allowed payment of the appeal fee within the deadline of one month before the deadline.
22.       The Board therefore concludes that the appeal fee must be considered to have been paid on time and that the appeal is thus deemed to have been filed. The reimbursement fee paid by the appellant must therefore be repaid.


For these reasons, it is decided:
The appeal is deemed to have been filed.
The re-establishment fee will be refunded.

This decision  T 0703/19 (pdf) has European Case Law Identifier: ECLI:EP:BA:2019:T070319.20190807
The file wrapper can be found here. Image "Terrier" obtained under free Pixabay license

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