Tuesday, April 13, 2021 T 488/18 - Withdrawn request for Oral Proceedings need not be made by orignal party for reimbursement

Who exactly should ask for the refund?

During this opposition an insolvency was started for the assests of the opponent. A preliminary insolvency administrator was appointed, who then became a party to the proceedings in opposition by way of a statutory change of party and took the place of the former opponent and respondent. An attempt was made to interrupt the proceedings under Rule 142(1)(b) EPC  or under Rule 84(2), first sentence, EPC but these were rejected. 

When the only request for oral proceedings was withdrawn from the now opponent, the question presented whether this suffices for a 25%  reimbursed of the appeal fee under Rule 103(4)(c) EPC. In a another Board decision (T 777/15), this was denied. The board provides a deep analysis for this point, and comes to the different conclusion that a reimbursement is possible. The following head note was provided:

There may also be a possibility of repayment of the appeal fee under Rule 103(4)(c) EPC if a request for oral proceedings has not been withdrawn by the appellant but by another party to the proceedings who has not filed an appeal (see points 8.3 - 8.9 of the grounds for the decision). (English MT translation by Deepl.)

Eine Rückzahlungsmöglichkeit der Beschwerdegebühr gemäß Regel 103 (4) c) EPÜ kann es auch dann geben, wenn ein Antrag auf mündliche Verhandlung nicht vom Beschwerdeführer zurückgenommen wurde, sondern von einem anderen Verfahrensbeteiligten, der keine Beschwerde eingelegt hat (siehe Nrn. 8.3 - 8.9 der Entscheidungsgründe).

Thursday, June 16, 2016 T 1325/15 - Inadmissible or simply not filed?

Appeals!

This appeal revisits the question whether an appeal is to be found inadmissible or deemed not to have been filed if the notice of appeal is filed within the time limit, while the appeal fee is paid only after expiry of the time limit for filing the notice of appeal.

It is recalled that Article 108 EPC, second sentence, reads "Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid", without explicitly specifying that the fee for appeal should have been paid on time, i.e., within the applicable time limit.

The issue had already been referred to the Enlarged Board of Appeal by T 2017/12 and T 1553/13, without either referral resulting in an answer.

The Board's conclusion is in line with the established practice: the late filing of a document is treated in the same way as its non-filing. As such, the appeal is deemed not to have been filed by the Board.

Catchwords: See points 34 to 43 of the reasons

Tuesday, March 01, 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.

Order

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).

Friday, November 20, 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.

Friday, October 10, 2014 T 0427/11 -- The right to be heard

The opposition division found one of the auxiliary requests to be inventive in spite of the arguments of the opponents.  Opponents had the opinion that their arguments were not fully considered in this decision. Was their right to be heard violated?

Read the full decision to find further interesting sections on the admissibility of late filed evidence and requests, which are not included below.


Reasons for the Decision
1. Reimbursement of the appeal fees and remittal of the case

1.1 Both appellants argue that, in the impugned decision, the opposition division did not give due consideration to all relevant the submissions presented during the opposition proceedings on the issue of inventive step, thereby violating the right to be heard as laid down in Article 113(1) EPC 1973. In particular, the submission that the subject-matter claimed merely corresponded to the automation of an officer's tasks when issuing a passport was not adequately addressed. Moreover, it did not give any reasons why the public prior use according to documents D7 and D8 was closer to the subject-matter of claim 1 as maintained than the other prior art documents on file, in particular document E5', which appellant I had used as a starting point in the opposition proceedings for challenging the inventiveness of the subject-matter claimed.

1.2 The board notes that the right to be heard generally requires that those involved in proceedings before the European Patent Office be given an opportunity not only to present comments on the facts and considerations pertinent to the decision but also to have those comments demonstrably heard and considered, that is, reviewed with respect to their relevance for the decision on the matter. In general, Article 113(1) EPC 1973 guarantees a party's right to have the relevant grounds, i.e. the party's arguments raising reasonable doubts as to the legal or factual basis underlying the reasons for the decision, fully taken into account in the written decision, even though this can be done implicitly (cf. Case Law of the Boards of Appeal of the European Patent Office, 7**(th) edition, 2013, chapter III.B.1.1.).

1.3 Applying these principles to the case in issue, the board judges that the appellant's submissions mentioned above in paragraph 1.11.1 are not irrelevant given the opposition division's positive decision on inventive step of the subject-matter of claim 1 of the (then) second auxiliary request, which corresponds to the main request in the present appeal proceedings. Moreover, the opposition division manifestly took note of these inventive step objections and summarised them in the contested decision (cf. points 6.3.1 and 6.3.2 of the reasons). In its reasoning on why the subject-matter claimed involved an inventive step it started from the public prior use according to documents D7 and D8 as the closest prior art, however, without giving any reasons for doing so (cf. point 6.3.3 of the reasons):

"The Opposition Division holds that the public prior use as disclosed in D7 and D8 represents the most relevant prior art for the contested invention."

More particularly, in the contested decision the opposition division remained silent both on why it considered the public prior use according to documents D7 and D8 a more promising starting point than document E5', which appellant I had relied upon, and on why a combination of the system of document E5' with the self-contained page-turning mechanism of document E4 did not involve an inventive step. Moreover, it did not provide any arguments on why the subject-matter claimed did not merely correspond to the automation of an officer's tasks when issuing a passport. Regardless of the merits of the above objections, the decision is formally defective in that it is tainted by a lack of reasoning on a point relevant for the dispute, thereby resulting in a violation of the appellants' right to be heard guaranteed by Article 113(1) EPC 1973. This amounts to a substantial procedural violation justifying the reimbursement of the appeal fees of both appellants in the event that their appeals are allowable, Rule 67, first sentence, EPC 1973 (which continues to apply, cf. Article 1 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000 published in Special Edition No. 1 of OJ EPO 2007, 197; Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the European Patent Convention 2000 published in OJ EPO 2007, 8; decision J 10/07, OJ EPO 2008, 567, Reasons No. 7).

1.4 Article 11 RPBA provides that a case shall be remitted to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise.

The board holds that special reasons speak against a remittal of the present case to the opposition division, in particular the length of the proceedings to date and the considerable further delay which would ensue from a remittal. Additionally, the opposition division evidently took note of all the inventive step objections raised, even though the corresponding reasoning in the decision under appeal is incomplete. Consequently, considering all the relevant facts, the board concludes that a remittal of the case to the department of first instance would be inequitable. The board thus exercises its discretion under Article 111(1) EPC 1973 and Article 11 RPBA in the sense that it will itself decide on the merits of the appeals.

(...)

Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.
3. The requests for reimbursement of the appeal fees are allowed.
 

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T042711.20140717. The whole decision can be found here. The file wrapper can be found here. Photo by Steve Jurvetson obtained via Flickr under (CC by 2.0) license.