The Enlarged Board concluded that an appeal is deemed not to have been filed if the notice of appeal is filed after the two-month limit and/or the appeal fee is paid after the two-month limit. Thus, the appeal fee will be reimbursed.

In a welcome development, the Enlarged Board indicated that this also applies to similar situations such as opposition proceedings.

Background on Appeals

Under EPO practice, decisions from the Examining Division, Opposition Division, Receiving Section and Legal Division can be appealed (Article 106 EPC).

Article 108 EPC concerns the time limit for filing appeals and the form that the appeal takes. It reads:

“Notice of appeal shall be filed, in accordance with the Implementing Regulations, at the European Patent Office within two months of notification of the decision. Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid. Within four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations.”

In addition, Rule 101 EPC concerns the rejection of appeals as inadmissible. It reads:

“If the appeal does not comply with …Article 108… the Board of Appeal shall reject it as inadmissible, unless any deficiency has been remedied before the relevant period under Article 108 has expired”.

At the time of writing, the appeal fee for the majority of appellants is 2,255 Euros. Thus, the refund of the appeal fee is worth having if an appeal has not been correctly requested.

Question referred

The EPO President asked the Enlarged Board of Appeal (the highest judicial authority under the EPC) to determine whether an appeal is to be treated as (i) not filed or (ii) inadmissible in cases of a failure to observe the two-month time limit under Article 108 EPC owing to (a) belated payment of the appeal fee and/or (b) belated filing of notice of appeal; and whether the appeal fee should be reimbursed.

Similar questions had been asked in G1/14 and G2/14. However, both cases were terminated without the Enlarged Board deciding on the question.

Importance of this question

The EPO will only refund fees which are paid without legal basis. Consequently, whether or not the appeal fee should be refunded depends on whether or not the appeal is considered to be legally filed.

If an appeal is deemed inadmissible (i.e. it is legally filed) then the appeal fee is not reimbursed. However, if an appeal is deemed not to have been filed then the appeal fee is reimbursed.

Previously different Boards of Appeal had given different decisions on this question. The majority of Boards of Appeal had held that the appeal was deemed not to have been filed and, because no appeal existed, the fee had to be refunded (e.g. T1325/15 and T2406/16).

However, a minority of Boards of Appeal had held that the appeal was inadmissible and thus the appeal fee cannot be reimbursed (e.g. T1897/17). These Boards of Appeal had reached this decision because of Rule 101 EPC.

The Enlarged Board of Appeal’s answer

[See note 01 below]. The Enlarged Board of Appeal took the view that the consequence in law of a failure to observe the two-month time limit under Article 108 EPC is that the appeal is deemed not to have been filed, and not that it is to be rejected as inadmissible; accordingly, the appeal fee will be reimbursed in such cases. In effect, the Enlarged Board of Appeal has endorsed the majority of the Appeal Boards’ view.

The Enlarged Board of Appeal confirmed that the appeal fee will be reimbursed in the following situations:

1. the notice of appeal was filed within the two month time limit BUT the appeal fee was paid after expiry of that two month time limit;
2. the notice of appeal was filed after expiry of the two month time limit AND the appeal fee was paid after expiry of that two month time limit;
3. the appeal fee was paid within the two month time limit prescribed in Article 108 BUT the notice of appeal was filed after expiry of that two month time limit.
4. the appeal fee was paid within or after the two month time limit prescribed in Article 108, first sentence, EPC for filing the notice of appeal AND no notice of appeal was filed.

Interestingly, the Enlarged Board of Appeal seems to have taken the further view that its answer applies not only to appeals but also, given the similarity of the wording, to similar situations such as opposition proceedings (Article 99(1) EPC) [see note 02 below].

Reasoning behind the decision

The Enlarged Board of Appeal gave detailed reasoning explaining how they had reached their conclusions. In essence, the Enlarged Board of Appeal considered that first and second sentences of Article 108 EPC form the first step and, thus both acts need to be performed within the two-month period. Once the existence of an appeal has been established, the second step – namely: admissibility of the appeal - can be considered. This second step is detailed in the third sentence of Article 108 EPC which requires the statement of appeal to be filed within four-months. If this second step is not observed then the appeal is dismissed as inadmissible in accordance with Rule 101(1) EPC.

Accordingly, Rule 101(1) EPC should only be read as applying to appeals that have been validly filed (i.e. step 1 has been fulfilled).

Take home messages

The Enlarged Board of Appeal has endorsed that an appeal is deemed not to have been filed if there is a failure to pay the fee and/or file the notice within the two-month time limit set under Article 108 EPC. In such circumstances, the appeal fee will be refunded.

For similar reasoning, the Enlarged Board of Appeal endorsed that the opposition fee will be refunded if there is a failure to pay the fee and/or file the notice (i.e. opposition statement) within the 9-month time limit set under Article 99(1) EPC.

Notes

01: The full text of the Enlarged Board of Appeal decision is not yet available in English, the following is based on the press release and a machine translation of the decision.

02: Article 99(1) EPC reads: “Within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the European Patent Office of opposition to that patent, in accordance with the Implementing Regulations. Notice of opposition shall not be deemed to have been filed until the opposition fee has been paid.”