Thursday, 19 November 2009

T 783/08 – Sign Once And You’re In

The patentee and the opponent both filed appeals against the decision to maintain the patent in amended form. The patentee omitted to file a statement of grounds. He later requested that the appeal fee be reimbursed, should his appeal be rejected as inadmissible, because the notice of appeal had not been signed.

[…] The notice of appeal filed by fax on April 24, 2008 consists of two documents, i.e. a letter to the EPO with the header of the representative of the second appellant, and a debit note (form 1010 of the EPO). The letter contains the name and the address of the appellant, the reference of the impugned decision and the request to set aside the impugned decision and to maintain the patent as granted. This letter is not signed but the debit note, which is also dated April 24, 2008, is signed by the representative mentioned in the header of the letter. [2.1.1]

A 108 EPC and R 99 EPC do not contain any provisions concerning signature of the notice of appeal. However, R 99(3) contains the following indication : “Part III of the Implementing Regulations shall apply mutatis mutandis to the notice of appeal, the statement of grounds and the documents filed in appeal proceedings”. R 41(2) h) EPC provides that the request for grant has to contain the signature of the applicant or his representative.

It follows from R 99(3) in combination with R 41(2) h) EPC that the notice of appeal has to be signed by the appellant or his representative. However, it cannot be derived from these provisions that each single document of a notice of appeal has to be signed or that the signature has to be in a particular place or on a particular page. As in the present case the debit note is part of the notice of appeal, the Board considers that the signature on the debit note is sufficient to satisfy the requirements of the EPC and to legally validate the notice of appeal. Therefore, the appeal of the second appellant has been validly filed. [2.1.2]

[…] As the appeal is validly filed but has to be rejected as inadmissible, because no statement of grounds has been filed, the reimbursement of the appeal fee is not justified. [2.3]

This decision is interesting for people who continue to file appeals by fax or letter. Even though they might become more and more rare, these ‘old school’ techniques allow some very nice tricks. For example, a patentee who is happy with a patent maintained in amended form but does not want to find himself in the situation where the opponent is the sole appellant (a non reformatio in peius situation) can file a notice of appeal without signature and provide the signature later on if (and only if) the opponent has filed an appeal. If the opponent does not file an appeal in due time, the patentee simply does not supply the missing signature, which entails the consequence that the appeal is deemed not to have been filed - and the appeal fee is reimbursed ! One thing we learn here is that if one wishes to use this trick, one must not file a debit note at the same time.

I guess that it is not possible to file an unsigned appeal via epoline, but I have to admit that I have not tried yet.

To read the whole decision (in German), click here.