The present decision deals with a case where the applicant had paid two additional search fees to the EPO acting as ISA under the PCT. When entering the European regional phase, he limited the application to the first group of inventions and obtained a 50 % reduction of the examination fee under R 107(2) EPC 1973. Later on, he filed a divisional application and requested the same reduction, which was not granted. Those familiar with J 14/07 might have a déjà vu experience.
The decision is very carefully reasoned; this is why I have translated a rather lengthy portion.
[…] Article 12(2) of the Rules relating to fees (RRF) 2003 only fixes the reduction of the examination fee to 50 %. As far as the requirements for the reduction are concerned, it refers to R 107(2) EPC 1973.
The appellant has to be approved in that the wording of R 107(2) EPC 1973 does not refer to a particular procedural situation and only requires the identity of the object to be examined with the object of the international preliminary examination report (IPER) for the reduction to be granted. According to its wording, the provision would establish a general factual standard for fee reduction and would concern all application proceedings available under the EPC, including divisions and proceedings under R 15 EPC 1973.
As the Legal Board of appeal has already stated in its decision J 14/07 [3], R 107 EPC 1973 is to be interpreted as a meaningful coherent whole (Sinnzusammenhang) formed by its two paragraphs and has to be read in the context of the other provisions of the chapter in view of the entry of the international application into the European phase.
There is coherence of meaning (Sinnzusammenhang) between both paragraphs because paragraph 1 lists the fees to be paid upon entry into the European phase and fixes the time limit for filing a request for examination. The object of the request for examination is the examination report that is to be established. The corresponding fee is reduced according to paragraph 2 if the EPO has established the IPER for this object. Therefore, it would be contrary to the meaning of the provision to interpret paragraph 2 without any reference to the entry of an international application into the European phase, which is presupposed by paragraph 1.
[…] If R 107(1) EPC 1973 deals with the particular procedural situation at the entry of an international application, then R 107(2) also has to be read within this legal context and cannot be interpreted as a general provision for fee reduction in any procedure. [6]
[…] If the wording of R 107(2) EPC 1973 were to be interpreted as a general provision, it would not have had to be inserted in R 107(2) EPC 1973 but would have had to be a provision of the RRF, for the sake of the systematics of the law (aus gesetzessystematischen Gründen).
From the fact that the legislator has made such a general provision for a reduction of the search fee in Article 10(2) RRF it follows that it is not due to an “oversight” that the differing provision concerning the examination fee in R 107(2) EPC 1973 is found among the provisions governing the entry of the international application into the European phase. [7]
[…] The applicant claims the direct application of R 107(2) EPC 1973 but also justifies [the application of the provision by pointing out] that he had already paid an additional search fee for the claimed object during the international phase. However, if R 107(2) EPC 1973 were to be applied directly to divisional applications, this would not be a requirement for granting a fee reduction. The Board would not be empowered to “read” this additional requirement “into” the provision. If a broader interpretation were to be adopted, it would also apply to a divisional application such as the one on which J 14/07 was based: The objection of lack of unity had been raised against the corresponding international application, but no second examination fee had to be paid. Therefore, the applicant filing the divisional application would have the benefit of two fee reductions (i.e. for the parent and the divisional application) although he has only paid one examination fee during the international phase of the parent application. [8]
Finally, the immediate application of R 107(2) to all proceedings where the object to be examined was the object of an international preliminary examination according to the PCT would lead to the result that all divisional applications of first and subsequent generations based on an object that had been examined in an international application could claim a reduction, irrespective of whether they stem from a “voluntary” division or from a division necessitated by an objection of lack of unity, and, therefore, irrespective of whether during the international phase an additional examination fee was paid. Such “voluntary” divisions would be favoured with respect to “voluntary” divisions of direct European applications because no fee reduction is provided for the latter, although even in these proceedings the examination report will, as a rule, be based on an examination report drawn up for the parent application. The applicant admitted during the oral proceedings that there was no right to fee reduction for “voluntary” divisional applications which stem from an international application, because there was no necessity to pay additional fees during the international examination. However, the wording of R 107(2) does not have such an additional limitation and, as mentioned above, the Board is not empowered to read such a limitation into the provision, as there is no legal basis to do so. [9]
In order to refute an argument based on the principle of good faith (Treu und Glauben), the Board then cites G 1/05 [8.1] which reaffirmed the statement of G 4/98 [5] according to which “the procedure concerning the divisional application is in principle independent from the procedure concerning the parent application and that the divisional application is treated as a new application”, and pursues:
If the divisional application is to be considered with regard to the legal provisions (relating to fees) ((gebühren-)rechtlich) as a new application, the amount of the fees to be paid is determined by the fees that are to be paid for a new application. Therefore it is not relevant whether the divisional application is “rooted” in the international application.
Therefore, the present divisional application has to be considered with regard to the legal provisions relating to fees as a “European” divisional application. This legal difference justifies that an object that has been examined during the international phase is treated differently, with regard to the legal provisions relating to fees, in a parent application originating in an international application than in a divisional application. Even if there is the possibility in both cases that the (same) Examiner may rely on an earlier report (established by himself) in the international phase, the legislator is not compelled by the principle of good faith to treat the different applications in the same way. [11]
The applicant also pointed out that in view of Article 31(1) of the Vienna Convention on the law of treaties Article 34(3)(a) PCT had to be considered in the interpretation of R 107(2). When creating this provision, the fathers of the PCT had considered the possibility of filing of divisional applications during the national or regional phase. If the applicant had to pay a higher examination fee when filing a European divisional application than for a European parent application which stemmed from an international application, he would be punished with regard to the legal provisions relating to fees and would not take advantage of the possibility of choice offered in Article 34(3)(a) PCT.
The Board considers that A 150(2) EPC 1973 requires an interpretation that is in line with the PCT because, whenever EPC provisions are in conflict with the PCT, the PCT provisions shall prevail. However, Article 34(3)(a) PCT does not regulate, neither directly nor indirectly, the amount of an examination fee to be paid for a divisional application in comparison with the fee to be paid for an international application during the national or regional phase. The extension of the IPER to the objects of the invention that were objected to as lacking unity, which is subject to fees (gebührenpflichtig), allows the international applicant to decide whether he should file a divisional application during the European phase at all. Thereby he may possibly save all the fees that fall due upon filing of a divisional application, on the basis of the IPER. For this reason alone the rule is meaningful. Therefore, the interpretation of R 107(2) EPC 1973 by the Board does not legally infringe Article 34(3)(a) PCT nor does it “factually” abrogate it. Therefore, this interpretation does not infringe the criterion given in Article 31(1) of the Vienna Convention according to which the aims and purposes of the rule have to be taken into account, either. [12]
As in the present case the reduction of the examination fee is requested for a European divisional application, the procedural situation required by R 107(2) EPC 1973, i.e. the entry of an international application into the European phase, does not exist. Therefore, the request of the appellant for reduction of the examination fee cannot be based on R 107(2) EPC 1973. [13]
The appellant further claims analogous application of R 107(2) EPC 1973. According to the appellant, the divisional application concerns an object for which he had paid a second examination fee during the international phase of the parent application because an objection of lack of unity had been raised during the preliminary examination. The EPO had also been an elected office for the divisional application issuing from international application. Therefore, the divisional application was also rooted in the international application. Thus the interests involved corresponded to the procedural situation governed by R 107(2) EPC 1973. [14]
In order for there to be an analogous application, there would have to be a unintended legal loophole (planwidrige Regelungslücke) and moreover the interests to be regulated would have to correspond to the interests which are regulated by the provision that is to be applied analogously. The analogous application of the provision has to lead to a rule that is generally applicable and which the legislator would presumably have ordered had he had knowledge of the legal loophole. [15]
The appellant may be approved in that, from the point of view of the applicant, there is an interest in having a fee reduction for a divisional application, in the same way as for a European patent application originating from an international application, when he has paid a second examination fee during the international phase. However, this interest in having a fee reduction does not establish a legal loophole. The amount of the examination fee to be paid results from A 94(2) EPC 1973 together with Article 2.6 RRF 2003. By providing the requirement to pay a full (examination) fee the legislator has stipulated his unambiguous legislative will. A reduction of the fee then requires an explicit legal exception because it is in the discretion of the legislator to grant a reduction or not to do so. Therefore, the request of the appellant finally aims at a correction of the legal situation, which is to be decided exclusively by the legislator and not by the Board of appeal by means of an analogous application of R 107(2) EPC 1973. [16]
[…] The appeal is dismissed.
I find this decision stimulating because the Board puts the finger on a break of symmetry between a Euro-PCT application and a (direct) European application. When a divisional application is filed on the basis of a (direct) European application, it is as if there had been two (direct) European applications right from the start : all the renewal fees have to be paid again etc. When the divisional originates from a Euro-PCT, things are not as if there had been two PCT applications (the PCT fees are not paid again …) but as if there had been a (direct) European application parallel to the PCT application. As a consequence, the divisional cannot benefit from PCT facilities such as the fee reduction under R 107(2).
To read the whole decision (in German), click here.
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