Thursday, 20 January 2011

T 1926/09 – No Spanking Here

From time to time, “appellants” who have not filed a notice of appeal in due time try to argue that the payment of the appeal fee should be sufficient to establish that an appeal had been filed. This attempt invariably fails, but it sometimes gives the boards an opportunity to make a point or two.

[1] According to A 108, notice of appeal must be filed within two months of notification of the decision. The applicant does not dispute that no notice of appeal was filed in due time.

[2] The applicant however contends that a de facto notice of appeal existed in that the appeal fee was paid in time, thus clearly indicating that an appeal was being made which could only have been directed against the decision of 23 April 2009.

[3] The board cannot accept this argument. It was already decided in J 19/90 [2.1.2 to 2.1.4] that merely paying the fee for appeal does not constitute a valid lodging of an appeal. According to said decision, this applies even if the object of the payment was indicated as being a “fee for appeal” relating to an identified patent application and the form for payment of fees and costs was used.

This decision was confirmed in subsequent decisions of the boards of appeal, for example T 445/98 [3] and T 371/92 [3.2, 3.4-5].

Furthermore, the board draws attention to decision T 778/00 [2.1,2,4].

This decision again confirms that the mere appeal-fee payment is no substitute for the procedural act of filing the appeal as prescribed in A 108, first sentence, in conjunction with R 99(1)(b) and (c) (R 64(a) and (b) EPC 1973), because the appeal fee could have been paid by the representative before the party concerned has decided whether or not an appeal should be filed.

[4] The applicant argues that decisions J 19/90 and T 445/98 were both taken in opposition cases rather than ex parte proceedings, where different considerations in the exercise of any discretion should apply. However, the present board is of the opinion that it is in the public interest in both ex parte and inter partes proceedings to be informed with certainty about the applicant’s intention of challenging a first-instance decision. Consequently, there can be no discretion regarding the procedural acts prescribed in A 106 to A 108 in conjunction with R 99 for the filing of an appeal.

Therefore, the present board does not see any valid ground to depart from the case law cited.

[5] The applicant also raised the issue of “natural justice”. It was argued that if a patent application was refused without appeal, the applicant was being unjustifiably “punished” for a perceived “offence”. The applicant was thus forced to seek protection by filing a divisional application of the parent application of the current case which was still pending. It was the applicant’s understanding that filing such divisional applications was not considered by the EPO to be in the public interest and might even constitute an abuse. Therefore, it was unacceptable and improper for the EPO to infer an understanding of the EPC which promoted such a course of action.

The present board wishes to observe the following. The board is far from “punishing” anybody for “offences” perceived or real, but is bound to administer the law as laid down in the Convention. Considerations relating to the filing of a divisional application are not relevant for the present case and cannot, therefore, be taken into account by the board.

[6] For these reasons, the appeal must be rejected as inadmissible (R 101(1)).

Note that the Board found the appeal to be inadmissible and, therefore, refused to reimburse the appeal fee. One might have argued that the appeal should have been deemed not to have been filed, which would have had the consequence that the appeal fee was to be refunded:
“Reimbursement of appeal fees is possible in a case in which no notice of appeal is filed or deemed to have been filed within the time limit prescribed by A 108, so that no appeal has ever existed.” (T 41/82 [1])
Should you wish to download the whole decision, just click here.

To have a look at the file wrapper, click here.

NB: This decision was also reported here.