J 7/08 – Paid

As we have seen in the previous post, the present decision deals with a request for re-establishment into the time limit for paying the renewal fee for the third year. The EPO sent a notification pursuant to R 69(1) EPC 1973 dated March 16, 2006. On May 26, 2006, the attorney-at-law representing the applicant requested re-establishment and pointed out that the renewal fee plus the additional fee had already been paid on December 23, 2005 at a German bank. Evidence for the payment was included, as well as a declaration in lieu of oath by the person who had made the payment. It was not clear why the bank had not transferred the fee to the EPO. The accountancy concerning payments and receipts was done by a tax advisors office quarterly. Therefore, the law firm could only have had feedback on a transfer that had not taken place on March 31, 2006, at the earliest, i.e. after the notification of loss of rights. The bank had declared that close to the turn of year, it happened from time to time that an order was overlooked among the great number of transfers of small amounts, because forms stuck together.

The EPO refused re-establishment, pointing out that a professional representative was necessarily aware of the fact that money transfers sometimes are not carried out and that he would have had to check whether the transfer order had been executed. It was not line with the requirement of all due care to rely on the fact that the order had been filed at the bank.

In what follows the Board deals with this aspect of the impugned decision:

Starting point

[2.1] The formalities officer has dealt with the appellant’s request as if it was a request for re-establishment, without even considering that possibly there was no need for re-establishment because the payment of the renewal fee for the third year plus additional fee can be deemed to have been carried out within the applicable time limit. If this were the case, the request for re-establishment would be pointless. However, when interpreting statements made by the applicant, the Office has to examine the objectively discernable will of the applicant and cannot pin the applicant down to the wording of statements, in particular when this leads to the applicant being adversely affected (see J 6/08 [7]). Therefore, the Board first has to examine whether the time limit for payments has been missed.

Relevant legal provisions

[2.2] For payments made before the entry into force of the Rules relating to fees (RRF) revised in the light of the EPC 2000, the RRF in force at that time are to be applied (see Article 2.3 of the Decision of the Administrative Council (AC) of 7 December 2006 amending the RRF, Special edition n° 1, OJ EPO 2007, p. 199 et seq.). The revised RRF entered into force on the same day as the EPC 2000 (see Article 2.1 of the Decision referred to above), i.e. on December 13, 2007.

In the present case, the transfer order was made on December 23, 2005, and the time limit for the payment ended on January 31, 2006. Therefore, the RRF in force before the entry into force of the revised RRF is relevant. Article 8 of this version, which was in force between January 3, 2002 (see the Decision of the AC of 28 June, OJ EPO 2001, p. 378 et seq.) and the entry into force of the revised version, and which will be referred to as “RRF 1973” below, is entitled “Date to be considered as the date on which payment is made”. Parts of this article, which is identical to corresponding Article 7 of the RRF 2000, read as follows:

(1) The date on which any payment shall be considered to have been made to the EPO shall be as follows :

(a) in the cases referred to in Article 5(1)(a) and (b) : the date on which the amount of the payment or of the transfer is actually entered in a bank account or a Giro account held by the EPO ; […]

(3) Where, under the provisions of paragraph 1 […], payment of a fee is not considered to have been made until after the expiry of the period in which it should have been made, it shall be considered that this period has been observed if evidence is provided to the EPO that the person who made the payment

(a) […] in a contracting state within the period within which the payment should have been made : […]

(ii) duly gave an order to a banking establishment or a post office to transfer the amount of the payment ; […] and

(b) paid a surcharge of 10% on the relevant fee or fees, but not exceeding EUR 150 ; no surcharge is payable if a condition according to sub-paragraph (a) has been fulfilled not later than ten days before the expiry of the period for payment.

(4) The EPO may request the person who made the payment to produce evidence as to the date on which a condition according to paragraph 3(a) was fulfilled and, where required, pay the surcharge referred to in paragraph 3(b), within a period to be specified by it. If he fails to comply with this request or if the evidence is insufficient, or if the required surcharge is not paid in due time, the period for payment shall be considered not to have been observed.

As far as payments by bank transfer are concerned, Article 8(3)(a)(ii) RRF 1973 only requires that an order be given in due form and time. If the transferred amount reaches the EPO after the expiry of the time limit, the time limit is considered to have been observed under Article 8(4) RRF 1973 if the [party] provides evidence to the EPO - after having been requested to do so – that it fulfilled the requirements of Article 8(3)(a)(ii) RRF 1973 and paid the additional fee, if applicable. If these requirements are fulfilled the payment is deemed to have been made in time: “By paying the surcharge the person making the payment effectively buys the right to exploit the time period up until the very last day without needing to worry about the date the payment reaches the EPO.” (Singer/Stauder, Third edition, 2003, Appendix 5, Article 8 RRF, marginal number 16)

Application of the relevant legal provisions

[2.3.1] The Board is convinced that the appellant has established that its then representative had given a banking establishment the order to transfer the amount to be paid, in due form, within the meaning of Article 8(3)(a)(ii) RRF 1973, more than ten days before the expiry of the time limit for paying the fee. As a matter of fact, a colleague of the then representative has ordered a bank in Munich to transfer the amount due for the renewal fee for the third year plus additional fee (altogether 418 €) to the German bank account of the EPO more than five weeks before the expiry of the time limit. The evidence was provided in the form of the remittance slip stamped by the bank and of the declaration in lieu of oath that had been filed.

[2.3.2] However, this money transfer had not been executed by the bank. However, when filing its request for re-establishment, the appellant has made a replacement payment by filing a cheque for deposit as payment for the renewal fee for the third year plus additional fee. This cheque was filed on May 26, 2006, together with the request for re-establishment, and was cashed by the EPO.

[2.3.3] Thus the Board has to examine the question of whether a time limit for a payment is also to be deemed to have been observed within the meaning of Article 8(3) RRF 1973 if the money that has reached the EPO after the expiry of the time limit is not caused (zurückzuführen) by the original transfer order but due to another act of payment that has been made in the meantime.

In decision J 22/85 the Legal Board of appeal has accepted this – albeit without any detailed justification – in a case where the applicant had cancelled the transfer order before the expiry of the time limit because it had realized that it would not be executed in due time, and had replaced it by another payment method (cheque) after expiry of the time limit.

[…] In view of the earlier European patent application n° 00402334.7, where the Office had accepted a replacement payment, the Board has invited the then President pursuant to Article 18 RPBA to comment [on the case]. The President explained in her answer that there were other cases where the EPO had accepted replacement payments in application of Article 7(3) RRF. This provision was intended to make it possible to exclude risks due to delays in money transfers, on which the person having made the payment had no influence, by means of payments that were ordered ten days before the expiry of the time limit for the payment at the latest. In this situation the successful realization of the payment (Eintritt des Leistungserfolges), e.g. the credit entry on an account of the EPO, was not relevant because it was outside the sphere of influence [of the person ordering the payment]. According to the President, the previous individual decisions appear to have been based on the consideration that cases in which transfer orders have not been executed, without there being any fault on behalf of the person making the payment, were not to be treated in a less favourable way than cases in which the payment transfer had been delayed.

[2.3.4] The Board is of the opinion that this result is appropriate.

Article 8(3) RRF 1973 does not contain any limitation in time concerning the moment after the expiry of the time limit at which the delayed amount has to have reached the Office in order to maintain the legal fiction under Article 8(3) RRF 1973 that the time limit was observed. This provision only refers to the chronological relation (zeitliches Verhältnis) between the expiry of the time limit and the order for the transfer. Therefore, a payment that reaches the Office after a notification of loss of rights has been issued can still be subsumed under the wording of Article 8(3) RRF 1973. This is in line with decisions T 842/90 and J 20/00 where it was considered possible that the payment of an additional fee amounting to 10%, which was a prerequisite for considering that the payment had been made in time, be made long after the expiry of the time limit, upon invitation by the Board.

The Board is of the opinion that there is no justification for distinguishing [cases] according to whether the late receipt of the payment after the expiry of the time limit was caused by the original order or whether it was obtained by means of a replacement payment, because the applicant had found out in the meantime that the original order had not been executed. As a matter of fact, in both cases the successful realization of the payment is outside the sphere of influence of the person making the payment.

[2.3.5] In the present case the appellant has made a replacement payment when filing its request for re-establishment, by filing a cheque for deposit as payment for the renewal fee for the third year plus additional fee in the amount of 10% of the renewal fee. There was no need for paying another additional fee in respect of this total amount pursuant to Article 8(3)(b) RRF 1973 because the original transfer order, which had not been executed, had been given more than ten days before the expiry of the time limit. The cheque for deposit reached the EPO together with the request for re-establishment, on May 26, 2006, and was cashed by the EPO.

Indeed, the applicant has paid too high an amount. As a matter of fact, it has paid an amount of 440 € (400+40) that exceeds the amount given in the EPO letter dated September 2, 2005, i.e. 418 € (380+38). However, only the payment of the amount mentioned in the letter was missed; fee increases that have taken place in the meantime are not to be taken into account.

Outcome

[2.4.1] As a consequence of all this, the requirements of Article 8(1)(a), 8(3)(a)(ii), second clause, RRF 1973 are fulfilled and the time limit for the renewal fee for the third year plus additional fee is deemed to have been observed.

Therefore, there is no need for re-establishment, and the appellant’s request for re-establishment is pointless. Thus the corresponding fee has been paid without legal justification and is to be reimbursed. The impugned decision is to be set aside without there being any need for considering further questions of legitimacy, in particular questions of competence.

[2.4.2] The amount paid in excess for the renewal fee for the third year plus additional fee, i.e. 22 € (440 € minus 418 €) has also been paid without legal justification. It has to be reimbursed, too, because this is not an insignificant amount within the meaning of Article 10(c) RRF 1973 and Article 1 of the Decision of the President of the EPO of 6 September 2001 (OJ EPO 2001, 521), which amounts to 10 €.

Request for reimbursement of the appeal fee

The appellant points out that the request for reimbursement of the appeal fee is justified because of the formal deficiencies of the impugned document, which did not state which department of the EPO had issued it, so that the appellant was not able to examine whether the department was competent. To the extent that this document was not a decision, the appeal fee had been paid without legal justification. Assuming the existence of a first instance decision, this decision had to be set aside because of its formal deficiencies, so that even in this case the appeal fee was to be reimbursed.

For the following reasons, the Board cannot endorse this submission.

As mentioned under [1.2], the impugned document dated February 13, 2008, is to be classified as a decision. Thus there was a legal justification for paying the appeal fee.

The only legal basis for a possible reimbursement is R 67, first sentence, EPC 1973, or corresponding R 103(1)(a) EPC 2000. As the latter implements A 109 and A 111 EPC 2000, which are not comprised in the list of Article 1 of the Decision of the AC of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000 (Special edition n° 1/2007 OJ EPO, p. 197 et seq.), R 67, first sentence, EPC 1973 is to be applied (see T 630/08 [1]). According to this provision, the reimbursement of the appeal fee shall be ordered, inter alia, where the Board of appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

It may be true that the impugned decision as such does not expressly state which department of the EPO has issued it. As already established by the Board (see [1.2]), it is clear from the circumstances that the formalities officer has drafted the impugned decision on behalf of the Examining Division. Therefore, the appellant’s assertion, it had been unable to check whether the decision had been issued by a competent department of the EPO is not correct. Thus the Board is unable to confirm the alleged substantial procedural violation.

The Board cannot see other procedural violations, nor has the appellant submitted that there were any. It is true that the formalities officer has erroneously dealt with the appellant’s request as if it was a request for re-establishment, without checking the prerequisites of Article 8(3) RRF 1973. However, this is a material error, which is not comprised by R 67, first sentence, EPC 1973.

Thus there is no reimbursement of the appeal fee pursuant to R 67 EPC 1973. The Board cannot see any other legal justification for a reimbursement.

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