The Boards have explained times and again that the mere payment of an appeal fee cannot replace the filing of a regular notice of appeal. Still, would-be appellants having missed the time limit for filing an appeal keep on trying to persuade the Boards, and sometimes bring new arguments, as in the present case.
On October 29, 2010, the Opposition Division (OD) posted its decision to maintain the opposed patent in amended form.
On December 13, 2010, a sum of 1180 € was credited to an EPO bank account by virtue of an electronically filed debit form. The form referred to this payment as an appeal fee, cited the above application number, and contained the name and address of the representative of the opponent.
In a communication dated March 1, 2011, the Board indicated that it was of the preliminary opinion that the appeal had not been validly filed, since the mere payment of an appeal fee did not constitute a valid means of filing, citing decision T 778/00 in this respect.
On March 3, 2011, the [opponent] filed a statement of grounds of appeal.
The opponent argued that an appeal had been validly filed as the document filed on December 13, 2010 via epoline “was not merely a form for the payment of fees and costs, as was the case in decision T 778/00, but rather “une lettre d'accompagnement relative à des pièces produites ultérieurement” which contained a request, namely that an appeal fee be debited. From the application number, the decision being contested could implicitly be deduced, such that there was no doubt about the sender's intention of filing an appeal against this decision. T 778/00 was additionally not relevant to the present case, because it was rendered before the entry into force of EPC 2000 and was based on the fact that the appeal was not filed in writing, this no longer being a requirement in EPC 2000, and electronic filing now being possible.
The opponent also cited inter alia decisions T 932/93 and T 358/08, which confirmed that a request according to R 99(1)(c) could be implicit, the extent of the appeal being a matter for the grounds of appeal, and J 25/92, wherein it was considered that if a request was uncertain, the EPO should clarify the situation by asking the requester. It further argued that its right to be heard had been violated during the first instance opposition proceedings, as highly relevant documents had not been taken into account.
Well, the Board was not persuaded:
[1] A 108, first and second sentences, provides that notice of appeal must be filed, in accordance with the Implementing Regulations, within two months of the date of notification of the decision appealed from. Notice of appeal is not deemed to have been filed until the fee for appeal has been paid.
[2] In the present case, the decision posted on 29 October 2010 is deemed to have been delivered on 8 November 2010 (R 126(2)); accordingly, the time limit under A 108, first and second sentences, for filing the notice of appeal and paying the appeal fee expired on 10 January 2011 (R 131(4) and R 134(1)).
[3] It is not disputed that the appeal fee was paid in due time, a debit order recording payment of an appeal fee, and including the application number and the name and address of the representative of the [opponent] having been filed on 13 December 2010.
[4] However, no notice of appeal was received within the time limit designated by A 108. The Board thus holds that no appeal has been filed within the time limit for appeal.
[5] For the following reasons, the Board is not convinced by the [opponent’s] submissions in support of the existence of a valid appeal.
[5.1] The [opponent] argued that the debit order could be regarded as a notice of appeal, as it contained all the necessary information required by R 99(1)(b) and (c). More particularly it contained the application number, from which the decision to be contested could implicitly be deduced, and a request, namely that an appeal fee be debited. Thus, it was clear that the sender's intention was to file an appeal against the decision of the OD concerning European patent No. 1 304 366. In this respect, the [opponent] cited inter alia decisions T 932/93 and T 358/08, which confirmed that a request according to R 99(1)(c) could be implicit, the extent of the appeal being a matter for the grounds of appeal.
Rule 99(1)(b) and (c) EPC specifies that the notice of appeal shall contain an indication of the decision impugned, and a request defining the subject of the appeal, respectively.
In the present case, the debit order does not explicitly refer to any decision, nor does it contain a request defining the subject of the appeal. A request that an appeal fee be debited together with an application number cannot be a substitute for an explicit and unequivocal statement expressing the definite intention to contest an appealable decision (see headnotes of T 460/95, J 16/94 and J 19/90). Payment of the appeal fee may at the most imply that the [opponent] intended to file an appeal but does not in itself constitute the notice of appeal required to institute appeal proceedings. Once an appeal fee is paid, the payer remains free to decide whether or not it wishes to lodge an appeal (see T 371/92 [3.5-6]). If it changes its mind and drops the matter, the appeal, being non-existent, is not deemed to be withdrawn, but the fee is reimbursed because no appeal has been filed (see T 696/95).
Decisions T 932/93 and T 358/08 are not applicable to the present case, because in the cases underlying said decisions, the decision impugned was clearly identified in the Notice of Appeal, and there was a request that said decision be set aside (see, for example, T 358/08 [5.1]). In T 932/93 [1.1], the matter of dispute was whether the extent to which amendment or cancellation of the decision was requested under the then applicable R 64(b) EPC 1973, corresponding to the subject of the appeal under R 99(1)(c) EPC 2000 in T 358/08 [5] may be implicit, and not whether the decision impugned had been identified or a request to set said decision aside had been made.
[5.2] The [opponent] submitted that in view of the fact that with the entry into force of EPC 2000, the provision that the notice of appeal must be filed in writing had been deleted from A 108, and the fact that appeals may now be filed in electronic form, it was now obsolete to have to file an explicit statement that an appeal was being lodged.
The deletion of the words “in writing” from A 108 was indeed in view of the future use of electronic means of filing documents (see OJ EPO, Special Edition 4, 2007, Point 1 to A 108), Rule 2(1) EPC 2000 allowing for documents in proceedings before the EPO to be filed by “technical means of communication”, the admissibility of electronic means of filing being announced by the Decision of the President of the EPO dated 26 February 2009 (OJ EPO 2009, 182). However, documents filed in electronic form are subject to the same provisions governing the filing of documents on paper (see Decision of the President of the EPO dated 26 February 2009 concerning the electronic filing of documents, A 10(5), loc. cit.). Hence, the fact that the debit form of 13 December 2010 was filed in electronic form, makes no difference to the requirements of A 108, which are not met [...].
[5.3] The [opponent] further argued that if the EPO considered that a request was uncertain, it should have clarified the matter by asking the requester, citing J 25/92 in this respect. This was particularly pertinent in the present case, since the document accompanying the payment of the appeal fee was filed on 13 December 2010, whereas the time limit under filing the notice of appeal did not expire until 10 January 2011, which meant that the EPO had had nearly one month in which to notify the [opponent] of any potential irregularity.
However, the Board holds that there was nothing unclear or ambiguous concerning the debit order filed 13 December 2010, since it represented a usual method of paying an appeal fee. Filing the notice of appeal and paying the appeal fee are treated as two separate requirements for an appeal in A 108, first and second sentences […]; the appeal fee can be paid together with, before or after the filing of the notice of appeal, so long as the time limit under A 108 is met. As described above […], once an appeal fee is paid, the payer remains free to decide whether or not it wishes to lodge an appeal. There was thus no indication in said debit order from which it could have been inferred that the [opponent] would inadvertently miss the time limit for filing the notice of appeal, which fell nearly a month later, such that there was no reason, let alone an obligation, for the boards of appeal of the EPO to notify the [opponent] that such a notice of appeal was missing (cf. G 2/97).
[5.4] The [opponent] also submitted that the OD had committed a substantial procedural violation by not honouring its right to be heard, as highly relevant documents had not been taken into account.
However, since in the present case there is no appeal […], the Board has no power to judge whether there has been a substantial procedural violation by the first instance (see T 371/92 [headnote]).
[6] Since no notice of appeal has been filed, the relevant fee paid is groundless and must therefore be reimbursed.
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