J 9/10 – Partial Reimbursement

About one year ago, we have seen decision J 25/10 (here) where the Legal Board found that a refusal to partially reimburse the examination fee could not be based on the mere assertion that the substantive examination had begun when the application was withdrawn. The present decision sheds more light on this matter.

The applicants requested examination under A 94(1) EPC 1973 on June 6, 2007. The examination fee was paid with transaction date of 6 July 2007.

An extended European search report (EESR) was communicated to them on November 14, 2007. Objections under A 54 and A 56 were raised. The applicants did not respond to the EESR either by filing amended application documents or observations on the objections raised.

On December 15, 2008, a communication pursuant to R 70(2) was sent inviting the applicants to indicate, within 6 months, whether they wished to proceed further with the application. The applicants confirmed their intent to proceed further with the application on April 24, 2009.

On May 28, 2009, the EPO issued form 2001A entitled “Communication pursuant to A 94(3) EPC” was issued inviting the applicants to rectify the deficiencies as mentioned in the EESR within a time limit of four months.

In a letter dated July 13, 2009, the applicants withdrew their application on condition that 75% of the examination fee was to be reimbursed pursuant to Article 11(b) RRF.

In a letter dated July 20, 2009, the formalities officer acting on behalf of the Examining Division (ED), the applicants were informed that a refund of 75% of the examination fee was no longer possible since substantive examination had already begun. The applicants were further requested to inform the EPO whether they wished to maintain their notice of withdrawal.

In a letter filed on July 24, 2009, the applicants contested that substantive examination had begun. They argued that they had only received a formal computer generated letter (EPO Form 2001A) inviting them to respond to the European search opinion attached to the European search report. The applicants observed that such letters seemed to be issued after a fixed time period once the request for examination became effective. The applicants took the view that such formal maintenance of an earlier opinion in an unchanged situation did not involve material work on the case but was simply a formal act. They stressed that the intention of Article 11(b) RRF was to grant the applicant a partial refund where a withdrawal of the application at the examination stage saved work for the EPO. They assumed that the creation of EPO Form 2001A would take not more than 10 minutes work. Retaining all or part of the examination fee would be disproportionate to the insignificant work involved with the despatch of EPO Form 2001A. The applicants therefore asked for reconsideration of their request for refund.

In a letter sent by Directorate 2.5.2 (Quality Management Support) on July 31, 2009, the applicants were informed that their request to reconsider the refund was to be refused. It was argued that the ED had de jure assumed responsibility for the examination of the application and had issued a first communication under A 94(3). In said communication, the objections raised in the European search opinion were maintained since the applicants had not availed themselves of the opportunity to reply to the EESR. Accordingly, the substantive examination had already begun at the time the application was withdrawn. The conditions for a refund under Article 11(b) RRF were therefore not met.

In their response of 11 August 2009, the applicants asked for a decision open to appeal.

On October 5, 2009, the ED issued a communication pursuant to A 113. Among other things, the applicants were informed that the ED intended to refuse their request for refund. The applicants were given an opportunity to comment.

The applicants maintained their request for a refund and requested an appealable decision.

With decision of November 26, 2009, the formalities officer acting on behalf of the ED refused the request for refund of the examination fee at a rate of 75% pursuant to Article 11(b) RRF.

The applicants filed an appeal against this decision.

How did the Legal Board decide this matter?

Reimbursement of the examination fee

[2.1] The allowability of the present appeal hinges on the issue of whether the condition of the withdrawal of the European patent application, i.e. the entitlement to a refund of 75% of the examination fee according to the Rules relating to Fees, was met or not.

[2.2] There are two conditions for the refund of the examination fee according to Article 10b(b) RRF (see the corresponding analysis for Article 11(b) RRF in force as of 13 December 2007 by J 25/10 [2 et seqq.]): First, the patent application must have been withdrawn after the ED had assumed responsibility. Second, the withdrawal request must have been filed before substantive examination has begun.

[2.3] The first condition was indisputably met in the present case: The patent application was withdrawn on 13 July 2009, after the ED had assumed responsibility.

[2.4] In the written procedure, the fulfilment of the second condition gave rise to the questions of what “substantive examination” is and what kind of act or acts amount to the beginning of “substantive examination”. Although, in view of the board’s observations presented during oral proceedings, the [applicants] did not maintain their interpretation of what constitutes the beginning of “substantive examination” according to Article 10b(b) RRF, this issue is relevant for the present case and needs to be considered.

[2.5] It remains to be considered whether “substantive examination” has started with the communication of 28 May 2009 on EPO Form 2001A which referred to the content of the EESR.

Relying – as argued by the [applicants] – on the amount or type of work done by examiners at the moment of withdrawal, deemed withdrawal, or refusal in order to determine the beginning of “substantive examination” would be contrary to legal security. The relevant point in time could not be determined by reference to objective and verifiable criteria. To ensure predictability and verifiability of the application of Article 10b(b) RRF, the beginning of “substantive examination” must be interpreted as requiring a concrete and verifiable act of the ED as regards “substantive examination” after having assumed responsibility for the examination of the application (J 25/10 [5-6]). Therefore, the modest amount of work involved in the despatch of EPO Form 2001A does not disqualify the communication as a concrete and verifiable act indicative of the beginning of “substantive examination” pursuant to Article 10b(b) RRF. The issue at present is, rather, whether the drawing up and posting of EPO Form 2001A is an act imputable to the ED in its composition pursuant to A 18(2), to which the examination of the application is entrusted.

[2.6] In their written submissions, the [applicants] had alluded to the fact that EPO Form 2001A was generated automatically. Thus, the question arises of whether EPO Form 2001A is despatched with or without the involvement of an examiner acting in his capacity as primary examiner for the ED.

[2.7] The Guidelines for Examination in the EPO of June 2005 were modified to take into account the introduction of the EESR with effect from 1 July 2005 (R 44a(1) EPC 1973). They merely set forth that if a (negative) search opinion had been issued, and the applicant had not replied to it (which was not mandatory according to R 86(2) EPC 1973), a communication referring to the search opinion and setting a time limit for reply was issued as the first communication under A 96(2) EPC 1973 (C-VI, 3.3). This information was maintained unaltered in the Guidelines for Examination in the EPO of December 2007 (C-VI, 3.5), except for the legal references being adapted to the revised EPC (R 62 and A 94(3)). The board has however ascertained on the basis of the Internal Instructions (C-VI, 2.4) that the EPO Form 2001A is despatched by a formalities officer in case the appellant has not responded to the EESR either by filing amended application documents, or by filing observations on the objections raised in the (negative) European search opinion. According to these Internal Instructions, upon receipt of a computer generated message and having updated the paper file and performed formal checks, the formalities officer completes the EPO Form 2001A and despatches it without the involvement of the notional primary examiner in the name of which EPO Form 2001A is, on its face, sent.

[2.8] In the letter of 31 July 2009 sent by the Directorate 2.5.2 (Quality Management Support) it is however argued that the ED had de jure assumed responsibility for the examination of the application and had issued a first communication under A 94(3). This argument was maintained in the contested decision which found that the ED, on receipt of the [applicants’] reply under R 70(2), assumed responsibility for the examination of the application in suit and issued a first communication under A 94(3) (point 2 of the Reasons).

The board agrees with the opinion that the ED assumed responsibility on receipt of the [applicants’] reply under R 70(2) on 24 April 2009 (point [2.3] above). It was thus within the sole competence of the examiners appointed to form the ED for the present patent application to issue a communication under A 94(3). The board does not agree with the finding of the contested decision that the competent ED, i.e. the primary examiner acting on behalf of the ED, issued such a communication.

If a communication of a particular ED is to be legally valid, it must have been written on behalf of and represent the views of the members who were appointed to that division to examine the issues forming the subject of the communication. In general, the name and signature of the primary examiner entrusted with the work provide for the required identification and authentication (R 113(1)). R 113(2) permits the replacement of the primary examiner’s signature by a seal and to dispense with his name in case the communication was produced automatically by a computer. Nevertheless, the applicant and the public in general must be able to ascertain that the communication has been issued on behalf of, and represents the views of, the members of the ED. There is, however, no indication in the present file that the appointed primary examiner actually authenticated the communication under A 94(3) before it was despatched by the formalities officer. Therefore, the communication cannot be attributed to the ED, but only to the formalities officer the name of which is indicated on EPO Form 2001A.

The formalities officer, on the other hand, had no power to issue a communication under A 94(3) EPC on the ED’s behalf. Such power has not been transferred to formalities officers by R 11(3) EPC in conjunction with the Decision of the President of the EPO dated 12 July 2007 concerning the entrustment to non-examining staff of certain duties normally the responsibility of the examining or opposition divisions (Special edition No. 3, OJ EPO 2007, 106). The corresponding older provisions are R 9(2) EPC 1973 in conjunction with the Notice from the Vice-President of DG 2 of the EPO dated 28 April 1999 concerning the entrustment to non-examining staff of certain duties normally the responsibility of the examining or opposition divisions (OJ EPO 1999, 504, referring to OJ EPO 1984, 317). Point 5 of the Decision of 12 July 2007, applicable in the present case, concerns communications under A 94(3) regarding formal deficiencies set forth in the legal provisions enumerated in points 1 to 4 of said Decision. None of these legal provisions is pertinent in the present case.

Thus, the formalities officer, although acting in good faith, had no power to issue the present communication pursuant to A 94(3) EPC. As a consequence, the EPO Form 2001A despatched on 28 May 2009 cannot be considered to have the legal effect of a communication pursuant to A 94(3) sent on behalf of the competent ED.

[2.9] It follows from the previous considerations that the communication of 28 May 2009 on EPO Form 2001A did not constitute an act of the ED pertaining to the examination in accordance with A 94(3). Hence, the communication of 28 May 2009 cannot be regarded as the beginning of “substantive examination” pursuant to Article 10b(b) RRF. There is no indication in the file regarding any other step of the ED pertaining to the examination of the application No. 07109768.7 which had been taken before the receipt of the [applicants’] withdrawal on 13 July 2009. In the absence of any indication pointing to the contrary, it has to be taken that the ED had indeed not taken any action which amounted to a start of the substantive examination. Therefore, the second condition for the refund of the examination fee according to Article 10b(b) RRF was met. In these circumstances, the decision under appeal must be set aside and the appellant is entitled to a refund of the examination fee at a rate of 75%.

Reimbursement of the appeal fee

[3.1] The [applicants] argued that the despatch of the communication of 28 May 2009 by a person who was not entitled to act constituted a procedural violation.

In order to render the reimbursement of the appeal fee equitable, a causal link must exist between the alleged procedural defect and the decision of the department of the first instance that necessitated the filing of an appeal (T 388/09 [6]). Such causal link has not been substantiated by the appellant, nor was it evident from the circumstances of the present case. The alleged procedural defect of the communication of 28 May 2009 would have been relevant, if the application had been refused on the basis of said communication. However, in the present case, the procedural defect of the communication of 28 May 2009 was a preliminary finding of fact relevant for the determination of the beginning of “substantive examination” pursuant to Article 10b(b) RRF. At most, the submission was an alternative line of argument to the [applicants] main contention that the beginning of “substantive examination” requires substantial or significant work of examination be done.

[3.2] Even if the procedural defect of the communication of 28 May 2009 had been the sole ground of appeal, there would be no procedural violation, which is a prerequisite for the reimbursement of the appeal fee. Although the formalities officer’s conclusion regarding the legal effectiveness of the communication of 28 May 2009 could not be confirmed by the board, this is, however, a matter of consideration and appreciation of facts, i.e. a matter of judgment. The formalities officer’s error of judgment neither amounts to a grave abuse of discretion in the appreciation of facts nor constitutes a substantial procedural violation.

[3.3] The [applicants] further submitted that delegating to formalities officers the power to decide on the issue of refund of the examination fee pursuant to Article 10b RRF was ultra vires, because this duty could not be transferred to employees who are not technically or legally qualified examiners pursuant to R 11(3), since such a decision involved difficult legal questions as was evident in the present case.

[3.4] Although this submission constituted a complete change of the [applicants’] case at oral proceedings, the board, exercising its discretion pursuant to Article 13(1) RPBA, admitted this late filed submission. The [applicants’] argument nevertheless fails for the following reasons:

[3.5] Rule 11(3) EPC together with Article 1, point 21, of the decision of the President of the European Patent Office dated 12 July 2007 (Special edition No. 3, OJ EPO 2007, 106) entrusts formalities officers with the duty to decide on requests for refund of fees, with the exception of the European search fee, the fee for appeal and the fee for petitions for review. The formalities officer was acting within the area of competence assigned to him by this decision. Contrary to the [applicants’] assertion, decisions on requests for reimbursement of the examination fee pursuant to Article 10b(b) RRF do not concern matter that involves technical and legal difficulties. Assessing the conditions for a refund of the examination fee according to Article 10b(b) RRF requires first and foremost the appreciation of facts, since the beginning of “substantive examination” referred to in Article 10b(b) RRF must be interpreted as referring to a concrete and verifiable act of the ED in view of examination after having assumed responsibility for the examination of the application (point [2.5] above). Neither the [applicants’] disagreement with the interpretation by the formalities officer of Article 10b(b) RRF, nor issues regarding the interpretation of the legal provisions arising in an individual case are tantamount to difficult legal considerations being involved as such in the matter entrusted to formalities officers. Therefore, the delegation complies with the requirements set forth in the opinion of the Enlarged Board of Appeal G 1/02. The formalities officer was thus competent to take the decision under appeal. This finding is in conformity with the decision J 25/10 in which the power of formalities officers to decide on requests for a refund was implicitly acknowledged even though the interpretation of Article 11(b) RRF was contested in the cases under consideration. This finding is also in line with comparable decisions of the Legal Board of Appeal (J 14/07; J 9/83).

[3.6] For the considerations given above, the appellant’s request for reimbursement of appeal fees is refused.

NB: The Board also provided a headnote:

A communication pursuant to A 94(3) on EPO Form 2001A which is automatically generated by a computer and posted by a formalities officer without the involvement of an examiner appointed to the ED does not constitute a legally effective act of the ED and cannot therefore be regarded as the beginning of “substantive examination” pursuant to Article 10b(b) of the Rules relating to Fees (inserted by decision of the Administrative Council of 10 June 1988, as last amended by decision of the Administrative Council of 15 December 2005).

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