Wednesday, 13 February 2013

J 6/12 – What Goes Up Must Come Down

The applicant filed an appeal against the decision of the Examining Division (ED) not to reimburse ten claims fees.

On July 21, 2008, the ED issued a R 71(3) communication for the ECT application. As the version on which this communication was based contained 36 claims, the applicant was invited to pay claims fees for 21 claims.

On December 1, 2008, the applicant filed an amended set of claims containing 26 claims.

On December 16, 2008, the applicant was informed that the EPO had debited another 2000 euros (claims fees for the ten excess claims) from its account.

On January 7, 2009, the ED informed the applicant that it accepted the amendments.

The decision to grant was taken on January 21, 2009, based on the amended claims.

On January 27, 2009, the applicant was told that the claims fees had fallen due when the communication pursuant to R 71(3) was delivered; a subsequent reduction of the number of claims did not reduce the number of claims fees to be paid.

The applicant replied that as an increase of the number of claims required the payment of more claims fees, the reduction of their number had to have the converse effect.

The Office maintained its opinion and referred to the Guidelines, A XI-5.2.3.

In its response the applicant argued that R 71(6) (in its then applicable version) did not refer to R 71(3) but referred to “the text intended for grant”. A reduction of the number of claims, therefore, had to entail a fee reduction. The form concerning the “amendment or correction of the Druckexemplar” also supported this understanding.

The formalities agent of the ED was not persuaded. A communication dated November 13, 2009, contained the following statement (in English translation):
“… At the grant stage the fees to be paid for further claims are calculated on the basis of the application in the text intended for grant. This refers in particular to the text proposed in the communication pursuant to R 71(3) if the latter contains further claims for which no fee had been paid. Amendments filed in response to this communication or corrections leading to a higher number of claims are also taken into account in application of amended R 71(6). However, a reduction of the number of claims at this stage has no effect on the claims fees to be paid.”
The ED also argued that this understanding was supported by the use of “and” instead of “or” in R 71(6) in its then applicable version:
“(6) If the European patent application in the text intended for grant comprises more than fifteen claims, the ED shall invite the applicant to pay claims fees in respect of each additional claim within the period under paragraph 3, and, where applicable, paragraph 5, unless the said fees have already been paid under R 45 or R 162.”
The “and” showed “that the issuing of the R 71(3) communication was the decisive moment for fixing the fees to be paid at the grant stage and that there was no new calculation of claims fees when subsequent amendments or corrections led to a reduction of the number of claims.”

According to the ED, the claims fees were intended to compensate for the additional work generated by the great number of claims. As the claims on file at the R 71(3) stage or filed under R 71(5) had been the object of examination, the payment of the fees at that stage was justified.

R 71(1) did not distinguish between the stages under R 71(3) and 71(5) either; if the claims fees were not paid, the application was deemed to be withdrawn.

Moreover, there was no provision in the EPC in application of which the claims fees had to be reimbursed after the number of claims had been reduced after receipt of the R 71(3) communication.

The applicant filed a response in which it objected to the arguments of the ED.

An appealable decision was issued on November 10, 2011.

The applicant filed an appeal.

Here is the verdict of the Board:

*** Translation of the German original ***

[2] The appellant does not contest that R 71(6), which is applicable in the version that entered into force together with the revised EPC in December 2007, constitutes the legal basis for the invitation to pay claims fees. The EPC 1973 already contained an almost identical provision: R 51(7). The changes introduced with the version of R 71 which entered into force together with the revised EPC that are relevant for the present case concern the introduction, into R 71(6), of the legal basis for the invitation to pay additional claims fees when new claims are filed in response to a communication pursuant to R 71(5) (Special edition n° 5, OJ EPO 2007, 122).

[3] According to the wording of this provision it is the “text intended for grant” that constitutes the basis for charging additional claims fees. The same expression is also used in paragraph 3 of this rule for defining the content of the communication concerning the ED’s intention to grant.

[4] Therefore, the question arises whether this expression has the same content in both paragraphs, so that – as argued in the impugned decision – the “text intended for grant” is fixed (steht fest) when the communication pursuant to R 71(3) is drafted.

[5] R 71(3) deals with the stage where the ED has terminated the examination of the European patent application; it defines the necessary steps that have to be taken before the grant can be decided and becomes legally effective. The list contains the communication of the “text in which [the ED] intends to grant it” and the invitation to pay the fee for grant and publishing as well as to file a translation of the claims in the two official languages of the EPO other than the language of the proceedings.

From this point in time on, two scenarios are possible:

(a) the applicant approves the proposed version and fulfils all the requirements of R 71(3), or

(b) it requests amendments under R 71(4).

In case (a) the proposed version, which the applicant has approved, defines the content of the decision to grant. As a consequence, it also constitutes the “text intended for grant”, so that, if it contains more than 15 claims, claims fees fall due and have to be paid in application of R 71(6).

In case (b), however, the ED has to deal with the filed amendments and may have to establish a new communication (Prüfungsbescheid) (R 71(5)). Thus the “text intended for grant” will only be fixed (feststehen) after the ED has approved the amendments or the applicant has approved the further/new propositions of the ED, respectively. Only then is it possible to establish how many claims the “text intended for grant” actually contains in order to determine the corresponding amount of claims fees to be paid. This is what happened in the present case in the communication of January 7, 2009, in which the applicant was informed that the “request for amendment … pursuant to R 71(4) dated December 1, 2008” had been granted.

[6] In this context it should be noted that R 71(6) only explicitly refers to R 71(3) in view of the period in which the fees are to be paid. As there is no referral whatsoever concerning the “text intended for grant”, and in view of the general formulation [the Board] can only note that the wording of the provision as such does not justify the conclusion that the “text intended for grant” is always the text which was communicated to the applicant under R 71(3). As explained above under point [5], the proceedings can evolve in different directions.

[7] This conclusion is supported by the practice described in the impugned decision. If it always was the version fixed by the communication pursuant to R 71(3) that defined the “text intended for grant”, then the ED could not really ask for the payment of additional fees if the amendments introduced under R 71(4) or (5) led to a higher number of claims. However, that is not the practice described in the impugned decision. Thus [the ED] indirectly admits that the “text intended for grant” can also be fixed at a later stage. Therefore, the opinion expressed in the impugned decision is not coherent. According to this opinion, more fees are due when the number of claims increases but reimbursement is refused when their number decreases. 

[8] It follows from these considerations that the arguments of the ED do not resist scrutiny and that it cannot justify its negative decision.

[9] The next argument cited in the impugned decision defines the claims fees to be a compensation for the examination work caused by the greater number of claims.

[10] Claims fees were introduced by the legislator in order to keep the number of claims within reasonable limits. In its decision J 9/84 [4] the Legal Board of appeal explained that the main purpose of R 31 EPC [1973] was “to induce the applicant to limit the protection sought to a certain number of claims, in the first instance for the purposes of the European search”. The Board found itself unable to endorse the opinion that the fees were a financial compensation to the EPO in respect of extra work (in the substantial examination) caused by the number of claims (cf. Teschemacher, A 84, patent claims, in: Münchner Gemeinschaftskommentar, 7th delivery, 1985, marginal number 132 ff.: “Moreover the fees constitute a certain equivalent for the additional administrative effort related to the examination of applications containing a greater number of claims.”, see also T 937/09).

[11] This approach is also supported by the original structure of the system, where it was foreseen that in case of a lack of approval to the text intended for grant, the communication pursuant to R 51(4) was deemed not to have been issued and the examination was continued (R 51 EPC 1973 in its version in force until 1987). Also, in its version in force as of September 1, 1987, R 51 EPC 1973 provided that [the EPO] should invite [the applicant] to pay all fees only after any proposed amendment had been considered (R 51(6) and (7) in its version in force as of September 1, 1987).

[12] The consequence of this is that if it had been the intention [of the legislator] to compensate for the increased examination work at all, this compensation would depend on the claims that were on file already at the beginning of the proceedings. This is also in line with the overall concept of the fee structure according to the EPC according to which in principle fees have to be paid in advance, in view of the requested service. If the legislative purpose behind the claims fees was to cover the extra examination work, then the payment of these fees would have been provided in the course of the examination proceedings and triggered by the filing of the claims, before they were examined by the ED.

[13] The amendment of R 51 EPC 1973 that entered into force on July 1, 2002, mainly served the purpose of accelerating this last stage of the proceedings and the possibility of granting the patent directly. The express provision contained in the amended rule according to which the fees for grant and publishing as well as any claims fees paid have to be refunded if the patent is not granted, is due to the merger of two procedural steps into one. As a matter of fact, in the system in force after the amendment the applicant had to fulfil all the requirements that had to be fulfilled in two steps before within one single time limit that could not be extended. However, the amendment has not changed the core requirement according to which there has to be a text approved by the applicant in order for a patent to be granted. If the applicant files amendments leading to a reduced number of claims in response to the communication pursuant to R 71(3), then these claims form the basis for calculating the claims fees to be paid, just as they form the basis for the grant of the European patent.

[14] As to the version of the provision that has entered into force together with the revised EPC, which is to be applied in the present case, the only explanation provided for the changes is that “if in response to a communication under R 51(5) EPC 1973, new claims were submitted and their number exceeded the number previously on file, a legal basis for requesting additional claims fees was missing in the EPC 1973. R 71(6) EPC 2000 now provides a legal basis (Special edition n° 5, OJ EPO 2007, 122; emphasis by the Board).

These explanations do not concern the above considerations (point [13]). On the one hand there is nothing on increased examination expenses and their financial compensation; on the other hand the express wording stipulates that the number of claims filed under R 71(5) is to be compared with the original number of claims in order to determine whether the invitation to pay additional claims fees is justified. The conclusion that in proceedings under R 71(5) the amended claims determine the amount of the claims fees is, therefore, inevitable.

[15] Finally the argument according to which there is no provision on which to base the requested reimbursement does not lead to a different outcome. It is indeed generally acknowledged that an express legal basis is needed not only for invitations to pay fees but also for reimbursing them. However, this only holds true if there has been a cause in law (Rechtsgrund) for the fee payment, i.e. if the fees had fallen due. In the present case, however, according to the wording of R 71(6) the [EPO] may invite [the applicant] to pay claims fees only on the basis of the “text intended for grant”. However, as explained above, this text is not fixed yet when the communication pursuant to R 71(3) is drafted, but only once the ED has approved the filed amendments. Fees the [applicant] has been invited to pay at that earlier stage have not yet fallen due to the extent to which the applicant has reduced the number of claims in response to the communication pursuant to R 71(3). The EPO may not keep fees that have been paid without there being a cause in law, and which are not to be considered to be negligible amounts (Bagatellbeträge).

[16] For the above reasons the impugned decision cannot be maintained. It has to be set aside and the controversial claims fees have to be reimbursed. […]

The reimbursement of ten claims fees is ordered.

NB: The Board has provided a handy headnote:
If amendments under R 71(4) are requested, the “text intended for grant” is only fixed once the ED has approved the amendments or the applicant has approved further/new propositions by the ED, respectively. It is only then that the [EPO] can determine the number of claims which the “text intended for grant” contains and, consequently, the number of claims fees that fall due.
Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.


Roufousse T. Fairfly said...

I don't see anywhere in the decision a discussion regarding the appeal fee itself. It is only stated that it had been paid, but the board did not order its reimbursement. Upon verification, I see that it wasn't requested by the applicant either. It's only money...

Methinks that those claims fees are much more trouble than they are worth anyway.