T 642/12 – 20% Off

This appeal was filed by the patent proprietor, a Swiss company, after the Opposition Division (OD) had revoked its patent. The time limit for filing an appeal and paying the appeal fee expired on 15 March 2012.

A Dutch language document, dated March 6, 2012 and described in the Epoline transmission cover page as “Notice of appeal” was filed and received in the EPO on March 7, 2012, together with an English language document identified in its heading as “translation of the enclosed Notice of Appeal in Dutch”. The Epoline transmission further contained a debit order for EUR 944, designated as “Fee for appeal”. This amount corresponded to 80% of the full appeal fee.

EPO Form 3204, informing the parties of the file number and the commencement of proceedings before the Boards of Appeal (BoA) was posted March 27, 2012 to the appellant and the respondents.

One of the opponents pointed out that the appellant as a Swiss company was not entitled to use Dutch language and therefore was also not entitled to a fee reduction pursuant to Rule 6(3). As a consequence, the appeal should be rejected as inadmissible.

The BoA agreed:

[1] The admissibility of the appeal and indeed its existence turns on the questions whether the appeal fee was paid in time, and whether there was a valid notice of appeal in an admissible language. As explained below, the Board found that the appeal fee was not paid in time, so that there was no need to decide on the issue of the language of the notice of appeal and whether its use would lead to the appeal being deemed not to have been filed.

[2] Pursuant to A 108, second sentence, the notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid. Article 8 RRF, first sentence stipulates that the time limit for payment shall in principle be deemed to have been observed only if the full amount of the fee has been paid in due time. In the present case, the time limit for filing the notice of appeal and thereby the time limit for paying the appeal fee expired on 15 March 2012. A reduced appeal fee pursuant to R 6(3) was paid on 7 March 2012, and a full appeal fee was paid on 27 April 2012 […]. The appellant does not dispute that the filing of the notice of appeal in Dutch language did not entitle it to benefit from the fee reduction. Instead it is contended that the EPO must accept the late payment of the full appeal fee, either through the application of the principle of the protection of legitimate expectations or through a re-establishment of rights under A 122, or to accept the partial payment and to overlook the missing 20% through the application of Article 8 RRF, last sentence. The Board examines these three lines of argument in turn.

Protection of legitimate expectations

[3] The Board concurs with the appellant that this principle, also referred to as principle of good faith, is applicable in the proceedings before the EPO, and also in appeal proceedings. Its application requires the EPO to warn the relevant party of any loss of rights if such a warning can be expected in all good faith (G 2/97 [4.1]). In the present case it has to be examined if there existed a legitimate expectation of the appellant that it would be warned in time by the EPO of the deficiency, the only partially paid appeal fee.

[4] The appellant submits that this legitimate expectation existed, because the error was easily identifiable and there was also enough time to warn the appellant sufficiently early for the appellant to have been able correct the error still within the time limit. This legitimate expectation was further corroborated by the file history, showing that the EPO indeed processed the appeal sufficiently swiftly, and it could also be inferred that the error ought to have been discovered already at that time. Form 2701 processed on 8 March 2012 clearly showed that the payment of the appeal fee was to be examined immediately.

[5] The Board concurs with the appellant that the error was not very difficult to discover. Nevertheless the error was a deficiency of a formality the examination of which is entrusted to the Registrar of the competent BoA, see Article 2(1) of the Decision of the Presidium of the BoA dated 12 November 2007 concerning the transfer of functions to the Registrars of the BoA, Supplement to OJ EPO 1/2013 (sic), pp. 65-67.

Furthermore, even if it can be accepted that the error would not have been difficult to discover for an experienced Registrar in the course of checking the notice of appeal for the necessary legal preconditions, it is not the type of error which he or she could be expected to discover at first glance at the notice of appeal. Even if it might be a simple error, it is not so apparent or glaring that it would have been highly improbable to overlook it. The Board therefore needs to examine if the appellant had a realistic expectation almost beyond doubt that the Registrar of the Boards on proper examination of the appeal would have found the error before the expiry of the time limit of A 108.

[6] The Board concurs with the appellant to the extent that there was indeed a potential possibility to discover the error in good time. The file shows that the appeal was received in the morning hours on 7 March 2012, and the applicable time limit of A 108, first sentence, expired on 15 March 2012. This means that seven working days were available to warn the appellant and to pay the appeal fee. Given that the appellant regularly used its debit account with the EPO, in theory it could have been sufficient if he received the warning on the very last day.

[7] However, the Board does not accept that this potential possibility automatically translates into a legitimate expectation of the appellant. First of all, there was no formal legal obligation on the Office to issue a warning within this time, and therefore there could also not be a legitimate expectation, i.e. a justified belief of the appellant that the absence of a warning confirmed the valid filing of an appeal to such a degree of certainty which is equal to the certainty of an acquired right, here the acquired legal position as appellant. As the Enlarged Board (EBA) put it

“To take the principle of good faith that far would imply, in practice, that the BoA would have to systematically assume the responsibilities of the parties to proceedings before them, a proposition for which there is no legal justification in the EPC or in general principles of law”, see G 2/97 [4.2].

In other words, the fact that no warning was issued by the Office before 15 March 2012 could not be construed as a positive and legally binding recognition of a valid appeal. On the other hand, if a warning could be expected merely as a courtesy service from the EPO, its omission again does not create legitimate expectations, see G 2/97 [5.1].

[8] As stated above, an overlooking of the error by the Registrar could also not be realistically excluded. This means that there could be no serious expectation, whether legitimate or not, that a warning will be issued under any circumstances. Therefore it can also not be stated that the high probability of the discovery of the error in combination with the expectation of a warning as a courtesy service could have justified the firm belief of the appellant that without such a warning the file was in order. Given all the facts of this case, such a presumption contradicts common experience.

[9] Contrary to the belief of the appellant, it could also not base any legitimate expectation concerning the validity of the appeal on the fact that the appeal had been received and processed in the EPO, as may be inferred from EPO Form 2701 […]. A notice of appeal is forwarded as a matter of standard procedure first to the Formalities Officer of the department of first instance concerned (a directorate within DG1) for a first peremptory examination of the notice of appeal. This standard procedure was also observed in the present case. The Form 2701 completed on 8 March 2012 was thus not processed by the Registry of the BoA, but by the Formalities Officer of the OD, and it merely contained an indication that the case was to be referred to the Registry of the BoA. Though the form includes a check-box for appeal fee payment, the form itself states that this check is to be performed only in ex parte cases (where interlocutory revision by the Examining Division under A 109 is possible […]). If the Formalities Officer finds that the appeal involves several parties, such as in opposition proceedings, the case must be referred to the BoA without delay […]. Thus the only information that can be derived from this document was the fact that the Formalities Officer forwarded the case to the BoA on 8 March 2012. In no way can it be seen to objectively establish a basis for the firm belief of the appellant that the appeal was already thoroughly examined for compliance with all the usual formal requirements.

[10] The Board adds that not even the communication of the file number to the appellant on 27 April 2012 […] could have potentially established the legitimate expectation that everything was in order with the appeal, see also G 2/97 [5.2].

[11] The appellant submitted that the case law also supports its position on the applicability of the principle of good faith. However, this is not accepted by the Board. Most of the case law cited by the appellant (T 128/87, T 14/89, J 13/90) is also discussed in G 2/97. From this it becomes clear that the EBA took note of the case law at that time but in fact did not approve of an unlimited application of this principle, but rather followed the ratio decidendi of J 12/94, see G 2/97 [4.2]. Concerning T 14/89, the EBA expressly stated that no generally applicable principles are derivable from that decision (see G 2/97 [3.4]). Decision T 923/95, though preceding the decision G 2/97 of the EBA, is not mentioned specifically. This decision found the principle of good faith to be applicable in circumstances not completely dissimilar to the present case, in effect putting a strict obligation on the EPO to examine the correctness of fee payments immediately. Yet, this Board holds that the approach endorsed by T 923/95 is no longer tenable because it plainly contradicts the findings of G 2/97. The Board is also not aware of any decision which have followed T 923/95.

[12] For the reasons above, the Board holds that timely payment of the appeal fee can not be recognised on the basis of the principle of the protection of legitimate expectations.

The Board then dismissed the request for re-establishment and then went on to discuss whether the missing 20% of the appeal fee could be considered to be a “small amount” within the meaning of the RRF.

[19] Pursuant to Article 8 RRF, last sentence, the EPO may, where this is considered justified, overlook any small amounts lacking without prejudice to the rights of the person making the payment. The appellant contends that in the present case, it would be justified to overlook the missing 20% of the appeal fee, and to accept the effective payment of the 80% as a valid payment of the full appeal fee. This would be justified under the circumstances, given the fact that the appellant actually was entitled to a fee reduction. It only would have had to file the notice of appeal in Italian, and it indeed intended to do so.

[20] The Board is not persuaded by this argument. First of all, the Board considers that the 20% fee reduction set by Article 14(1) RRF can not be considered as small for the purposes of Article 8 RRF. This latter foresees that lacking small amounts can be overlooked, i.e. ignored (unberücksichtigt bleiben, ne pas tenu compte), implying that they also need not be paid later. This would dictate that “small amounts lacking” (geringfügige Fehlbeträge, parties minimes non encore payées) are rather to be read as “insignificant or negligible amounts”, e.g. differences caused by unexpected bank transfer costs, currency exchange rates or the like, see also T 905/90 [10]. This does not seem to apply to the difference corresponding to a fee reduction as foreseen by R 6(3). This rule is an implementing rule of A 14(4). This latter provides for the possibility of filing documents which have to be filed within a time limit in an admissible non-EPO language, nevertheless with the obligation of filing a translation within a time limit. The presumption underlying R 6(3) is that the appellant in fact needs to file the document in an admissible non-EPO language because of the upcoming time limit and as a consequence, is forced to prepare a translation as well. R 6(3) of course also extends to certain acts not necessarily tied to time limits, such as filing of patent applications and requests under A 105(a), but in fact these acts are also regularly done under time pressure.

Put differently, the fee reduction foreseen by R 6(3) intends to alleviate the burden on those applicants who are themselves unable to communicate with the EPO in an official language, and therefore must resort to the use of translations. Thus the legislator presumed that a fee reduction of 20% is not merely a symbolic one, but will effectively alleviate the burden of having to prepare translations, and therefore it appears to the Board that the legislator could not have intended this fee reduction to be considered small (geringfügig, minime) in the sense of negligible or insignificant. Therefore, the Board holds that Article 8 RRF, last sentence is not applicable in the present case for this reason alone.

[21] Secondly, quite apart from the issue of the “small amount” discussed above, the Board is of the opinion that overlooking the missing amount would also not be justified in the circumstances of the case, because it is not at all apparent that the appellant would have been entitled to the fee reduction under R 6(3). This entitlement arises only if a person referred to in A 14(4), i.e. a person who is either resident or national of a contracting state using an non-EPO language, effectively uses the admissible non-EPO language, even if minimally. This intention may not jump out at the reader from the present wording of R 6(3), but was quite clear in the wording of R 6(3) 1973: “A reduction ... shall be allowed ... a [party] ... who avails himself of the options provided in A 14, paragraphs 2 and 4 [EPC 1973]”. The option mentioned here is of course the possibility of the filing of the relevant documents in an admissible non-EPO language, and the subsequent filing of a translation, see also G 6/91 [21].

[22] In the present case, it is not apparent that the appellant ever intended to file the notice of appeal in Italian. This possibility was not put forward by the appellant until the oral proceedings. On the contrary, when the appellant was informed of the insufficiency of the payment, it immediately proceeded to pay the full amount, and apparently relied on the English translation of the notice of appeal. A notice of appeal in Italian has never been filed, not even in the oral proceedings. This does not demonstrate to the Board any intent, much less a need on the part of the appellant to use Italian when corresponding with the Office. The fact that it might in theory have been able to avail itself of the possibility of filing in Italian is immaterial, as he did not do so nor showed any serious intent of doing so and was therefore not entitled to a fee reduction.

[23] The Board is well aware of the widespread practice of filing documents with the EPO in admissible non-EPO languages simultaneously with their translation merely for the sake of obtaining a fee reduction, but actually without any pressing need to proceed in this manner. This practice has in fact been upheld by the findings of G 6/91 […], which established the minimum requirements for this procedure. However, as the present case also illustrates, this practice should be pursued with caution, because the possibility of a fatal error is not negligible. To this extent the Board concurs with the argument of the appellant that in this manner the regular practice of claiming a fee reduction may prove to be a double-edged sword. On the other hand, it appears to the Board that such fatal errors would be less likely to occur if parties would only resort to using a non-EPO language, i.e. typically their own working language, when there are indeed serious grounds to do so. This again confirms the Board in its view that relying on Article 8 RRF, last sentence is not justified (der Billigkeit entspricht, paraît justifié), i.e. not equitable in cases as the present one.

[24] The Board is also aware of decision T 290/90 also cited in the Case Law of the BoA, Sixth Edition 2010, Chapter VI.F.4. This decision held that the overlooking of the missing 20% (there of the opposition fee) was justified having regard to the fact, inter alia, that this missing amount was in fact paid shortly after the expiry of the time limit. To this extent the present case is similar, as the missing fraction of the fee was paid immediately when the appellant realised the error […]. However, the present Board does not follow T 290/90. Firstly, while T 290/90 discussed criteria for a justification of overlooking a missing amount, and held that the applicability of Article 9(1) RRF - corresponding to the presently applicable Article 8 RRF - must be decided on an objective basis having regard to all the relevant circumstances of the case, in fact it did not give any specific reasons why it considered 20% to be small, see point [4(b)] of the Reasons. Secondly, the reasons given for overlooking the missing small amount appears to concentrate solely on the issue of justification, irrespective of the amount missing and whether it is small or not. Following this line of reasoning it would not matter how large the shortfall is, as long as the full amount is paid soon after expiry of the time limit. The Board does not believe that this is what was intended when the legislator decided to limit justifiably overlooked missing amounts to small amounts. Similarly, the further criteria considered by T 290/90, such as the desirability of the opponent being able to pursue his case given the fact that all other requirements apart from the fee payment were complied with (see point [4(a)] of the Reasons), also appear unsuitable for explaining why Article 8 RRF foresees a different legal treatment of small missing amounts as compared with “significant” (in the sense of not small) missing amounts. Following the criteria considered by T 290/90, the determination whether an amount is “small” would in the end depend on the criteria used for determining whether the circumstances could justify the overlooking. As a result, the “small” qualifier would not be determined on the basis of objective, but subjective criteria, in fact also contrary to the apparent intentions of T 290/90 [headnote 4]. To that extent, the “small” qualifier would lose its meaning, seemingly against the intent and purpose of the final sentence Article 8 RRF, which expressly singles out “small amounts” for special treatment.

The Board also dismissed the request for a referral to the EBA and decided to reimburse the partial appeal fee because the appeal was deemed not to have been filed.

NB: The Board has provided headnotes:

1. In case of an inter partes appeal case, completion of EPO Form 2701 by the Formalities Officer of the department of first instance does not establish the legitimate expectation that formal requirements of the appeal, such as the payment of the appeal fee, has already been checked by the EPO (point [9] of the Reasons)

2. A potential possibility of discovering the error is not sufficient to establish the legitimate expectation that a Registrar of the BoA will warn an appellant within seven working days before the expiry of the time limit that a reduced appeal fee was relied on in error and therefore the appeal fee is deemed not to have been paid (points [6-8] of the Reasons)

3. “Small amounts lacking” in Art. 8 RRF are to be read as “insignificant or negligible” amounts. The legislator presumed that a fee reduction of 20% pursuant to R 6(3) is not merely a symbolic one, but will effectively alleviate the burden of having to prepare translations. Therefore the legislator could not have intended this fee reduction to be considered small in the sense of negligible or insignificant (point [20] of the Reasons).

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