Friday, 27 December 2013

J 14/12 – Debit (Dis)order

This decision deals with a request for the reimbursement of certain fees for a divisional application.

On filing the divisional application on EPO Form 1001E, no mode of payment was specified under point 42 “Payment” of that form. An “Internal fee calculation sheet”, which is automatically generated by default by the online filing system using the data entered in EPO Form 1001E, was attached to the form in which the filing fee, the fee for a European search and the renewal fees for the 3rd to 10th years were listed by the applicant.

On October 20, 2010, the EPO received the following request:

On the basis of this request the Receiving Section (RS) gave the instruction to debit the filing fee and the search fee. No renewal fees for the 3rd to 12th years were paid by the applicant, or debited from the representative’s account on the basis of his request of 20 October 2010, within four months after the filing date.

After having been informed accordingly by the EPO, the applicant’s representative, on March 14, 2011, paid the renewal fees for the 3rd to 12th years and the additional fees of 50% relating to all of those renewal fees. Together with these fees, the filing fee and the search fee were paid a second time; this second payment was later refunded by the EPO.

With a letter dated March 18, 2011, the appellant requested, as a main request, that the additional fees for the 3rd to 12th years be refunded, and, as an auxiliary request, that the additional fees relating to the renewal fees for the 3rd to 10th years be refunded. It took the view that the respective renewal fees for the 3rd to 12th years were paid in time. After having realized the omission in EPO form 1001E, the appellant, with its letter of 20 October 2010, had requested that the fees which fell due in relation to the filing of the divisional application be debited. This authorization constituted a timely payment of all fees listed on the “Internal fee calculation sheet” of the EPO, including the fees for the 3rd to 10th years. The same applied for the 11th to 12th years following decisions T 170/83 [6], and T 152/82 [8-9].

The RS rejected both the main and the auxiliary request.

The Board partially allowed the appeal:

[2] Under A 86(1), first and second sentences, renewal fees for the European patent application shall be paid to the EPO in accordance with the Implementing Regulations. These fees shall be due in respect of the third year and each subsequent year, calculated from the date of filing of the application. R 51(3), first sentence, provides that renewal fees already due in respect of an earlier application at the date on which a divisional application is filed shall also be paid for the divisional application and shall be due on its filing. On 1 October 2010, the filing date of the divisional application, renewal fees for the earlier application with the filing date of 2 September 1999 had fallen due for the 3rd to 12th years (2000 - 2011).

[3] These fees and any renewal fee due within four months of filing the divisional application may be paid within that period without an additional fee (R 51(3), second sentence). As R 51(2) also provides, in case a renewal fee is not paid in due time, the fee may still be paid within six months of the due date, provided that an additional fee is also paid within that period. Consequently, payment of the renewal fees that fell due for the present divisional application could be made until 1 February 2011 without an additional fee and until 1 April 2011 with an additional fee of 50% of the belated renewal fee (Article 2(1) Rules relating to Fees of 20 October 1977 as adopted by the decision of the Administrative Council of the European Patent Organization of 7 December 2006 and as[last]amended by the decision of the Administrative Council of 9 December 2008, Supplement to OJ EPO 2/2009 (RFees) and Schedule of fees and expenses of the EPO (applicable as from 1 April 2010), 1 A.5, see Supplement 1 to OJ EPO 3/2010).

[4] On 20 October 2010 the applicant’s representative wrote a letter to the EPO which included the following wording:
“It is kindly asked to debit the fees which fell due for payment with the filing of the above-mentioned divisional application from deposit account No. 28000610.”
[5] This mode of payment is not provided for in Article 5(1) RFees 2008.

[6] Under Article 5(2) RFees 2008 the President of the EPO may allow other methods of paying fees than those set out in paragraph 1. In the Arrangements for deposit accounts (ADA) and their annexes (valid as from 1 April 2009), Supplement to OJ EPO 3/2009, the President of the EPO made available debiting procedures in respect of fees (pt 6.1 ADA). Debiting occurs in principle on the basis of a debit order signed by the account holder and may be a debit order for individual fees that may be filed on paper, preferably on EPO form 1010 (pt. 6.2 ADA). The debit order must be clear, unambiguous and unconditional. It must contain the particulars necessary to identify the purpose of the payment, including the amount of each fee or expense concerned, and must indicate the number of the account which is to be debited. Provided there are sufficient funds in the deposit account to cover the total fee payments indicated for the application referred to in the order or, in the case of an order containing a list of applications for each application referred to, this date is considered to be the date on which payment is made (pt 6.3 ADA).

[7] When read in conjunction with the “Internal fee calculation sheet”, the debit order received on 21 October 2010, in which it was asked to debit the fees which fell due for an explicitly mentioned divisional application, was clear, unambiguous and unconditional as regards the 3rd to 10th renewal fees. The debit order also indicated the number of the account which was to be debited. In the Board’s judgment, in the case at hand, the purpose and amount of each of these fees were clearly derivable from the “Internal fee calculation sheet”, including the renewal fees for the 3rd to 10th years. By debiting the filing fee and the fee for a European search the EPO showed that it heeded the debit order in combination with the “Internal fee calculation sheet”, filed as an attachment to the application, irrespective of whether it was obliged to do so or whether the “Internal fee calculation sheet” was uploaded to the electronic file. Consequently, 21 October 2010 is to be considered as the date on which the payment for the renewal fees for the 3rd to 10th year was made and, in relation to these years, no additional fee fell due. Payments of fees made without a legal basis are to be reimbursed.

[8] As to the renewal fees for the 11th and 12th years, the purpose and the amount of each of these fees were neither stated in the debit order nor were they contained in the “Internal fee calculation sheet”. As a consequence, the conditions for a valid debit order set out in the ADA as mentioned above were not fulfilled. A valid payment was effected on 14 March 2011 only, i.e. within the six-month time-limit provided for in R 51(3). Consequently, in respect of the renewal fees for the 11th and 12th years, the additional fees fell due and cannot be reimbursed.

[9] No different conclusion can be drawn from the decisions of the Board of Appeal in cases T 170/83  or T 152/82. Decision T 170/83 dealt with a case in which the purpose (payment of the opposition fee) was clear. The same applies in relation to decision T 152/82 in which the purpose of the payment (appeal fee) was explicitly indicated.

[10] Consequently, the appellant’s main request is not allowable, but the auxiliary request can be allowed.

[11] The conditions for reimbursement of the appeal fee are not met in the present case. Under R 103(1)(a) the appeal fee shall be reimbursed where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. The Board cannot identify any procedural deficiencies. In the present decision, the Board is taking a view on the question of interpretation of the applicant’s debit order that differs from that of the RS. However, the fact that the Board has come to a different conclusion from the department of first instance does not by itself mean that the latter committed a substantial procedural violation (see for example decisions T 87/88; T 538/89, T 182/92) but is rather a matter of judgment, which does not amount to a procedural violation (see for example decision T 182/92 [7] and Case Law of the Boards of Appeal of the EPO, 7th edition 2013, IV.E.8.3.5). Consequently, the request for reimbursement of the appeal fee must be refused.

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