In an ambitious start to 2019, this Kat takes a closer look at the pending referral by the EPO President to the Enlarged Board of Appeal (EBA) on the question of “inadmissible” or “late filed” appeals (G 1/18). The case may at first appear to be one that is only of interest to real EPO case law aficionados. However, it actually involves an interesting and complex interplay of linguistic analysis, legislative intention and, dare we say it, EPO politics.

Legal Background

Under Article 112(1)(b) EPC the EPO President may refer a point of law to the EBA if (1) the question relates to ensuring uniform application of the law and (2) if two Boards of Appeal (BA) have given different decisions on that question (Article 112(1)(b) EPC). If the EBA considers the referral admissible, they will then issue an opinion on the point of law (Article 22(b), EPC).

The referred question in G 1/18 is whether an appeal to the BA a) is inadmissible or b) should be deemed not to have been filed, where a notice of appeal is filed after expiry of the time limit for filing an appeal (Article 108 EPC). The question was referred by outgoing (and controversial) EPO President Benoît Battistelli, just before the end of his term.

The distinction between an inadmissible appeal and an appeal deemed not to have been filed is relevant with respect to refund of the appeal fee. The EPO will only refund fees that are paid without legal basis. The appeal fee paid for an inadmissible appeal was paid with legal basis and will not be refunded. By contrast, the appeal fee paid for an appeal that is deemed not to have been filed was not paid with legal basis and should be refunded.

The time limit for filing an appeal is provided by Article 108 EPC: “Notice of appeal shall be filed, in accordance with the Implementing Regulations, at the European Patent Office within two months of notification of the decision. Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid…”

The train to Haar – new location of the EBA

The consequences if the appeal does not comply with Article 108 EPC are provided by Rule 101(1) EPC: “If the appeal does not comply with Articles 106 to 108, Rule 97 or Rule 99, paragraph 1(b) or (c) or paragraph 2, the Board of Appeal shall reject it as inadmissible, unless any deficiency has been remedied before the relevant period under Article 108 has expired.”

Therefore, if you file an appeal and pay the appeal fee after the Article 108 EPC deadline, Article 108 EPC states that the appeal has not been filed, resulting in a refund of the appeal fee. Simultaneously, Rule 101(1) EPC states that the appeal should be rejected as inadmissible, resulting in no refund of the appeal fee.

As summarized by the Case Law of the Boards of Appeal IV-E-8.2.2a, J 21/80, J 16/82, T 324/90, and T 239/92 demonstrated that “reimbursement of the appeal fee is ordered if an appeal is deemed not to have been filed because the appeal fee was not paid in due time in accordance with Art. 108”. By contrast, dissenting decisions T 79/01, T 1289/10, T 1535/10, T 2210/10 and T 1897/17, did not order reimbursement following late payment of the appeal fee.

As mentioned in the EPO announcement of the referral (which also provides a provisional English translation of the referred question), the status of a late filed appeal was previously referred in G 1/14 (IPKat post here) and G 2/14. The EBA deemed the referral inadmissible in G 1/14, concluding that the question was unnecessary given the facts of the case (EBA judgment, in German). Particularly, the EBA concluded that the BA had not correctly applied the rules for calculating the time limit for filing the appeal. As such, the appeal should have been deemed timely filed and not, as the BA determined, “late filed”. Therefore, the appeal was neither inadmissible for missing the deadline nor deemed not filed. In G 2/14, following a referral to the EBA by the BA, no opinion was given (OJ 2015, A13) as the patent application in question (EP1337931) was deemed withdrawn due to a failure by the applicant to pay renewal fees, leading to closure of the relevant appeal proceedings (T 2017/12).

G1/18 – facts of the case

In T 1897/17 the notice of appeal was filed and the appeal fee paid after expiry of the deadline for filing the appeal (Article 108 EPC). The Technical Board of Appeal (TBA) held that the appeal should be deemed inadmissible according to Rule 101(1) EPC. The TBA reasoned that the provision in Article 108 EPC, that the notice of appeal shall not be deemed to have been filed until the appeal fee has been paid, should be understood “as setting an additional (implicit) condition for an appeal to be admissible, namely the (timely) payment of the appeal fee. No procedural consequences follow from Art. 108 EPC, second sentence; these are exclusively governed by R. 101 (1) EPC”. Therefore, “the notice of appeal is deemed to have been filed on the day of (late) payment of the appeal fee, with the consequence that the appeal, which only comes into legal existence on the day of (late) payment, will be rejected as inadmissible.”

Third Party Submissions

The pending referral in G 1/18 has received nine written statements from third parties (amicus curiae briefs). Roel van Woudenberg (DeltaPatents), Derk Visser, EPI, the International Federation of Intellectual Property Attorneys (FICPI) and Union-IP all submit that if an appeal fee is paid after the Article 108 EPC deadline for filing an appeal, the appeal should be deemed not filed, and the appeal fee reimbursed.

Dr Visser notes that if the intention of the legislator in Article 108 EPC was to set an additional condition for filing an admissible appeal, why wasn’t the Article worded to reflect this? Instead, the legislator chose to connect the payment of the appeal fee with the sanction that the notice of appeal is deemed not to have been filed. Dr Visser further notes that the TBA regards the appeal as filed, even though the notice of appeal was not filed within the time limit required by Article 108 EPC. Thus, the TBA “permits an act completed after expiry of the period in which it should have been carried out to have consequences for the legal status of the appeal”.

Dr Woudenberg of DeltaPatents highlights J 21/80 (decided in French), which concluded that an appeal was deemed not filed and never came into existence, because the appeal fee was paid after expiry of the Article 108 EPC deadline. Dr Woudenberg argues that the headnote (but not the reasons) of J 21/80 were mistranslated into English as “the Registrar has good reason to consider that the appeal is inadmissible”. Dr Woudenberg also discusses T 2017/12 (the decision from which the question of G2/14 was referred, see above), which noted the translation error in J 21/80. T 2017/12 also observed that in the cited BA decisions for which an appeal filed after expiry of the Article 180 EPC time limit was deemed inadmissible, only T 79/01 gave reasoning (and subjective reasoning at that), whilst T 1289/10, T 1535/10 and T 2210/10 provided no reasoning for deeming the appeal inadmissible.

It is also the personal view of Patent Examiner Manuel Pavón Mayo that the appeal should not be considered inadmissible. Manuel Pavón Mayo includes an attractive schematic diagram to explain the point, and delves more deeply into a comparative construction of Article 180 EPC in English, French and German. Manuel Pavón Mayo also argues that the wording of the legal fiction provided by Article 108 EPC that an the appeal “shall not be deemed to have been filed” provides a different legal fiction to that of “deemed not filed” used elsewhere in the EPC (for example Article 14(4) EPC and Rule 50 EPC). Particularly, Manuel Pavón Mayo argues “The particle “not” before the fiction “deemed to have been filed” arguably means that the fiction “deemed to have been filed” does not apply for the period before the fee for appeal is filed. That’s all.” [Update: see comments below].

The president of EPI, Frances Leyder, notes that the referral is an important question for the users of the EPC system as it could have wide ranging effects on users’ practices.

Antonio Campinos, President of the EPO
Further thoughts

Will the EBA be convinced by these arguments? It does seem that it is high time for this issue to be laid to rest. However, the EBA is not obliged to accept the referral from the President as admissible as we saw in G 1/14. Furthermore, an opinion by the EBA following a referral by the President will have no bearing on the TBA decision giving rise to the referral, given that the appeal proceedings have already concluded.

The President’s referral to the EBA took place under the fraught political backdrop of Battistelli’s controversial presidency, in which the independence of the EBA and BA was arguably brought into question. Did the EBA really have the freedom to objectively form an opinion on questions referred by the President? It is yet to be seen whether the EPO’s new president, Antonio Campinos, will be effective at healing the rifts created by Battistelli.

An opinion by the EBA in G 1/18 may be issued in the coming year. IPKat will keep you posted!

By Rose Hughes

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