IP Information & News

If an appeal fee is not paid on time, will the fee be reimbursed?

Just before the summer lull, the President of the European Patent Office (EPO) put forward a new referral to the EPO Enlarged Board of Appeal (G 1/18).

The referral was triggered by a recent decision from the EPO Technical Board of Appeal (T 1897/17) in respect of a case where a Notice of Appeal, along with payment of the appeal fee, was filed after the deadline for filing an appeal had expired. The Board held that the late-filed appeal was inadmissible, but was nonetheless deemed filed, and therefore the appeal fee would not be reimbursed.

In contrast, other Boards of Appeal have arrived at the opposite conclusion. For example, in T 2406/16, the Board held that an appeal in which the appeal fee had been paid after the appeal deadline was not deemed to have been filed and the Board ordered the appeal fee to be reimbursed.

Referral question

The question referred to the Enlarged Board of Appeal in G 1/18, which was originally written in French, is translated as:

If notice of appeal is filed and/or the appeal fee is paid after expiry of the two month time limit under Article 108 EPC, is the appeal inadmissible or is it deemed not to have been filed, and must the appeal fee be reimbursed?”

The same point of law was referred to the Enlarged Board in two previous cases (G 1/14 and G 2/14). However, both of these cases were terminated before a decision on this point had been made.

Comment

The EPO’s treatment of a late-paid opposition fee is particularly relevant to the present referral.

Article 99 of the European Patent Convention (EPC), which deals with the opposition procedure, states that “Notice of opposition shall not be deemed to have been filed until the opposition fee has been paid”.

Similarly, Article 108 of the EPC, which sets out the time limit and form of an Appeal, also contains the wording “Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid”.

However, in contrast to the fate of a late-paid appeal fee, it is well established in the EPO Guidelines that an opposition will not be deemed to have been filed if the opposition fee is paid late, and that the opposition fee would be refunded (EPO GL, Part D, IV, 1.2.1 and 1.4.1).

The Enlarged Board’s decision, which is expected to be delivered next year, will provide a welcome clarification of the appeal procedure.

If you have any questions regarding appeals at the EPO, please feel free to get in touch with Dr Simon Mitchell at sjm@udl.co.uk.

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