According to R. 71(4) EPC if the European patent application in the text intended for grant comprises more than fifteen claims, the examining division shall invite the applicant to pay claims fees in respect of the sixteenth and each subsequent claim within the period under paragraph 3 unless the said fees have already been paid under R. 45 or 162 EPC.
The appeal in J 6/12 was lodged against the decision by the formalities officer acting for the examining division to refuse a request for a refund under R. 71(5) EPC of ten claims fees following amendments which had resulted in a smaller number of claims. The appellant did not dispute that R. 71(6) EPC (R. 71(4) EPC), which, in this case, applied as worded in the revised EPC which had entered into force in December 2007, was the legal basis for the invitation to pay claims fees. According to this wording, the "text [of the application] intended for grant" was the basis for charging additional claims fees. However, the Legal Board held that this text had only become final only after the examining division had approved the filed amendments, and not already on the date of issue of the communication under R. 71(3) EPC. Fees which the appellant had been invited to pay at that earlier stage had not yet become payable and decreased in the same measure that the appellant had reduced the number of claims in response to the communication under R. 71(3) EPC. The board stressed that the EPO could not retain fees of more than insignificant amounts which had been paid for no legal reason.