J 0023/82 (Designations-selection/insufficient fee) 28-01-1983
I. If, for the purposes of a decision pursuant to Rule 69(2) EPC, it is necessary to check whether a payment was made in due time, it is not sufficient to determine what payment date is entered in the EDP system; for the file, copies of the documents on which the EDP coding was based must be obtained and checked.
II. If designation fees are not paid until after the start of the period of grace under Rule 85a EPC, the applicant may be assumed to have intended to pay the designation fees at the rate including the surcharge under Rule 85a EPC.
III. If, having regard to the amount of fees payable at the relevant time, the amount paid in respect of designation fees within the time limits under Article 79(2), second sentence, or Rule 85a EPC is not sufficient for all the Contracting States designated at the time of payment, the payer must be requested pursuant to Article 7(2), first sentence, of the Rules relating to Fees, to select the States he wishes to designate. Article 9(2) of the Rules relating to Fees must be applied instead of Article 7(2), second sentence, of these Rules if the payer does not comply in due time with the request made pursuant to Article 7(2), first sentence, of those Rules.
Selection among designations
Payment made out of time
I. On 28 April 1982 the appellant filed a European patent application** claiming priority from 3 June 1981 and designating ten Contracting States and paid the filing and search fees. Later - as is shown by a letter from the appellant dated 2 September 1982 and the annexes thereto - a bank instruction form of the appellant dated 2 June 1982 was sent to the EPO. Annexed thereto was a cheque for DM 2080 and a further booking instruction form of the appellant in which that amount was descrubed as the designation fee for eight specified Contracting States of the ten originally designated. An EPO computer print-out gives 4 June 1982 as the date of payment of the eight renewall fees of DM 260 each. By communication of 16 June 1982, the appellant was informed that pursuant to Rule 85a EPC it was still possible to make valid payment of the designation fees within a period of grace of two months beginning on 4 June 1982 on payment of a surcharge of 50%, up to a maximum of DM 1035, and that otherwise the application would be deemed to be withdrawn. A communication that the application had been deemed to be withdrawn was issued on 30 August 1982. By letter of 2 September 1982, received on 4 September 1982, the appellant submitted further observations, enclosed the above-mentioned annexes and asked for "the matter to be reconsidered."
II. On 24 September 1982 the EPO Receiving Section issued a Decision of which the operative part was originally worded as follows: "The request for repayment is refused". After the appeal had been filed, the operative part was amended pursuant to Rule 89 EPC to the following: "The request for reversal of the finding pursuant to Rule 69(1) EPC dated 30 August 1982 is rejected." It was only by virtue of this amendment that an express reference to Rule 69 was inserted in the Decision of 24 September 1982.
III. On 5 October 1982 the appellant filed a notice of appeal against the Decision of the Receiving Section of the EPO dated 24 September 1982 together with a Statement of Grounds and the appeal fee was paid on 4 November 1982. In the Statement of Grounds, it submitted that the DM 2080 paid in respect of designation fees and intended to cover eight countries, although paid late, was still within the period of grace under Rule 85a EPC and pursuant to Article 9(2) of the Rules relating to Fees should be regarded as an amount in respect of designation fees together with the surcharge. In consequence, DM 390 (DM 260+50%) was payable for each valid designation under Rule 85a EPC, taking the States in the order in which they were listed. Thus, the first five States were validly designated with payment made under Rule 85a EPC in conjunction with Article 9(2) of the Rules relating to Fees. Accordingly, the appellant claimed that:
1. processing of the application should be continued as regards the first five designated Contracting States;
2. the appeal fee should be reimbursed.
1. The appeal complies with Articles 106, 107 and 108 and Rule 64 EPC and is therefore admissible.
2. The Receiving Section rightly regarded the appellant's letter dated 2 September 1982 asking for "the matter to be reconsidered" as an application for a decision pursuant to Rule 69(2) EPC even though, in its Decision, the Receiving Section does not refer to that letter as such an application. In substance, a decision under Rule 69(2) EPC reviews whether the loss of rights in question actually occurred, i.e. in the present case whether the DM 2080 was paid in due time on 3 June 1982 or not until 4 June 1982 as shown in the EDP print-out. The EDP print-out does not suffice for checking whether the fee was paid in due time. It is necessary to check and include in the file at least copies of the documents on which the EDP coding was based. This the Receiving Section did not do. It evidently based its finding that an account-only cheque for DM 2080 was not received at the EPO until 4 June 1982 on the EDP print-out alone. It omitted, however, to ascertain when the appellant's bank instructions form dated 2 June 1982 accompanying the account-only cheque was actually received by inspecting the form itself or a copy thereof. Since the question under consideration is whether payment was made in due time, that omission constitutes a substantial procedural violation and the contested Decision must therefore be set aside.
3. It is not necessary to consider whether there are other defects in the Decision, including the question whether a decision may be corrected pursuant to Rule 89 because of "obvious mistakes" if the intention of the decision becomes clear only when the correction is made, or the further question whether such correction may be made after an appeal has been filed.
4. It is possible that the examination now to be carried out by the Receiving Section as to when the DM 2080 was effectively paid will reveal that the payment is to be considered as made on 4 June 1982, that is after the expiry of the normal time limit for payment on 3 June 1982 under Article 79(2), second sentence, EPC, but within the period of grace under Rule 85a EPC. For that eventuality it is therefore necessary to answer the question whether Article 7(2) and Article 9(2) of the Rules relating to Fees are applicable to payments in respect of designation fees received within the period of grace under Rule 85a, and what is the relationship of those provisions of the Rules relating to Fees.
5. Assuming that the DM 2080 was not received until the period of grace, the stated purpose of the payment (...for eight - specified - Contracting States...) could no longer be fulfilled. There are also no express indications of the purpose of payment corresponding to the legal position during the period of grace, i.e. an express indication that designation fees plus surcharges were to be paid and the indication of the Contracting States for which the designation fees plus surcharges were to be applied. During the remainder of the period of grace no additional payments were made and no indications as to the use of the amount paid were given. Such indications only appear in the Statement of Grounds for the appeal.
6. Rule 85a EPC requires payment, within the specified period of grace, of the fees plus a surcharge, i.e. payment of a sufficient amount to avert loss of rights. But indication of the purpose of payment within the time limit for the payment is not a mandatory requirement for payment to be made in due time. This follows from Article 7(2) of the Rules relating to Fees, which is also applicable to payments for designation of States in the period of grace under Rule 85a EPC. In the present case the amount was expressly stated to be for the designation of eight specified States of the original ten Contracting States. It was accordingly clear that the amount paid was intended to cover designations. Since the total amount of DM 2080 was only enough to cover payment of designation fees plus surcharges in respect of five Contracting States, the question remains as to which five of those eight States the payment is to be applied.
7. At first sight, direct application of Article 9(2) of the Rules relating to Fees seems called for. That provision states that designation fees shall be applied according to specifications made at the time of payment (first sentence) and, where no specification is made, according to the order in which the States are designated (second sentence). But direct application of this latter provision would mean that the applicant was bound by a sequence not necessarily corresponding whith the selection he in fact wanted. When drawing up the original sequence of designations, the applicant does not think of delay in payment such as to oblige him to restrict the designation. The original sequence is often alphabetical - as in this case. In the "precautionary" designations in the request for grant form drawn up pursuant to Rule 26(1) (EPO Form 1001, Part XVII; see also Legal Advice by the EPO No. 7/80 in OJ EPO 1980, 395) the States are listed in the order in which they deposited their instruments of ratification of or accession to the EPC. Thus it is clear that subsequent restriction to fewer States because the fees paid were inadequate may only be made in accordance with the sequence given if the applicant himself makes no selection. Pursuant to Article 7(2), first sentence, of the Rules relating to Fees, he must be requested to do so. Application of this provision therefore takes precedence over Article 9(2), second sentence, of those Rules. Only if the applicant fails to comply in due time with the request to make a selection is the more specific provision on designations in Article 9(2), second sentence, of those Rules applicable instead of Article 7(2), second sentence, of the Rules relating to Fees. The view put forward by G. Gall (Mitteilungen der deutschen Patentanwälte 1981, p. 227 and 231, point 26) is therefore to be endorsed.
8. The contested decision must be set aside and the matter remitted to the Receiving Section pursuant to Article 111(1). If payment proves to have been out of time, the Receiving Section will apply the above-mentioned provisions of the Rules relating to Fees in accordance with the principles enunciated above. The appellant's indications in the Statement of Grounds of the appeal are not to be treated as the selection of the States, since he was not then aware of the legal position as described above.
9. Reimbursement of the appeal fee is to be ordered, since the requirements under Rule 67 EPC are met. The procedural violation on the part of the department of first instance lies in the inadequate check on whether payment was out of time, as described in point 2. The fact that the Receiving Section did not apply the relevant Articles of the Rules relating to Fees in the manner indicated by the Board of Appeal, which was not previously self-evident, does not constitute a procedural violation. Reimbursement is equitable, but again solely as a consequence of the criticised procedure.
For these reasons, it is decided that:
1. The Decision of the Receiving Section of the European Patent Office dated 24 September 1982 is set aside and the case is remitted for continuation of the procedure.
2. Reimbursement of the appeal fee is ordered.