2.5.4 Payment of appeal fee
Article 2(1), item 11, RFees (see decision of the Administrative Council of 13 December 2017, CA/D 17/17, OJ 2018, A4) provides that the persons and entities listed in former R. 6(4) and (5) EPC and now R. 7a(2)(a) EPC to R. 7a(2)(d) EPC (microenterprises, small and medium-sized enterprises, natural persons, non-profit organisations, universities or public research organisations) need only pay a reduced appeal fee rather than the full fee. The notice from the EPO dated 18 December 2017 (OJ 2018, A5) contains further details on claiming entitlement to the reduced appeal fee (note that the requirements for this declaration are distinct from the requirements of R. 7b EPC which concerns language-related fee reductions). Its point 3 stipulates that appellants wishing to benefit from a reduced fee for appeal must expressly declare that they are a natural person or an entity covered by R. 6(4) EPC (now R. 7a(2) EPC). Under point 4, the declaration must be filed at the latest by the time of payment of the reduced fee for appeal. Point 11 states that if the reduced fee is paid but no declaration is submitted, the notice of appeal may be deemed not to have been filed or the appeal may be considered inadmissible.
In J 8/18 the Legal Board noted that an entity within the meaning of R. 6(4) and (5) EPC (now R. 7a(2) EPC) was a small or medium-sized enterprise (SME) as defined by the European Commission Recommendation 2003/361/EC mentioned in R. 6(5) EPC (now in point 7. of the notice from the EPO dated 25 January 2024, OJ 2024, A8). The fact that the appellant was an enterprise that had its principal place of business in China did not mean that it could not benefit from the lower appeal fee.
In the cases reported below, the appellants had paid only the reduced appeal fee within the time limit for appeal, despite the criteria for a reduction not being met or being disputed. The question was thus whether the appeals were to be deemed not to have been filed for failure to pay the required amount of the appeal fee (Art. 108, second sentence, EPC; G 1/18, OJ 2020, A26).
In T 84/19 a patent attorney firm was acting as a straw man opponent and subsequently appellant. The responded argued the firm was therefore not entitled to a reduced appeal fee. The board disagreed and explained that the entitlement to pay a reduced appeal fee must be assessed vis-à-vis the entity which has assumed the procedural status of an appellant, i.e. the status of appellant at the timing of filing the notice of appeal was the only relevant question In the case in hand this was vested in the patent attorney firm, regardless of whether it was acting as a straw man.
– Declaration of entitlement to reduced appeal fee
In T 1060/19 the board noted that Council Decision CA/D 17/17 did not require a declaration according to points 3 and 4 of the corresponding notice. The board nevertheless assumed arguendo that the provisions of the notice that were pertinent to the case in hand were binding. From point 11 of the notice it followed that point 4 must be read as meaning that "it is strongly recommended that" the declaration be filed together with the payment. The board stated that the declaration of entitlement to benefit from a reduced fee for appeal mentioned in the notice from the EPO (OJ 2018, A5) could be filed until the end of the appeal period, despite the wording of point 4, last sentence, of the notice, which must be reconciled with the meaning of point 11 of the notice.
In T 225/19, the board followed decision T 1060/19, in which it was held that there was no legal basis for determining whether the fiction of non-filing applied to an appeal for which a reduced appeal fee had been paid according to whether or not a declaration complying with points 3 and 4 of the notice had been submitted. Council decision CA/D 17/17 and the resultant new version of Art. 2(1), item 11, RFees did not contain any legal foundation for the declaration required under points 3 and 4 of the notice. The notice established the additional requirement of a declaration to be submitted with the fee payment – a requirement devoid of any basis in law. The boards were bound solely by the statutory provisions, not by EPO notices concerning the application or interpretation of those provisions (J 8/18, Art. 23(3) EPC). This meant at the very least that a declaration under points 3 and 4 of the notice could not already be demanded on payment of the reduced appeal fee. The boards were anyway empowered and obliged to examine whether an appeal was admissible and had been duly filed throughout the appeal proceedings, and so even after the time limit for appeal had elapsed. The boards were especially called on to examine this when other parties to the proceedings disputed that those requirements were met. The boards' general practice in this respect was to accept a declaration and supporting evidence of compliance with the requirements under R. 6(4) EPC (now R. 7a(2) EPC) even after the time limit for appeal had elapsed and the appeal proceedings were under way (see T 3023/18).
In T 3023/18 notice of appeal was filed in the name of Borealis AG, and the reduced appeal fee paid, on the last day for doing so. In its first communication, the board invited the appellant to file the hitherto missing declaration necessary for the fee reduction. The appellant thereupon confirmed that it was not entitled to the reduced fee. The board pointed out that the non-filing of the required declaration was not evidence of a clear intention by the appellant to pay the full appeal fee. In the light of the above, the board did not accept that it was possible to establish that the appellant's intention was to pay the full appeal fee. The appeal was deemed not to have been filed and the board ordered reimbursement of both fee amounts (G 1/18, OJ 2020, A26). See also T 1474/19 and T 1678/21.
– Request for correction under Rule 139 EPC
In T 317/19 the appellant filed the notice of appeal within the two-month time limit. However, due to an error in the "Method of payment" box on Form 1038E (the box did not indicate a method but stated "not specified"), the debit order for the payment of the appeal fee was not carried out before expiry of that time limit. Following Opinion G 1/18 (OJ 2020, A26) this resulted in the appeal being deemed not to have been filed. To change the above result, the appellant filed a request for correction under R. 139 EPC. The board referred to G 1/12 (OJ 2014, A114) where the Enlarged Board affirmed that a correction of errors under R. 139 EPC in documents filed with the EPO is generally applied. The board was aware that the Enlarged Board had made its findings only in the context of the correction of an error in the appellant's name. However, the board failed to see why it should not equally apply to a correction of an erroneously filled payment form. In the case in hand the appellant met the requirements for a correction under R. 139 EPC as summarised in G 1/12. As a consequence, the appeal was retroactively deemed to have been filed. Thus, an error in a duly filed form for paying the appeal fee may be corrected under R. 139, first sentence, EPC. See also J 8/19, in which the Legal Board concluded that the requirements for the requested correction of the amount of the appeal fee indicated in the debit order in Form 1038E were met. As a consequence, the appeal was retroactively deemed to have been filed, the correction under R. 139 EPC having effect ex tunc.
In T 444/20 the board held, with reference to T 317/19, that an error in a duly filed form for paying the appeal fee may be corrected under R. 139, first sentence, EPC. The board also referred to T 2620/18, which concerned very similar circumstances. In that case too the appellant had confused the then current reduced appeal fee with the former sole appeal fee and had indicated the incorrect amount of EUR 1 880 both in the notice of appeal letter and in the payment form. According to the board in that case, it was plausible that the appellant had been guided by the previously applicable, known fee amount of EUR 1 880 and had mistakenly assumed that it was paying the full fee (EUR 2 255). The present board saw no reason to deviate from that decision. Therefore, the board was satisfied that the correction sought introduced what was originally intended by the appellant and that this original intention was immediately apparent. Lastly, the appellant had filed its request under R. 139 EPC merely two weeks after the board's communication, in which it was indicated for the first time that the prescribed appeal fee had not been validly paid. The board concluded that the requirements for the requested correction were met (see G 1/12).
In T 2620/18, the appellant relied on T 152/82 of 5 September 1983 date: 1983-09-05 (OJ 1984, 301) and the EPO practice of correcting underpayments in debit orders of its own motion and debiting the correct, full amount where the payer's payment intention is clear. In the board's opinion, this EPO practice was not readily applicable to a differentiated fee structure like that of appeal fees. If the debit order explicitly stated the intention to pay the reduced appeal fee, the EPO could not reasonably assume of its own accord that the payer actually wanted to pay the full fee. Moreover, not filing a declaration under R. 6(6) EPC was not an unambiguous indication of an intention to pay the full fee. The board interpreted the appellant's submissions in its statement of grounds of appeal as amounting in substance to a request for correction of the debit order and considered it credible that the appellant had indeed presumed it had paid the full appeal fee. However, it found that this request for correction had not been filed without delay (criterion (d) in the list in G 1/12, OJ 2014, A114, point 37 of the Reasons). The request in the statement of grounds had not been filed until six weeks after the mistake had been discovered. In the board's view, the appellant's merely having submitted another debit order at an earlier stage did not amount to an implied request for correction (R. 139 EPC).
– Difference not small
In T 2620/18 and T 3023/18, the difference between the amount paid and the full appeal fee was not considered to be small. It could reasonably be assumed that, in introducing the reduced appeal fee, the legislator had not been simply looking to provide a marginal, as it were symbolic fee reduction for natural persons and small and medium-sized enterprises.
In T 2422/18, the appellant claimed to have paid the reduced appeal fee under R. 6(4) EPC by mistake and said that it would pay the outstanding EUR 375 later. The board rejected its arguments invoking the protection of legitimate expectations, observing that the outstanding amount was not an "amount lacking" within the meaning of Art. 8, fourth sentence, RFees.