Opinion G 1/18 on the distinction between an appeal deemed not to have been filed and an inadmissible appeal, and on the consequences of this

Haar, 18 July 2019

The Enlarged Board of Appeal today issued opinion G 1/18 on the distinction between an appeal deemed not to have been filed and an inadmissible appeal, and on the consequences of this. The opinion is in response to a referral by the President of the European Patent Office (EPO). The Enlarged Board of Appeal is the highest judicial authority under the European Patent Convention (EPC).

The point of law referred by the President of the EPO was whether an appeal is to be treated as not filed or as inadmissible in cases of a failure to observe the two‑month time limit under Article 108 EPC owing to belated payment of the appeal fee and/or belated filing of notice of appeal. The appeal fee is not reimbursed if an appeal is inadmissible (Rule 103(1) EPC).

Under Article 112(1)(b) EPC, the President of the EPO may refer a point of law to the Enlarged Board of Appeal where two boards of appeal have given different decisions on it. With respect to the point of law in issue here, some boards had held that the appeal was inadmissible and that there were therefore no grounds for reimbursing the appeal fee. However, the prevailing view in the Boards' case law was rather that the appeal was deemed not to have been filed, and that - since no appeal existed - the appeal fee had been paid without a legal basis and therefore had to be refunded.  The Enlarged Board was therefore called on to clarify this point of law and its consequences for the reimbursement of the appeal fee.

The Enlarged Board answered the referred point of law as follows (provisional translation for the purposes of this press release):

1. An appeal is deemed not to have been filed in the following cases:

(a) where notice of appeal was filed within the two‑month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two‑month time limit;

(b) where notice of appeal was filed after expiry of the two‑month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two‑month time limit;

(c) where the appeal fee was paid within the two‑month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND notice of appeal was filed after expiry of that two‑month time limit.

2. In the cases referred to in answers 1(a) to (c), reimbursement of the appeal fee is to be ordered ex officio.

3. Where the appeal fee was paid within or after the two‑month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND no notice of appeal was filed at all, the appeal fee is to be reimbursed.

In its opinion G 1/18, the Enlarged Board thus takes the view that the consequence in law of a failure to observe the two‑month time limit under Article 108 EPC is that the appeal is deemed not to have been filed, and not that it is to be rejected as inadmissible, and that, accordingly, the appeal fee will be reimbursed in such cases. In so finding, the Enlarged Board has endorsed the prevailing view in the Boards' case law.

The Enlarged Board further observes in its opinion that its answers to the referred point of law apply not only to appeals but also, by analogy, to similar situations, for instance in opposition proceedings (Article 99(1) EPC).

The Enlarged Board issued its opinion in a seven-member composition. Its Chairman is also the President of the Boards of Appeal.

Further information:


Contact:

Gérard Weiss
Legally qualified member of the Enlarged Board of Appeal and of the Boards of Appeal
Tel.: +49 (0)89 2399 3119
gweiss@epo.org

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