J 0018/85 (Slag discharge) of 4.11.1986

European Case Law Identifier: ECLI:EP:BA:1986:J001885.19861104
Date of decision: 04 November 1986
Case number: J 0018/85
Application number: 84115331.5
IPC class: F23J 1/02
Language of proceedings: DE
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Bibliographic information is available in: DE | EN | FR
Versions: OJ
Title of application: -
Applicant name: Ofenbau
Opponent name: -
Board: 3.1.01
Headnote: 1. The provision of Article 8(3) RFees known as the "ten-day-rule", whereby a payment is deemed to have been made within the required period if the person making the payment can show that he arranged for payment ten days prior to expiry of the period concerned does not apply to key dates after which payments reaching the EPO are affected by an increase in fees or a change in their currency equivalents.
2. If the authoritative decisions of the Administrative Council of the European Patent Organisation designate the date on which the payment is received and not that on which payment falls due as the key date, or if in so designating the date for payment it does not leave scope for the ten-day rule to be applied, there can be no objection under Article 164(2) EPC.
Relevant legal provisions:
European Patent Convention 1973 Art 164(2)
European Patent Convention 1973 R 67
Rules relating to fees Art 8(3)
Decision AC of 8.6.1984 revising fees Art 002
Decision AC of 8.6.1984 revising fees Art 003
Keywords: Key date/increase in fees
Increase in fees/key date
Ten-day rule
Compatibility with EPC
Catchwords:

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Cited decisions:
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Citing decisions:
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Summary of Facts and Submissions

I. In its Decision of 8 June 1984, published in OJ EPO 7/1984, p. 297, the Administrative Council of the European Patent Organisation increased the fees listed in Article 2 of the Rules relating to Fees. Article 2, first sentence, of this Decision reads as follows: "The new amounts of fees shall be binding on payments made on or after 3 January 1985". Fees paid at the old rate after that date are deemed to have been validly paid if the deficit is made good as required by Article 3 of the Decision.

II. On 13 December 1984, the appellants' representative filed a European patent application, whereupon, in accordance with the rates still in force, fees for filing, searching, designations and claims amounting to DM 5 030 became due. On 21 December 1984, the representative arranged with a bank in a Contracting State to remit this amount to the EPO. However, the remittance was not credited to the EPO's postal giro account until 3 January 1985, the date specified as that on which the new rates took effect. Under the higher rates in force from that date, DM 5 410 was payable for the various fees mentioned. By letter dated 25 February 1985, the Receiving Section of the EPO requested payment of the difference of DM 380. To avoid any loss of rights, the representative paid this amount without acknowledging any legal obligation and at the same time asked for it to be reimbursed, invoking the "ten-day rule" of Article 8(3) of the Rules relating to Fees. This states that a period for payment is deemed to have been observed if the person making the payment is able to prove to the Office that he arranged for payment in a Contracting State at least ten days prior to expiry of the said period.

III. The application for reimbursement was rejected by a decision of the Receiving Section of the EPO on 15 May 1985, essentially on the grounds that Article 8(3) of the Rules relating to Fees did not apply in this case, its purpose being to avoid loss of rights. In the applicants' case this was guarded against by Article 3 of the Administrative Council Decision already referred to in that payment of fees at the old rate would be regarded as valid provided the difference was duly paid later upon request. A further reason why Article 8(3) of the Rules relating to Fees did not apply was that the Administrative Council Decision did not fix a period ending with 2 January 1985. On the contrary, it made the new rates of fees binding for payments received from 3 January 1985 onwards. Where this date lay within a period allowed for payment, that period still continued to run. The only difference was that the new rates applied from the key date onward, which might render a further payment necessary.

IV. On 22 June 1985, the appellants lodged an appeal against this decision, paying the appeal fee on 28 June 1985. The statement of grounds for appeal followed on 19 September 1985.

V. In it the appellants claimed that, by fixing the date of 3 January 1985 in its Decision the Administrative Council had also fixed a "period" in the meaning of Article 8(3) RFees, since payment had to be effected before that date for the previous amount of fees to be sufficient. This ruling was equivalent to the period of grace allowed by Rule 85a EPC. Here too, application of Article 8(3) RFees to the basic period was not ruled out by the fact that Rule 85a EPC provided for late payment with a surcharge. Finally, Article 8(3) RFees also had the effect that, by observing the ten-day rule a person making payment would guard against the risk of its not arriving on time. The failure of the EPO to apply this Rule in the case of the key date for the start of the new fee schedule was for a person making payment an incomprehensible and an unnecessary legal distinction, abandonment of which would mean only a very small loss of fees for the EPO.

VI. The appellants' representative requests refund of the DM 380, representing the difference paid "without prejudice", as also refund of the appeal fee.

VII. In connection with the latter request he argues as follows: the claim for repayment of the appeal fee is justified despite the fact that there was no procedural error but merely a misinterpretation of the Rules relating to Fees. Moreover, it seems unfair that to obtain repayment of an amount overpaid of DM 380 an appellant should have to pay an appeal fee of DM 680 far more than the amount wrongly charged. It could not be the purpose of the appeal fee to prevent questions relating to fees from being scrutinised by the Board of Appeal.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC, and is therefore admissible.

2. The Decision of the Administrative Council of 8 June 1984 revising the amounts of fees states (Article 2, first sentence) that the new amounts of fees shall be binding on payments made on or after 3 January 1985. It does not therefore focus on the date on which payment becomes due (in the present case 13 December 1984), which is the first date on which the fee could be validly paid. Since the due date preceded the key date for the new fee schedule, the amount of fees owed would obviously, unless paid prior to 3 January, increase before the period for payment laid down in Articles 78(2) and 79(2) EPC expired on 13 January 1985. Only for renewal fees is the day on which they fall due decisive, this being a matter governed by Rule 37(1), third sentence, EPC. The reference to a date of payment and not to the date on which payment falls due is quite clear in Article 2 of the Administrative Council Decision. A similar provision concerning changes in currency equivalents is contained in Article 6(4) RFees.

3. The only possible interpretation of Article 2 of the Administrative Council Decision and Articles 8(3) and 6(4), fourth sentence, of the Rules relating to Fees is that Article 8(3) RFees does not apply to the key date for the new fee schedule. This follows both from the wording of Article 2, first sentence, of the Decision and from that of Article 8(3) RFees. The date on which according to Article 2, first sentence, of the Decision the new amounts of fees become binding, namely "payments made on or after 3 January 1985" cannot be regarded as a "period" in the meaning of Article 8(3) RFees. Comparing this provision, as the appellants do, with Rule 85a EPC is unwarranted, since the Rule assumes the non-observance of a period, from which it follows that Article 8(3) RFees is also concerned with this initial or basic period. This conclusion is confirmed if the situation is compared with that regulated by Article 6(4), fourth sentence, RFees, which concerns the date on which new exchange rates become binding. Had the Administrative Council intended the ten-day rule to apply to the key date, it could have said so in the ruling on difference payments in Article 3 of its Decision. An applicant furnishing "ten-day proof" could then have been exempted from any further payment. That the Administrative Council did not do this must not be regarded as an omission and for this reason alone, it is impossible to exempt a person making a payment from the need to make good any shortfall by application by analogy of Article 8(3) RFees.

4. The upshot of this interpretation of the Administrative Council Decision of 8 June 1984 is firstly that the date of payment and not the date on which payment is due is the factor deciding which rate is applicable, and secondly that the new fee schedule is to apply even where a payment was arranged ten days before the key date. These rulings cannot be faulted under Article 164(2) EPC, for they contravene neither the European Patent Convention nor general legal principles.

4.1 The choice of the payment date as the key date instead of the (earlier) date on which payment feel due would be open to attack if it could be seen as an illegitimate means of retroactively increasing the amount of a debt in respect of fees already incurred. As far as most fees are concerned, however, including the ones in point, there is no question of retroactive effect. The Administrative Council Decision of 8 June 1984 was taken and published in OJ EPO 7/1984 well before the 13 December 1984 on which the fees in this case fell due. These fees therefore became subject to the new schedule long before their due date in the event of their not being received by the EPO until 3 January 1985 or thereafter. Nor, however, would there have been any grounds for objection if the fees had fallen due even before the Administrative Council issued its decision. This situation can arise with regard to the examination fee. Since the request for examination is usually made when the application is initially filed, the time elapsing between the date on which the examination fee becomes due and the expiry of the period for payment under Article 94(2) in conjunction with Article 93(1) EPC may be up to 2 years or more. Since filing the request for examination early with the possibility of making it effective only by payment at a considerably later date as allowed by Article 94(2) EPC is a purely precautionary measure, an applicant must be prepared for the fact that an increase in fees may be decided on and announced after he has filed the request. This special case is another in which it would be incorrect to speak of an illegitimate retroactive effect. Moreover, a look at the legal provisions used to increase fees in the Contracting States shows that while the link is often with the due date, it is sometimes also with the date of payment. This is especially true of Austria; cf. Article III of the Patent and Trademark Fees Amending Act of 1984.

4.2 Nor is there any objection on legal grounds to the Administrative Council's failure in Article 3 of its Decision to exempt from any further payment those persons who could provide the "ten-day proof" required by Article 8(3) RFees. Because of the difference in the situation and the sanctions there is no violation of the principle of equality. It may be that to abandon such a distinction would avoid annoying persons making payments who believe that by adhering to the ten-day rule with which they are familiar they will continue to benefit from the lower rate of fees, especially when mail and money transfers are delayed towards the end of the old year and the beginning of the new. It may also be that any loss of income to the EPO would be insignificant. Even so, none of this creates a situation which because of the principle of equality would require that persons making payments be exempted from making good any difference due upon furnishing evidence of observance of the ten-day rule.

5. In view of the conditions imposed by Rule 67 EPC, reimbursement of the appeal fee is in the opinion of the Board of Appeal not possible, even though in the appellants' view it would be equitable. The Board does not grant the appeal, nor does it accept that any procedural error has been committed. Even in the case of Decision J 08/84 (OJ EPO 9/1985) in which the appeal was allowed and the appellants did obtain reimbursement of claims fees in the amount of DM 300, no refund of the appeal fees was ordered.

ORDER

For these reasons, it is decided that

1. The appeal is dismissed.

2. Request for reimbursement of the appeal fee is refused. Decision of the Legal Board of Appeal dated 14 May 1986

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