Opinion G1/18: common sense prevails
M. Névant (FR), European Patent Attorney
About a year ago, the President of the EPO referred the following question to the Enlarged Board of Appeal under Article 112(1) (b) EPC:
“When a notice of appeal and/or the payment fee has been filed (respectively, paid) after the two months time limit set forth in Article 108 EPC, is the appeal inadmissible or deemed not to have been filed, and must the fee for appeal be reimbursed?”.
The referral was based on what was thought to be diverging case law, the majority view (as reflected in T 1325/15) being that in such a case the appeal is deemed not to have been filed and the fee for appeal must be reimbursed, the minority view (as reflected in T1897/17) being that the appeal must be rejected as being inadmissible and that the fee for appeal cannot be reimbursed.
The Enlarged Board of Appeal (EBA) has now issued opinion G1/18 concerning this point of law. After slightly reformulating the question posed (the term “payment fee” being replaced with “fee for appeal”), the EBA concurs with the view of the EPO President that there is indeed diverging case law on this matter and concludes that the referral is accordingly admissible. The EBA then summarizes in the Table below the three scenarii which can be contemplated based on the wording of Article 108 EPC, first and second sentences.
| Appeal/notice of appeal | |||
| Filed in due time | Filed > 2 months | ||
| Fee for appeal | Paid in due time | 3 | |
| Paid > 2 months | 1 | 2 | |
After reviewing the case law corresponding to each scenario, the doctrine and the “Travaux Préparatoires” of the EPC, the EBA – in line with Articles 31 and 32 of the Vienna Convention on the Law of Treaties - thoroughly considered three different ways of interpreting the provisions of Article 108 EPC: a literal interpretation, a systematic interpretation, and a teleological interpretation.
The EBA came to the same legal conclusion for each scenario, irrespective of the way of interpreting the provisions of Article 108 EPC. The EBA in particular commented as follows (see section VII of the opinion; our translation):
“Articles 106, 107 and 108 EPC define the requirements which must be met at the end of the 2-month and 4-month time limits for the appeal (i) deemed to have been filed and (ii) found admissible. According to Article 108 EPC, first and second sentences, appeal proceedings are triggered by a first step, namely filing the appeal, during which the appellant has to file a notice of appeal within two months from notification of the decision; this appeal will be deemed to have been filed only if the fee for appeal is paid. Only if both acts are done in the prescribed two-month time limit is the appeal deemed to have been filed, i.e. the appeal exists. Once the existence of the appeal has been established, the admissibility of the appeal can then be checked in a second step.”
The following answers are thus provided in response to the referral:
- An appeal is deemed not to have been filed in the following cases:
a) where the notice of appeal was filed within the two-month time limit prescribed in Article 108 EPC, first sentence, AND the fee for appeal was paid after expiry of that two-month time limit;
b) where the notice of appeal was filed after expiry of the two-month time limit prescribed in Article 108 EPC, first sentence, AND the fee for appeal was paid after expiry of that two-month time limit;
c) where the fee for appeal was paid within the two-month time limit prescribed in Article 108 EPC, first sentence, for filing the notice of appeal AND the notice of appeal was filed after expiry of that two-month time limit. - In the cases referred to in answers 1a) to 1c), reimbursement of the fee for appeal is to be ordered ex officio.
- Where the fee for appeal was paid within or after the two-month time limit prescribed in Article 108 EPC, first sentence, for filing notice of appeal AND no notice of appeal was filed at all, the fee for appeal is to be reimbursed.
The EBA has therefore confirmed that an appeal is deemed not to have been filed where the notice of appeal is filed and/or the appeal fee is paid after expiry of the two-month time limit prescribed in Article 108 EPC, first sentence. The appeal fee is to be reimbursed in these cases.
It is also worth noting that the EBA indicates that the opinion in G1/18 is in line with the case law concerning the late payment (or absence of payment) of the opposition fee: in such cases, the opposition is also deemed not to have been filed (see section XI of the opinion).
