Decision G1/14 Appeal Inadmissible or Deemed Not Filed? A Review

Derk Visser (NL) [1]

Recently the eagerly awaited decision G1/14 of the Enlarged Board of Appeal of the EPO was issued[2]. However, instead of answering the referred question, the Enlarged Board looked into the procedure of the case and decided that the referral was inadmissible.

1. Referred Question

The proprietor appealed the decision of the opposition division revoking his European patent EP2122134. According to the Board of Appeal both the notice of appeal was filed and the appeal fee was paid after expiry of the two-month appeal period. In its decision T1553/13 of 20.02.2014[3] the board reviews the two lines of case law on the sanction on late filing an appeal.

The established line of case law is: if the notice of appeal is filed late and the appeal fee is paid late, the notice of appeal is deemed not filed. The late paid appeal fee will be refunded. A new line of case law holds that the appeal does not comply with Art. 108[4] if the notice of appeal is filed late and the appeal fee is paid late. Therefore under Rule 101(1), the appeal is inadmissible and the late paid appeal fee will not be refunded.

One of the reasons for the second line of case law is that an appellant should not be provided with a more favourable treatment in case of late payment of the appeal fee (i.e. the appeal is deemed not filed and the appeal fee is reimbursed) as in case of, for example, a late filed statement of grounds (inadmissibility of the appeal and no reimbursement of the appeal fee)[5].

The board referred the following question to the Enlarged Board of Appeal:
“If, after expiry of the time limit under Article 108, first sentence, EPC, a notice of appeal is filed and the fee for appeal is paid, is the appeal inadmissible or is it deemed not to have been filed?”

The referral received the reference G1/14[6]. The answer to the question is not only important for the sanction on late filing of an appeal and payment of the appeal fee, but also for late payment of several fees[7].

The referring board inclines to the new line of thought. Hence, a late filed notice of appeal and a late paid appeal fee will result in a validly filed appeal, although inadmissible. However, Art. 108 states “Notice of appeal shall be filed … within two months of notification of the decision”. It is a procedural principle that an act completed after expiry of a period will be regarded as not received and will not be considered. The new line of thought deviates from this principle in that it does consider acts completed late.

2. Procedure

The Enlarged Board analysed in its decision G1/14 of 19.11.2015[8] the procedure that led up to the referral G1/14.
25-04-2013 EPO sends the decision to revoke the European patent by the courier service UPS to the representative of the proprietor.
26-04-2013 An employee of the representative’s firm accepts the letter according to the “Tracking Information” of UPS, which was returned to the EPO.
07-05-2013 The representative signs the Acknowledgement of Receipt.
08-05-2013 The Acknowledgement of Receipt was returned to the EPO by fax.
08-07-2013 (Monday) The notice of appeal was filed and the appeal fee paid. The representative thought that the two-month appeal period is triggered by the signing of the acknowledgement of receipt.

The Board of Appeal applied Rule 126(1) and (2) and decided that the employee was authorised to accept post and that the appeal was filed late[9].

3. Decision

The Enlarged Board decided that Rule 126(1) and (2) are written for despatch only by post with advice of delivery, not for despatch in any other way, such as by UPS[10]. Hence, the assumption that the rule was applicable in the present case is not correct and the conclusion that the appeal was filed late, which is necessary for the referred question, lacks legal basis. As a consequence, no decision is required under Art. 112 from the EBoA and the referral is inadmissible[11].

4. How to Move Forward

There are several possibilities to move forward in the present case[12].

The Board of Appeal could use Rule 125(4) on irregular notification and establish the date of receipt of the decision using the UPS ‘Tracking Information’. The date of receipt would be 26-04-2013, making the appeal filed late.

Alternatively, the board could use the ‘Acknowledgement of Receipt’ signed by the representative. The board has stated that such Acknowledgements of Receipt were intended to be used in case of problems with the advice of delivery[13]. The date of receipt would be 07-05-2013 and the appeal would be filed in due time.

The applicant could invoke good faith, because a user of the EPC should be able to rely on the EPO for sending decisions in a way complying with Rule 126(1) and (2)[14]. Moreover, the EPO has not communicated to the users the relevance of the ‘Acknowledgement of Receipt’ Form 2936 for establishing the date of receipt, neither in its notice[15] nor on the form 2936 itself. The relevance was for the first time clarified in the present decision of the Board of Appeal. If the ground of good faith is accepted, the EPO should resend the decision of the opposition division.

5. Discussion

Rule 126 before amendment referred to ‘Notification by post’[16]. The interpretation of the term ‘post’ in 2013, narrowly restricting it to the national post or broadly including courier services, depended on the department within the EPO and on the moment of time. In Germany under national law ‘post’ is only the Deutsche Post. Note, that Rule 133[17] made a distinction between ‘post’ and ‘delivery service’.

The different interpretations are also apparent in the present case. At the time the decision of the opposition division in the present case was despatched, the EPO office in Munich used UPS in a pilot for deliveries to addressees in Germany, for which service it regarded Rule 126(2) applicable. The BoA accepted the ‘Tracking Information’ as advice of delivery under Rule 126[18]. The EBoA decided that ‘post’ does not cover courier services such as UPS[19].

In recent years the market for postal services in many EPC contracting states has been liberalised. The EPO wanted to take advantage of the liberalisation and be able to choose its postal delivery providers on the basis of cost and reliability. The reliability of the post in several contracting states was not good; often the advice of delivery was not returned or not completed by the recipient. In 2010 the EPO tried to improve the reliability by enclosing an Acknowledgement of Receipt with all communications sent to parties by registered mail with advice of delivery[20]. In 2014 a proposal was submitted to the Administrative Council to amend the rules and make the EPO free to choose its postal delivery provider[21]. The amendment was necessary to avoid any ambiguity in the term ‘post’ in the rules. The proposed terminology ‘postal service provider’, covering both national post and courier services, was taken from EU directives[22] that established the free postal market. The amended rules entered into force on 01-04-2015[23].

The EPO will choose reliable providers for delivering the communications. However, the EPO has not provided a list of the postal service providers they will use. Such a list would increase the legal certainty of users in that they can invoke good faith in case a communication triggering a period is despatched by a delivery service for which Rule 126(2) does not apply, as in the present case. Note, that the EPO has published a limitative list of postal service providers for which Rule 133 applies[24]. The EPO has recognised these providers as rendering a reliable service, so users of these providers can obtain the procedural advantage of the rule.

Although decision G1/14 provides a clear teaching on notification, it is regrettable that it has not removed the legal uncertainty caused by the two different lines of case law.

  1. European Patent Attorney at EIP llp in London, email
  2. Decision G1/14 was issued on 19.11.2015. At the time of writing this review the decision was not yet published in the OJ EPO but was only available in German in the database of the Boards of Appeal decisions on the EPO website.
  3. T1553/13, Board of Appeal 3.2.06, published in OJ EPO 2014 A84
  4. All law references are to the EPC unless otherwise stated
  5. T1553/13 Reasons point 8.1.2
  6. T2017/12 referred a similar question, receiving reference G2/14. That case was terminated, because the application was deemed to be withdrawn. See OJ EPO 2015 A13.
  7. Examination fee, Art. 94(1); opposition fee, Art. 99(1); limitation fee, Art. 105a(1); fee for petition for review, Art. 112a(4); fee for transfer, R. 22(2); fee for intervener, R. 89(2); fee for conservation of evidence, R. 123(2); fee for re-establishment, R. 136(1).
  8. G1/14 Summary of Facts and Submissions point VI and Reasons point 4 and 5.
  9. T1553/13 Reasons point 2 - 4
  10. G1/14 Reasons point 5 – 8. The Enlarged Board did not give further reasons why ‘post’ does not cover UPS.
  11. G1/14 Reasons point 9 - 10
  12. At the time of writing this review no documents had been put in the file after remittal of the case to the Board of Appeal.
  13. T1553/13 Reasons point 7
  14. G5/88 Reasons point 3.2 on the protection of legitimate expectations “In the application of this principle to procedure before the EPO, measures taken by the EPO should not violate the reasonable expectations of parties to such proceedings.”
  15. Notice from the EPO of 10.06.2010 published in OJ 2010, page 377
  16. In German ‘Zustellung durch die Post’ and in French ‘Signification par la poste‘
  17. Rule 133 in the version before the amendment of 01.04.2015, when the phrase ‘if it was posted, or delivered to a recognised delivery service’ was replaced by ‘if it was delivered to a recognised postal service provider’
  18. T1553/13 Reasons point 3
  19. G1/14 Reasons point 8
  20. Notice from the EPO of 10.06.2010 published in OJ 2010, page 377
  21. Administrative Council document CA/47/14 of 25.09.2014
  22. Directive 97/67/EC as amended and Directive 2008/06/EC
  23. Decision of the Administrative Council of 15.10.2014 published in OJ EPO 2015 A17
  24. Decision of the President of 11.03.2015 published in OJ EPO 2015 A29, Article 2