Euro-PCT application EP 3 196 950 A1 relates to a conversion method between thermal energy and electrical energy.
Brief outline of the case
The application was refused for lack of clarity and the applicant appealed.
After the board issued a communication under Art 15(1) RPBA, the applicant/appellant declared that it will not attend the scheduled OP. Thereafter the board cancelled the OP
The case is interesting as the board decided to reimburse 25% of the appeal fee.
The board’s decision
Cancelation of OP
According to established case law and practice, the board interpreted the applicant’s declaration not to appear as an effective withdrawal of the request for OP. See Case Law of the Boards of Appeal, 10th edition 2022, III.C.4.3.2.
Since the OP without the presence of the appellant would have served no purpose, the board decided to cancel them.
Reimbursement of 25% of the appeal fee
According to R 103(4,c), the appeal fee must be reimbursed at 25% if the request for OP is withdrawn within one month of notification of the communication issued by the board in preparation for the OP, and no OP take place.
In the present case therefore the question may arise whether there is room for reimbursement of the appeal fee.
Can the appellant’s declaration of non-appearance to OP can be considered a withdrawal of the request for OP within the meaning of Rule 103(4,c).
The board was aware that, at present, there seems to be no definite, consistent answer to that question in the case law of the boards.
The board considered that, since it interprets the appellant’s declaration of non-attendance at the OP as a withdrawal of the corresponding request, allowing it thus to cancel the scheduled OP, it is only fair to interpret that declaration in the same way in the application of R 103(4,c).
The present board thus concurred with the reasoning of decision T 0104/23, Reasons 11, and reimbursed 25% of the appeal fee.
Comments
Before amending R 103, in order to align it with the RPBA, and to push appellants to withdraw appeals or requests for OP, the problem of partial reimbursement of the appeal fee did not occur, as this was not foreseen.
It is a euphemism when the present board, says that it “is aware that, at present, there seems to be no definite, consistent answer to that question in the case law of the boards”.
In the comments section of T 263/22 in the present blog, I noted that three lines of case law could be discerned.
The first, and longest, line of case law, is that started with T 3/90. T 3/90 was cited in a lot of other decisions. For this line of case law, announcing the non-appearance at OP, should generally be treated as a withdrawal of the request for OP.
A more recent line of case law has been started in T 245/19. In this decision, also commented in the present blog, doubts were expressed that a declaration of non-appearance to OP can be considered as a withdrawal of the request for the OP. It was rather considered that the request for OP was ineffective.
T 263/22, based on earlier decisions T 671/12 and T 663/10, represents a third line of case law. The declaration of non-appearance “dispenses” the board to hold OP.
The boards were thus very creative in finding reasons not to reimburse 25% of the appeal in case of timely information of the board that a party would not attend OP.
In the comments section of T 263/22, I considered that, if a declaration of non-appearance to OP is considered as withdrawal of a request for OP, 25% of the appeal fee should be reimbursed according to R 103(4,c).
If a board does not want to reimburse 25% of the appeal fee, then R 115(2) should apply and the board must meet on the set date and establish the party’s absence. Minutes of such OP can be rather brief in this case. Not holding OP, but keeping the full amount of the appeal fee is tantamount to unjust enrichment.
Neither R 115(2) nor Art 15(3) RPBA can be taken as a reason not to reimburse 25% of the appeal fee when no OP takes place after a party has declared not to appear or participate.
The present board has now accepted to reimburse 25% of the appeal fee when the appellant declares not to attend OP.
In the present case, appeal proceedings were ex-parte. In T 104/23, the appeal proceedings were inter partes. The board cancelled the OP when the proprietor declared not to attend. The reimbursement of 25% of the appeal fee for not holding OP was thus justified.
It is to be hoped that other boards will follow those two examples.
Inter partes proceedings
This is however not the end of the story.
If, in inter partes proceedings, one appellant declares not to attend OP, there is no logical reason why the not appearing party should not get a refund of 25% of its appeal fee reimbursed, if it timely informs the board that it will not attend.
This reimbursement should not made dependent of the fact that OP are nevertheless held at the request of a party to the proceedings, whether it has appealed or not.
How to be sure to get reimbursed 25% of the appeal fee
The best possibility for parties not having the intention to participate to OP is to formally declare the withdrawal of their request for OP.
This guarantees them a refund of 25% of the appeal fee, without any loophole for the boards to keep the full appeal fee.
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