The outline of the case
The opponent filed the notice of appeal electronically, within the required time limit.
The notice of appeal was received with an accompanying letter, Form 1038. This form is generated automatically (among other things) as part of the online fee payment when a debit order is issued to the EPO, but its content is based on the entries made by the users of the online payment system.
In the form, the appellant/opponent was named as “applicant” and under “method of payment” the following was noted: “The EPO is hereby authorised to debit fees falling due from the following current account in accordance with the rules governing the automatic debit procedure”.
The number of the current account was also indicated and the appellant/opponent was named as the account holder. A purpose of the fee or an amount to be paid was not mentioned. A debit from the appellant’s current account did not take place.
The opponent was informed by telephone that the payment of the appeal fee by an opponent was not open to the payment by debit order.
The opponent’s/appellant’s position
When filing the statement of grounds of appeal, the opponent took position on the payment of the appeal fee. The appeal fee was actually paid one day later.
In a communication under R 112(1) the EPO informed the appellant/opponent of the finding of a loss of rights due to the failure to pay the appeal fee within the time limit. The appeal was therefore deemed not to have been filed under Art 108. Cf. also G 1/18 (OJ 2020, A26).
The opponent disagreed with the finding of loss of right and argued that “the opponent showed the willingness to pay“. Therefore, Form 1038 had to be corrected to the effect that the payment had been made in due time. He referred in this respect to the case law of the boards of appeal, in which the possibility of correcting a form for payment of fees by applying R 139 had been recognised in a large number of decisions, ultimately also based on the decision of the EBA G1/12 (OJ 2014, A114),
It held that this case law was applicable to the present case and that Form 1038 should therefore be corrected accordingly and the payment of the appeal fee recognised as having been made in due time, i.e. within the period provided for by Art 108.
In the event that the board intended to deviate from the established case law of the boards on the correction of a form for the payment of fees, a referral to the EBA was requested in order to preserve the consistency of case law.
This first request for referral was later withdrawn and replaced with a three new ones.
The questions related mainly to the possibility of the application of R 139 when documents filed contained errors and in how far the true intention of the party had to be taken into account.
The opponent/appellant considered that he was entitled to the legitimate expectation that the EPO would recognise what was really meant and would make a timely debit of the appeal fee.
The board’s position
For the board, the automatic debiting procedure may only be used by applicants and patent proprietors. It is expressly not available to other persons, in particular opponents, either in the first instance proceedings or as parties in the subsequent appeal or review proceedings. See Arrangements for deposit accounts 2019-ADA-(OJ 2019, SE 4, p 10 ff.), as well as Annex 1, Arrangements for the automatic debiting procedure – AAD-(OJ 2019, SE 4, p 22 ff.).
The content of Form 1038, created electronically, nevertheless states the appellant’s request to set up an automatic debiting procedure from the appellant’s current account and also mentions the applicable number of the patent in suit under “Applicant’s or representative’s mark”.
This gives the impression that the EPO’s online payment system supports or at least allows the filing of forms that are contrary to the system. In fact, it is clear from the form that this process, which is not provided for by the online payment system for opponents, could have been effected by the opponent indicating the number of the patent in suit and falsely representing himself to the system as the “applicant” for the patent in suit. However, a fee was not subsequently debited from this account, as this was not an effective order.
For the board, a protection of legitimate expectations was not to be recognised. According to the decision of the Enlarged Board of Appeal G 2/97 (OJ 1999, 123), there is no obligation on the part of the EPO to inform an appealing party of outstanding fees or even to retain them against its declared will by means of another payment method.
The principle of the protection of legitimate expectations merely requires the EPO to inform a user about an impending loss of rights if such an indication can be expected in good faith.
This presupposes that the deficiency is easily recognisable to the EPO in the course of normal processing of the case at the relevant stage of the procedure and that the user can still remedy it within the time limit.
In the present case, the deficiency was not readily apparent. The Form 1038 had been filed on time and, viewed in isolation, did not show any obvious inconsistencies, because an “applicant”, as the appellant had called himself, can have an appeal fee debited without further ado, even within the framework of an automatic debiting procedure.
After no appeal fee could be debited because of the unsuitable payment method indicated on the Form 1038 and after it was established that the appellant was indeed not identical with the applicant, the appellant was informed of this immediately. However, the time limit under Art 108 had already expired.
In these circumstances, the EPO cannot be required in good faith to consider a non-payment by means of what the appellant calls a “reasonable interpretation” of the automatic debit order at least as an instruction to make a payment by any other admissible means and thus to effect payment.
No correction of form 1038 under R 139
The appellant was further of the opinion that Form 1038 should be corrected with regard to its content in accordance with R 139 to the effect that the fee is deemed to have been paid in due time and requested this accordingly.
The board noted that whether a fee payment form filed electronically can also be corrected by applying R 139 has not always been answered uniformly in the case law of the boards of appeal.
In the present case, the board agreed with the view, in favour of the appellant, that, as expressed by the EBA in decision G 1/12 (OJ EPO 2014, 1, grounds 35), R 139 may apply to all documents filed with the EPO and therefore, as further developed in the case law of the boards, also to electronically filed forms concerning payment of fees, see T1000/19, T444/20, T1474/19, J13/21.
However, applying the principles established in decision G 1/12, the board concluded that a correction under R 139 of the chosen, but inadmissible, payment method within the meaning of these criteria was not possible in the present case.
The board agreed with the appellant insofar as it had itself no doubt that it was the appellant’s original intention to file an effective appeal and, as a prerequisite for this, also to pay an appeal fee. However, this was not decisive in the result.
A correction within the meaning of R 139 is only to be made in respect of specific deficiencies such as linguistic errors, clerical errors or other inaccuracies in the documents filed.
It is precisely these concrete deficiencies that are to be taken into account in determining the true intention, and not an overriding general motivation such as “filing an effective appeal”.
Contrary to the opinion of the appellant, it is not also an error in the formation of the will and the resulting erroneous declaration that can be taken into account, but only such an error which, precisely in the actual submission of a declaration, has led to a linguistic error, a spelling mistake or another (such) incorrectness (English version “error” or French version “erreur”)
Such an understanding results from consideration of the wording and the enumeration in R 139 of the type of defects which are capable of correction, see G 1/12, grounds 34, second sentence.
Consequently, the requested correction of Form 1038 from the payment method of the automatic debit procedure to the indication of a payment method such as the individual debit order cannot be made because the latter, as previously explained, did not in fact correspond to the true intention of the appellant’s representative when making his declarations in Form 1038.
The intended payment method at that time was in fact the automatic debit procedure. This was true even if the method was unsuitable.
A referral to the EBA was not deemed necessary for the board and the appeal was not considered filed.
The present case is exemplary for the attention needed to any detail when an opponent files its opposition or its notice of appeal.
As in general the due time limit has expired when a formalities officer has a look at the case, the slightest mistake can have deleterious effects.
The application of R 139 is strictly limited to specific deficiencies such as linguistic errors, clerical errors or other inaccuracies in the documents filed and cannot apply to anything else.
It is worth remembering that according to G 1/86 (OJ 1987, 447, Point 6 of the reasons), “opponents may not have their rights re-established in respect of time limits of appeals”. For an opponent, Art 122 is only applicable for the time limit for filing the statement of grounds of appeal.
As it is the manifest aim of EPO’s management to digitise all the procedures before the EPO it could be useful to consider allowing opponents to pay the opposition or the appeal fee by using a deposit account.
This might entail setting up a specific procedure for opponents, in order to avoid any confusion with applicants/proprietors, but the effort appears worthwhile and in agreement with the general aim of the EPO.
As qualified representatives can act as opponents themselves and can represent parties in all procedures before the EPO, it would be a simplification for all those concerned.