The three Rs of legitimate expectation: Recognizability, recoverability and responsibility (T 0703/19)

The Enlarged Board of Appeal (EBA) recently dealt thoroughly with the thorny issue of the consequences of appeal fee payment after the deadline for filing an appeal (G 1/18, IPKat post here). Readers with an enthusiasm for the legal intricacies surrounding appeal filings, may also be interested in a recent Technical Boards of Appeal (TBA) decision (T 0703/19).  In this decision, the TBA considered another issue arising from appeal fee payment: when may a user of the EPO have legitimate expectations to be informed of an underpayment of an appeal fee?

Legitimate expectations - Legal background

The deadline for filing an appeal is two months after the notification of the decision to be appealed (Article 108 EPC). As recently confirmed by the EBA in G 1/18, an appeal is deemed to be filed only if the notice of appeal is filed and the appeal fee is paid by the deadline (Article 108 EPC).

In G 2/97, the EBA considered the application of the principle of legitimate expectations (or principle of good faith), as understood in European Community law, to the Boards of Appeal of the EPO. According to the principle of legitimate expectations, the EPO is required to inform a party to proceedings of an imminent loss of rights due to a deficiency in an appeal filing, if such an indication can reasonably be expected. The deficiency must be easily recognizable by the EPO as part of the normal handling of the case. The deficiency must also be recoverable.

In T 690/93, for example, legitimate expectations for the EPO to have informed the user of a failure to pay the re-establishment fee were not found. The letter requesting re-establishment did not mention the fee. The mistake was therefore not recognizable.

In T 161/96, the TBA decided that the EPO was not required to inform an opponent of an incomplete payment of the opposition fee. The mistake was found as being not recognizable within the necessary time limit. This was because the EPO accounts department only received the opponent's payment sheet after expiry of the opposition period (r. 7). Again, legitimate expectation was not found.

The 3 Rs: Recognizability, recoverability
and responsibility

Users of the EPO should also act in good faith by doing everything in their power to prevent a loss of rights. As such, an appellant's responsibility for fulfilling the conditions of an admissible appeal cannot be relinquished to the Boards of Appeal. It is, in general, the responsibility of the user to file the appeal in the necessary form by the deadline.

The case in question

The patent in question, EP11700179, was a Swiss originating patent related to a dental implant. Following a negative decision by the Opposition Division, the patentee filed a notice of appeal by online filing by the deadline for filing an appeal. The notice of appeal included a completed form and accompanying letter. The letter included the statement (in German) that the appeal fee was thereby paid via online fee payment. The form stated the amount of the appeal fee, but not the method of payment. The method of payment was indicated as "not specified" ("nicht angegeben"). An account number for debit of the amount was not provided, and payment was thus not taken.

According to OJ EPO 2017, S5, payment of a fee by debit from a users account can only be done on the basis of an electronic debit order submitted by the online fee payment system (Article 5(2) EPC):

Debit orders submitted in any other way (e.g. using EPO Form 1010 or any other form of written submission...or using a different format (e.g. Form 1010 filed in PDF via CMS, web-form filing, online filing or ePCT) are invalid and will not be carried out. 

Consequently, the instruction in the letter of the patentee that the appeal fee was thereby paid, could not be considered a valid instruction to pay the fee.

Following expire of the deadline for filing the appeal, a notification of loss of rights was issued by the EPO (Rule 112 EPC). The notification indicated that the appeal fee had not been paid. On the same day, the patentee paid the appeal fee. The patentee argued that, according to the principle of legitimate expectations (G 2/97), the EPO was obliged to draw the patentee's attention to the missing details that would have enabled appeal fee payment, before expiry of the appeal fee deadline.

Was the mistake recognizable and recoverable?

To assess the question of whether there had been a legitimate expectation on the EPO, the TBA considered whether the lack of payment had been a recognizable and recoverable defect. Given that the notice of appeal was filed 1 month before expiry of the appeal deadline, the TBA was clear that the patentee would have paid the fee had they been informed of the defect. The defect had therefore been recoverable.

The question then became whether the EPO could easily have recognized the defect as part of normal processing procedures. The TBA found that the statement of the fees provided in the form were an indication that the fees were to be paid. If there was any doubt in this regard, the statement in the letter that the fees were thereby paid should have dispelled this doubt. The missing account number in the payment method box was therefore considered by the TBA to be in clear contradiction with the rest of the notice of appeal. The TBA thus considered the error by the patentee to have been easily recognizable by the EPO (r. 16).

Who was responsible?

But was it the EPO's responsibility to recognize and point out the defect in the fee payment details to the patentee? The TBA considered the case distinct from the previous Boards of Appeal cases referred to by the EBA in G 2/97: J 12/94, T 690/93 and T 161/96. In these cases, in contrary to the case in question, the failure to pay a fee had not been recognizable by the EPO. The TBA reasoned that the fact that the payment of the appeal fee is the responsibility of the appellant "does not mean that all the related aspects are necessarily affected as well". Given that the mistake of the missing account details was easily recognizable as a mistake, the TBA concluded that appellant could therefore have expected to be informed of the mistake (r. 21). The appeal fee was therefore considered to have been filed.

There is consequential a simple take home message from this case. It is always advisable to mention  that you are paying an appeal fee in the notice of appeal. Such a statement has no direct legal consequences with regards to the actual payment of the fee (OJ EPO 2017, S5). However, the statement serves to clarify your intentions and may help to produce legitimate expectations that the EPO should inform you of a defect in payment.