G 0006/91 (Fee reduction) of 6.3.1992

Summary of Proceedings

I. By interlocutory decision of 2 July 1991 in T 367/90 (ASULAB S.A./NV Philips' Gloeilampenfabrieken), Board of Appeal 3.4.1 (Physics) referred to the Enlarged Board of Appeal the following questions:

(1) When must a document drawn up in an admissible non-EPO language be filed for entitlement to the fee reduction referred to in Rule 6(3) EPC to be secured?

(2) More specifically, is it possible to file such a document on the same day as a translation of it in an EPO official language without losing entitlement to the fee reduction?

(3) In the case of an appeal, is it necessary to file the statement setting out the grounds of appeal in an admissible non- EPO language for entitlement to the fee reduction referred to in Rule 6(3) EPC to be secured?

(4) If the answer to question (3) is yes and the consequent requirement has not been met within the time limit laid down in Article 108 EPC, is it appropriate to regard 20 per cent of the appeal fee as a "small amount lacking" within the meaning of Article 9(1) of the Rules relating to Fees? Furthermore, is the appeal admissible if the amount outstanding is paid after expiry of the time limit for payment laid down in Article 108 EPC?

II. In the case at issue, the appellant (opponent), a company constituted under Dutch law, had filed an appeal in the form of a letter drawn up in Dutch accompanied by a translation into English, at the same paying a reduced appeal fee and invoking Article 14(4) and Rule 6(3) EPC and Article 12 Rules relating to Fees.

III. Subsequently, but within the period under Article 108, final sentence, EPC, the appellant filed a statement of the grounds of appeal drafted in English only.

IV. Board of Appeal 3.4.1 took the view that the EPC was not clear regarding the chronological order in which the original document submitted in a Contracting State official language which was not an EPO official language (hereafter "admissible non-EPO language") and its translation into an EPO official language had to be filed for the appellant to be considered as having availed himself of the options provided in Article 14(2) and (4) EPC within the meaning of Rule 6(3) EPC. The Board felt that although decision J 4/88 (OJ EPO 1989, 483) had accepted that filing an original item and its translation simultaneously entitled a party to the fee reduction under Rule 6(3) EPC, it had not really considered the legitimacy of the reduction in such circumstances. Referring Board 3.4.1 posed its first two questions to the Enlarged Board because there thus seemed to be no established case law on this point.

V. It referred its third question because it felt that although, as far as filing and opposition were concerned, the case law - i.e. J 4/88 referred to above and T 290/90 of 9 October 1990 (OJ EPO 1992, 368) had established that to secure entitlement to the fee reduction it was necessary that the substantive element of either procedural act be filed in an admissible non-EPO language, it was not clear whether this also applied to appeals, where Article 108 EPC laid down two distinct time limits, one for filing the notice of appeal, a second for the statement of grounds.

VI. Board 3.4.1 posed its fourth - subsidiary - question on the basis that if the Enlarged Board were to rule that entitlement to the fee reduction presupposed that the statement of grounds be filed in an admissible non-EPO language it would then have to interpret Article 9(1) RFees to decide whether the amount deliberately unpaid could be considered a "small amount lacking" which the Office could ignore.

VII. Believing it worthwhile hearing the President of the EPO on the matter of document languages and fee problems, the Enlarged Board invited him to comment on the questions referred by Board 3.4.1.

VIII. The parties were also invited to present their observations.

IX. By letter received at the EPO on 17 September 1991, the appellant argued that the purpose of the fee reduction under Rule 6(3) EPC was to compensate at least in part for the disadvantages to persons referred to in Article 14(2) EPC of having to file items required for EPO proceedings in a language other than their own - disadvantages which still applied even if the drafter knew one of the EPO official languages well enough to write directly in it.

X. Citing various instances of case law to the effect that given its purpose Rule 6(3) EPC should not be interpreted in a restrictive manner, the appellant maintained that the fee reduction was justified wherever a party showed his intention of availing himself of it by filing the initial procedural act - which might be short enough for him to be able to file a translation simultaneously -in an admissible non-EPO language.

XI. This interpretation was in line with EPO practice, which for the reduction in the examination fee required merely that the request for examination be filed in an admissible non-EPO language and translated.

XII. The appellant acknowledged that the case law (J 7/80, OJ EPO 1981, 137 and T 290/90 already mentioned) also held that for a party under Article 14(2) EPC to be considered to have availed himself of the options under Article 14(2) and (4) EPC and thus enjoy the fee reduction under Rule 6(3) EPC, he had to have submitted the filing's essential elements - i.e. the description and claims, and the grounds for opposition, respectively - in the admissible non-EPO language. However, in both these two cases the various items involved (description, claims, request, etc., or notice of opposition, grounds for opposition) were subject to one and the same time limit; their filing constituted a single procedural act. Things were different with an appeal, where filing the notice of appeal and the statement setting out the grounds of appeal (hereafter "statement of appeal") were two distinct procedural acts, with different time limits and legal consequences.

XIII. The appellant therefore saw no need for the Enlarged Board to rule on the fourth question referred to it. Should the Board disagree, however, he felt that the principle of good faith and the unclear legal situation required that it be answered in the affirmative.

XIV. The comments of the President of the EPO may be summarised as follows:

The "travaux préparatoires" to the EPC showed that the intention in drafting Article 14 and Rule 6 had been to prevent or at least mitigate the discriminatory consequences arising for nationals of Member States with non-EPC official languages from the decision to limit the EPC languages to three. Given this objective, the relevant EPC provisions were not to be interpreted restrictively, and EPO policy and practice had been formulated accordingly.

The EPO had thus always allowed the fee reduction, whatever the chronological order in which the original document and its translation arrived. However, the fee reduction under Rule 6(3) EPC was justified only if the party concerned had to bear translation costs. Here T 290/90 (cited by the referring board) had ruled that to secure entitlement to the fee reduction under Rule 6(3) EPC the opponent had to file the grounds for opposition - as the essential element of the opposition which required translation - in the admissible non-EPO language. With appeals, therefore, for the fee reduction to be granted the statement of appeal - likewise the essential element requiring translation, which is the justification for the fee reduction - should have to be filed in an admissible non-EPO language and translated. The argument that the EPO allowed the examination fee reduction where the request for examination was formulated simultaneously in an admissible non-EPO language and an EPO official language was not tenable.

That request was a declaration sufficient in itself, whereas an appeal was not complete and receivable until the statement of appeal was filed, given the different time limits for filing the notice and statement of appeal. These were designed to give appellants time to prepare the statement of appeal, but were not sufficient reason for different conditions to apply to the fee reduction in appeal as compared with opposition proceedings. Lastly, regarding the application of Article 9(1) RFees, the President of the EPO pointed out that this provision was only intended to prevent loss of rights where an error of some kind led to slight underpayment of an amount due. It was not intended to provide a remedy where an applicant, patentee, opponent or appellant deliberately paid a reduced fee to which he was not entitled.

XV. The respondent in T 367/90 submitted no comments.

Reasons for the Decision

Questions 1 and 2

1. The first thing is to examine the provisions of Article 14 and Rule 6 EPC.

2. Article 14(2) EPC provides that natural or legal persons having their residence or principal place of business within the territory of a Contracting State having a language other than English, French or German as an official language, and nationals of that State who are resident abroad, may file patent applications in an official language of that State. Similarly, under Article 14(4) EPC "The persons referred to in paragraph 2 may also file documents which have to be submitted within a time limit in an official language of the Contracting State concerned".

3. However, when such parties avail themselves of paragraphs 2 and 4 of Article 14 EPC they have to supply a translation in English, French or German within the time limit prescribed in the Implementing Regulations, failing which the application is deemed withdrawn (Article 90(3) EPC) or the original document is deemed not to have been received (Article 14(5) EPC) - as T 193/87 of 13 June 1991 (Alfa Laval AB/Otto Tuchenhagen GmbH & Co KG and Appendage Fabriek Hoogoven BV) confirms.

4. The time limit in question is laid down in Rule 6(1) EPC for the filing of patent applications and in Rule 6(2) EPC for that of all other items. In the former case, it is three months as from the date of filing the patent application (but no more than 13 months as from the date of any priority claimed), one month as from the date of filing a divisional application and one month as from the date of filing of a new patent application by the person other than the applicant who has been adjudged by a final decision to be entitled to the grant of a European patent. For all other items, the time limit is one month as from the date of filing. If however the document in question is a notice of opposition or an appeal, it is extended where appropriate to the end of the opposition or appeal period (Rule 6(2) EPC).

5. Lastly, paragraph 3 of Rule 6 EPC provides that: "A reduction in the filing fee, examination fee, opposition fee or appeal fee shall be allowed an applicant, proprietor or opponent, as the case may be, who avails himself of the options provided in Article 14, paragraphs 2 and 4 ...".

6. Article 14(4) EPC indicates that there is no particular time limit for filing these documents in an admissible non-EPO language. They must therefore be filed within the same time limits as documents drafted in an EPO official language, unless use is made of the options under Article 14(4) EPC.

7. The possible interpretation considered by Board 3.4.1 (cf. Reasons, point 4, of its decision) - namely that a party who files the original and its translation at the same time is not availing himself of the options under Article 14(4) EPC - could in its view be justified by the fact that the main aim of Article 14(4) and Rule 6(2) EPC is to enable him to file the item in question in an admissible non-EPO language before the time limit expires. If he files the translation simultaneously he clearly has no need of the time limit under Article 14(4) as laid down in Rule 6(2) EPC and should therefore not be regarded as availing himself of the options provided in Article 14(4) within the meaning of Rule 6(3) EPC.

8. The Enlarged Board of Appeal cannot follow this interpretation, which is contrary to both the letter and spirit of the relevant provisions of the Convention.

9. As indicated in point 4 above, under Rule 6(1) and (2) EPC the time limit for filing the translation begins to run as from filing of the patent application or original document - which quite clearly also covers a translation filed simultaneously. True, Rule 83(2) EPC (Calculation of time limits) says that "Computation shall start on the day following the day on which the relevant event occurred". However, this provision clearly only concerns the time limit's computation, not its starting point (which is the "relevant event" itself). This interpretation is moreover in line with Board of Appeal case law on simultaneous filing of a patent application in an admissible non-EPO language and its translation into an EPO official language (cf. J 4/88, OJ EPO 1989, 483, cited by the referring board), and with EPO practice as officially confirmed in respect of the request for examination by its forms for that request and for entry into the national phase (cited by the appellant in his comments).

10. Nor can the Enlarged Board follow Board 3.4.1's suggestion that where the translation is filed at the same time as the original the EPO could take it as the "official" notice of appeal and ignore the original as superfluous. A translation cannot become the original; whatever the date on which it is filed it remains a translation, with all ensuing legal consequences, including the possibility of correction to bring it into conformity with the original. For the documents comprising the European patent application, this possibility is expressly provided for in Article 14(2) EPC; for items filed later it results from application of Rule 88 EPC.

11. Lastly, and as is clear from the "travaux préparatoires" to the Convention cited by the President of the EPO (cf. point XIV above), Article 14(2) and (4) and Rule 6(1) and (2) EPC were drafted to compensate at least in part for the disadvantages to nationals of Contracting States with non-EPO official languages of having to provide translations into an EPO official language. The main aim of Article 14 and Rule 6 EPC is thus to enable such parties to benefit from all EPC time limits for filing applications and subsequent items, and to allow them at least one month for translation purposes. The possibility of correcting any translation errors is also guaranteed.

12. The translation must however be filed as such, with no possibility of its being confused with the original, or taking its place. Since a translation is only recognisable as such if the original is available when it is received, translations reaching the EPO before the original cannot in the Enlarged Board's view be considered validly filed within the meaning of Article 14(2) and (4) and Rule 6(1) and (2) EPC. Parties wishing to avail themselves of these provisions must file the "translation" no earlier than simultaneously with the original. Otherwise the document first filed must be considered the original, with the ensuing legal consequences - notably as regards the fee amounts payable.

The Enlarged Board thus cannot endorse the President of the EPO's view that parties under Article 14(2) could be allowed fee reductions under Rule 6(3) EPC even if the translation were filed before the original. It believes the Guidelines for Examination in the European Patent Office (Part A, Chapter XI, 9.2.1, paragraph 3) interpret Article 14 and Rule 6 correctly in saying that "... if the European patent application or document subject to a time limit is first filed in the language of the proceedings and subsequently in the admissible non-EPO language, this does not constitute use of the non-EPO language within the meaning of Article 14. No reduction ... of fees is then allowed".

13. Filing, examination, opposition and appeal proceedings do however require the furnishing of numerous documents at various times, and it is therefore necessary to define those items for which use of the options provided in Article 14(2) and (4) EPC secures entitlement to the fee reduction under Rule 6(3) EPC.

14. A literal interpretation of Rule 6(3) could lead to requiring for fee-reduction purposes that every single item submitted during the proceedings in question be filed in an admissible non- EPO language and translated. Only at the end of the proceedings could parties then be reimbursed the amount of the reduction.

15. The Enlarged Board of Appeal considers that this literal interpretation must be ruled out as contrary to the spirit of Rule 6(3) EPC and leading to unacceptable results.

16. Formally, Rule 6(3) EPC provides for reduction of fees (Gebührenermäßigung, réduction des taxes), and not - as in Articles 10, 10a and 10b RFees, for example - a reimbursement, where the original fee is payable in full and then reimbursed wholly or in part if certain conditions are met. The fee reduction under Rule 6(3) EPC is directly linked to the procedural act to be performed (filing of a patent application, the request for examination, notice of opposition or an appeal). It is thus a right arising with the procedural act to be performed. The beneficiary therefore needs only pay the reduced fee, and events subsequent to the procedural act have no effect on the validity of the payment made.

17. On the question of what constitutes the act giving rise to entitlement to the fee reduction, as emphasised in the case law it would be contrary to Rule 6(3) EPC's aim of equity to interpret that provision in a restrictive manner.

18. Accordingly, the case law cited by the referring Board has ruled that for the applicant, patentee or opponent to benefit from Rule 6(3) EPC it suffices if the essential elements of the items comprising the patent application (cf. J 7/80 and J 4/88, already cited) or notice of opposition (cf. T 290/90, already cited) are filed in an admissible non-EPO language.

19. Furthermore, EPO practice on the request for examination, for example, is to allow the examination fee reduction provided the request is formulated in an admissible non-EPO language; the applicant can file subsequent items solely in an EPO official language without forfeiting the reduction.

20. Under this case law and practice, to secure entitlement to the fee reductions it thus suffices that the essential element of the first act of the proceedings in question be filed in an admissible non-EPO language.

21. The Enlarged Board of Appeal believes that this interpretation of Rule 6(3) EPC is correct. The basis for entitlement to the fee reduction under the rule is performance of a particular procedural act - the filing of a patent application, request for examination, notice of opposition or an appeal. And nothing in the EPC envisages or allows partial fee reimbursement where a document is subsequently produced in an admissible non- EPO language and translated. The Enlarged Board therefore observes that both J 4/88 (OJ EPO 1989, 483) - whereby to enjoy the examination fee reduction it suffices that the applicant has availed himself of the possibilities provided in Article 14(2) EPC in filing his patent application, even if his request for examination was not filed in an admissible non-EPO language - and the Guidelines for Examination in the European Patent Office (Part A, Chapter XI, 9.2.3.1 and 9.2.5.1) - which state that a reduction in the filing fee automatically gives rise to a reduction in the examination and appeal fees - have misinterpreted Rule 6(3) EPC. In the Enlarged Board's view, the fee reduction should in fact only be granted where the applicant or appellant has availed himself of the options provided in Article 14(2) and (4) for the procedural act in question, namely the request for examination or the appeal. This is confirmed by the fact that title to the patent application for example may in the meantime have been transferred to another party who does not necessarily fulfil the conditions of Article 14(2) EPC. The Guidelines do not envisage this possibility, but clearly the same considerations apply by analogy where patentee or opponent appeals against an Opposition Division decision.

22. Consequently, the Enlarged Board of Appeal finds that the persons referred to in Article 14(2) EPC are entitled to the fee reduction under Rule 6(3) EPC if they file the essential item of the first act in filing, examination or appeal proceedings in an official language of the State concerned other than English, French or German, and supply the necessary translation no earlier than simultaneously.

Question 3

23. The application to appeals proceedings of the principles set out above leads to the following conclusions.

24. Article 108 EPC provides for two distinct time limits, one for filing the notice of appeal, the other for submitting the statement of grounds. To secure entitlement to the appeal fee reduction it would therefore seem to suffice that the notice of appeal be filed in an admissible non-EPO language; the subsequent statement of appeal is a separate procedural act and thus performable in an EPO official language without loss of entitlement to the reduction. Entitlement is secured the moment the appellant submits notice of appeal - although the appeal is not deemed to have been filed until the appeal fee has been paid.

25. The Enlarged Board has carefully considered the comments of the President of the Office, who on this point reaches a different conclusion. The President bases his opinion partly on T 290/90 (q.v.) ruling that the statement of grounds of opposition - as the essential element of the opposition documents whose translation caused expense - had to be filed in the admissible non-EPO language for the opponent to enjoy a reduction in the opposition fee. He also argues that the statement of appeal corresponded in substance to the statement of grounds of opposition and was thus the essential element of the appeal justifying the fee reduction because of the translation necessary. He therefore concludes that Rule 6(3) EPC should apply only if the statement of appeal is furnished in an admissible non-EPO language and translated.

The President takes the view that the different time limits for filing the notice and grounds of appeal - to give the appellant time to prepare his case - are not sufficient reason for different conditions to apply for the reduction in the opposition fee as compared with the appeal fee. And although, in examination, Office practice only required the formal request to be produced in the admissible non-EPO language, this was a formal act sufficient in itself, whereas an appeal was not complete until the statement of grounds was filed.

26. The Enlarged Board of Appeal is unable to endorse this interpretation. Formally, the notice of appeal - like the request for examination - is an autonomous procedural act with its own legal consequences: combined with payment of the appeal fee, it means the appeal has been filed and referred to a board of appeal. These consequences are distinct from those of filing the statement of appeal, which is a condition for the appeal's receivability. Given that Rule 6(3) EPC quite clearly links the fee reduction to the act specifically mentioned - i.e. in the present case that which constitutes the filing of the appeal - and bearing in mind the system's object and purpose, it is this interpretation which must prevail.

27. Nor can the Enlarged Board follow the substantive argument that the statement of grounds of appeal is the only item whose translation justifies allowing a fee reduction. For as indicated above, in whichever language the statement is filed, having to produce it or its translation in an EPO official language means parties incur the cost of translating, reworking or drafting it in a language other than their own, and the intention of the authors of the Convention was to compensate them at least in part for this.

28. In these circumstances, the Enlarged Board of Appeal considers that the provisions of Rule 6(3) EPC should be interpreted in the same way for an appeal as for the filing of the request for examination. It therefore rules that to secure entitlement to the fee reduction under Rule 6(3) EPC it suffices that the notice of appeal be filed in an admissible non-EPO language.

Question 4

29. Given the above ruling on the third question referred by Board of Appeal 3.4.1, the Enlarged Board sees no need to address its fourth - subsidiary - question.

ORDER

For these reasons it is decided that: The points of law referred to the Enlarged Board of Appeal are answered as follows:

Questions 1 and 2

The persons referred to in Article 14(2) EPC are entitled to the fee reduction under Rule 6(3) EPC if they file the essential item of the first act in filing, examination or appeal proceedings in an official language of the State concerned other than English, French or German, and supply the necessary translation no earlier than simultaneously.

Question 3

The essential item of the first act in appeal proceedings is the notice of appeal, so to secure entitlement to the reduction in the appeal fee it suffices that said document be filed in a Contracting State official language which is not an official language of the European Patent Office and translated into one of the latter languages, even if subsequent items such as the statement of grounds of appeal are filed only in an EPO official language.