J 0008/84 (Claims fees - Austria) of 28.5.1985

Summary of facts and submissions

I. European patent application No. 83 105 946.4 (Publication No. 0 101 807) was filed on 17 June 1983. It contains two separate sets of 15 claims, the second being intended for Austria. Payment was made of the fees generally applicable and, in addition, of five claims fees of DM 60 totalling DM 300. In a communication dated 18 July 1983 the Receiving Section required the applicants to pay five further claims fees within a period of two months to cover the set of claims intended for Austria. The applicants paid these fees, which again totalled DM 300, on 12 August 1983 at the same time asking that they be refunded because there was no justification for charging additional claims fees in that particular case. The sets of claims, they pointed out, were a legal requirement because Austria had opted to make a reservation under Article 167(2) EPC (see OJ (EPO) 6-7/1979, p. 289).

II. The EPO Receiving Section issued a decision dated 30 December 1983 rejecting the application for refund of fees paid in respect of claims for Austria mainly on the following grounds: If Rule 31(1) EPC were to be applied literally in the applicants' case 20 claims fees would in fact be chargeable on a total of 2 x 15 = 30 claims. However, EPO practice already allows for the fact that a separate set of claims is legally required by considering each set of claims separately. No fees were therefore charged for the first 10 claims of either the first or second set. It was stressed that this was standard practice in all cases where a separate set of claims was allowable, hence also where separate sets of claims are needed because the content of an earlier European patent application forms part of the state of the art (Rule 87 EPC) or because prior national rights exist (cf. Legal Advice from the EPO 9/81, OJ (EPO) 3/1981, p. 68). There were no legal reasons for disregarding any claims going beyond the first ten, even in a second set of claims. Rule 31 merely referred to the total number of claims regardless of why they were drawn up. Nor was the applicants' contention that the additional claims did not involve any extra work a valid one; the argument was in part irrelevant and otherwise focused on the Office's justification for charging a fee in those particular circumstances. Since, however, the legislators had not made any exceptional provision for such a case the EPO continued to be bound by Rule 31 EPC.

III. The applicants appealed agains this decision on 1 March 1984 on the following main grounds: Rule 31 EPC related to separate sets of claims required because of the particular legal situation created by the EPC and either applied always or not at all. It was illogical for the Receiving Section not to charge fees for the first ten claims of a separate set of claims but then to feel bound by the wording of Rule 31 EPC to charge fees for any further claims. Rule 31 EPC did not apply at all in the present case and an interpretation of this rule in the light of its intention and purpose would tend to make it applicable only to any "extra" claims applicants might draw up, not to those drafted in parallel with existing claims.

IV. The applicant requested that the disputed decision be set aside and that an order be made for reimbursement of claims fees in the amount of DM 300 and of the appeal fee.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. It raises the question of how Rule 31 EPC on claims incurring fees should be applied in the case of an application accompanied by a second set of claims because a designated Contracting State has made a reservation under Article 167(2)(a) EPC. The legal basis for the EPO's allowing such separate sets of claims is an analogous application of Rule 87 (Legal Advice from EPO No. 9/81, OJ (EPO) 3/1981, p. 68). The answer to the question raised therefore depends on how Rule 31 is to be applied in a situation covered by Rule 87 EPC, thus when separate sets of claims are filed for certain Contracting States because in their case an earlier European patent application has to be considered under Article 54(3) and (4) EPC.

3. The wording of Rule 31 EPC makes no distinction as to the kind of claims incurring fees or the reasons why they are drawn up. However, the normal case under the EPC is a single set of claims filed for all Contracting States designated in the European application, even when several applicants designate different Contracting States for one and the same application (see Articles 59 and 118 EPC).

4. The only exception to the general rule that a European patent application may only have one set of claims valid for all Contracting States that is expressly provided for in the Convention is that of Rule 87 which is a legal necessity. In order to obtain protection at all for the Contracting States concerned the applicant has to modify claims which for other States he may formulate without regard to the earlier European patent application since in their case it does not apply. The exception therefore concerns changes made to the content of claims for legal reasons and not claims over and above a certain number (see Rule 31(1), first sentence EPC German text). Therefore despite the failure of its wording to differentiate as to the type of claims involved, Rule 31 does not have to be understood as applying to any type of claim but on the contrary, as applying only in the normal case of a single set of claims for all designated Contracting States.

5. Moreover, the whole context of Rule 31 points to its being intended to apply only for the normal case. Article 84, second sentence, EPC requires that claims be concise. Rule 29(5) stipulates that the number of claims shall be reasonable in consideration of the nature of the invention claimed and is followed by Rule 31 which states that all claims from the eleventh onwards shall incur fees. Although the travaux préparatoires relating to the European Patent Convention give no express indication that Rule 31 is to apply only to normal cases, it is deductible from the context that the claims fees charged are principally conceived as a means of ensuring that applicants observe Rule 29(5). It is also possible that there is some intention of compensating the Office for the extra work involved in dealing with additional claims.

6. The connected provisions of Article 84, second sentence, Rule 29(5) and Rule 31 EPC have no bearing on the case to which Rule 87 EPC relates. Where under Article 54(3) and (4) EPC an earlier European patent application has to be taken into account for certain Contracting States an applicant must file a separate set of claims unless he is prepared to waive protection in those States. Here the Convention itself calls for and permits an exception to the rule that claims must be identical for all Contracting States. All this has nothing to do with the requirement of Article 84, second sentence, that claims be concise, or with the limitations on the number of claims imposed by Rule 29(5) EPC.

7. Furthermore, the very wording of Rule 31 EPC shows that it refers to the normal case of a single set of claims for all Contracting States and not to the exceptional case of Rule 87, Rule 31(1) concerns the European patent application as filed. Paragraph 2 is an addition allowing for a possible increase in the number of claims up to the moment of grant. Rule 87 EPC, on the other hand, assumes ("If the European Patent Office notes...") that separate claims are required under Article 54(3) and (4) only as examination progresses and thus confirms what is said in Rules 31 and 87 EPC, namely that Rule 31 only applies for the normal case of a single set of claims for all Contracting States.

8. The travaux préparatoires relating to the Convention similarly show Rules 31 and 87 EPC to be unconnected. Rule 31 was based on the provision of "Re Article 70, No.1 - Number of claims" in the "Preliminary draft implementing regulations for a European Patent Convention" (4419/IV/63 of 20 January 1964). This preliminary draft of 1962/64 provided for only one set of claims identical for all countries and leading to a single uniform patent. At a later stage of the preparatory work for the EPC the rule as to the number of claims was taken over and elaborated while, quite independently, because of the possibility of designating individual States differing from one application to another, the provision of Article 54(4) and as a necessary consequence Rule 87 EPC came into being.

9. The foregoing reasoning leads to the conclusion that Rule 31 EPC should not be applied separately to two or even more sets of claims where these are legally required by Article 54(3) and (4) EPC. Consequently, when such a situation arises Rule 31 should be applied only to the the set of claims with the greater number of claims.

10. The same holds good where a separate set of claims is filed because a designated Contracting State has made a reservation under Article 167(2)(a) EPC. The possibility has already been accepted of filing separate claims in such a case on the analogy of Article 54(3) and (4) in conjunction with Rule 87 EPC (Legal Advice from the EPO No. 9/81 in OJ (EPO) 3/1981, p. 68). Common to both cases is the fact that the Convention makes it legally necessary to modify the claims formulated for the other Contracting States for one given State. The fact that in the former case the separate set of claims is usually filed at the same time as the application itself (see Legal Advice from the EPO No. 4/80, OJ (EPO) 1/1980, p. 48) does not in any way change this view as here the legal situation is known in advance, whereas in the case of Article 54(3) and (4) EPC the situation generally only crystallises in the course of the examining procedure.

11. The EPO's application of Rule 31 EPCin practice to date (see Information in OJ 6-7/1979, p. 289 and p. 292) has largely been concurred with and as far as the Board of Appeal is aware has also been accepted by those applicants affected. The Board, at all events, has no knowledge of any appeals by applicants against such an interpretation of the legal position so that any possibility of claiming back the fees concerned has passed. However the effect of the new interpretation by the Board of Appeal for the appellants, who only paid fees under protest and appealed, is that these fees which according to the present decision were illegaly charged must be repaid.

12. The application for refund of the appeal fee cannot be acceded to because the substantial procedural violation which Rule 67 EPC makes a prerequisite for such a refund has not been committed. The fact that earlier in its existence, namely in 1979, the EPO understood and applied Rule 31 in a manner different from that in which it is now interpreted by the Board of Appeal does not constitute a procedural violation.

ORDER

For these reasons, it is decided that:

1. The decision of the Receiving Section of the European Patent Office of 30 December 1983 is set aside.

2. Claims fees in the amount of DM 300 are to be reimbursed.

3. The request for reimbursement of the appeal fee is refused.