J 0016/84 (Unclear payment of fees) of 6.8.1985

Summary of Facts and Submissions

I. On 20 October 1983 the appellants, two natural persons, had filed, through their representative, European patent application No. 83 110 450.0, claiming priority from a national patent application filed in Italy on 3 November 1982.

II. On 2 November 1983 two other natural persons filed, through the same representative, European patent application No. 83 110 904.6, claiming priority from a national patent application filed in the Federal Republic of Germany on 4 November 1982. Under the same cover the representative sent a cheque for DM 4 530, using EPO Form 1010, in payment of a filing fee of DM 520, a search fee of DM 1 670 and nine designation fees amounting to DM 2 340. The form indicated the names of the appellants instead of the purpose of the payment and No. 24040A/82 as the number of the patent application. Number 24040A/82 is the number of the prior Italian filing of the appellants' subsequent European application No. 83 110 450.0.

III. The pre-printed receipt for the patent application filed on 2 November 1983 was returned to the representative the same day, but the employee amended it by hand under B "Accompanying documents", putting a cross in the "Cheque" box and adding "DM 4 530".

IV. The DM 4 530 paid by cheque was booked for application No. 83110904.6 with the comment that the fees for Claims 11 to 18 had not been paid.

V. On receiving the amended receipt the representative let it be known that designation of the Federal Republic of Germany was not required for application No. 83 110 904.6 and remitted for this application a further sum of DM 220 calculated as follows: filing fee DM 520 plus search fee DM 1 670 plus eight designation fees DM 2 080 plus claims fees DM 480, total DM 4 750 less DM 4 530 already paid= DM 220.

VI. The Receiving Section pointed out in connection with application No. 83 110 904.6 that dispensing with a designation did not entitle the applicant to reimbursement of the designation fee already paid, so that the DM 260 paid for designation of the Federal Republic of Germany could not be put toward the claims fees. The representative thereupon paid the outstanding DM 260.

VII. In a letter dated 21 December 1983 it was pointed out to the representative that the filing fee, the search fee and all the designation fees for application No. 83 110 450.0 had not been paid in time, but could still be paid within two months together with a surcharge of DM 1 035, failing which the application would be deemed to be withdrawn. In reply the representative drew attention to the fact that the sum of DM 4 530 paid by cheque on 2 November 1983 had been intended for application No. 83 110 450.0. Although the file number of the prior Italian application had inadvertently been given, the applicant's names clearly related the cheque to application No. 83 110 450.0. On 4 January 1984 the representative paid DM 4 530 and the surcharge of DM 1 035 for application No. 83 110 450.0 and on 16 January 1984 requested reimbursement of the surcharge.

VIII. This request was refused by the Receiving Section in a decision taken on 28 May 1984. In justification it was said there would have been no difficulty in establishing that, when the time limits for payment without a surcharge expired for the two applications, payment had been made for only one of them. The incorrect allocation of the cheque when application No. 83 110 904.6 was filed did not justify reimbursement. The representative had caused the mistake himself by submitting together with a new application payment for another one. In any event, he ought to have noticed on receiving the receipt for application No. 83 110 904.6 that a cheque payment of DM 4 530 had been confirmed for this application although no payment had in fact been made for it. The resulting check would have clarified the matter.

IX. The appellants' representatives appealed against the decision of 28 May 1984 in a letter dated 19 June 1984 and received on 22 June 1984. The appeal fee was duly paid. The appellants argued that they were unable to follow the reasoning whereby the representative had himself caused the confusion by submitting the cheque at the same time as the new application (No. 83 110 904.6). The fact that the wrong file number had been given for the prior Italian application did not entitle the European Patent Office to use the cheque for application No. 83 110 904.6 filed at the same time. The remaining information on EPO Form 1010 would have allowed the payment to be allocated to application No. 83 110 450.0 without any difficulty. At the very least, however, the European Patent Office ought to have consulted the representative when doubts arose. The cross entered in the "Cheque" box on the receipt for the second application (No. 83 110 904.6) had not prompted an investigation because the secretary concerned, who had her hands full with other work, had no reason to question the Office's confirmation of a payment of DM 4530 -particularly as she no longer remembered arranging for the payment, although she had not forgotten the actual amount. At all events, she had no reason on receiving the receipt for application No. 83 110 904.6 to think of application No. 83 110 450.0, which had been filed two weeks earlier and had long ago been put back in the file because the application procedure had been completed. The request for reimbursement of the appeal fee was justified because it was entirely the European Patent Office's fault that the surcharge had had to be paid at all.

Reasons for the Decision

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

2. The appellants' wish to have the surcharge of DM 1035 reimbursed is justified if the surcharge did not in fact become due. Under Rule 85a EPC, the filing fee, the search fee or a designation fee, if not paid within the specified time limits, may still be validly paid within a period of grace of two months after expiry of these time limits, provided that within this period a surcharge is paid. In the present case involving application No. 83 110 450.0 no surcharge was required because the filing, search and designation fees had been paid in due time. Under Article 78(2) EPC these fees had to be paid within one month after filing -in other words by 20 November 1983, the application having been filed on 20 October 1983. The appellants paid the correctly calculated fees amounting to DM 4 530 within this period, on 2 November 1983, by sending a cheque for the sum in question.

3. The Board cannot go along with the Receiving Section's view that the filing, search and designation fees for application No. 83 110 450.0 were not paid in due time and that a surcharge was therefore required under Rule 85a EPC. The appellants' representative sent a cheque for DM 4 530 on 2 November 1983 using EPO Form 1010. Enough information was given on this form to enable the amount paid to be correctly allocated to application No. 83 110 450.0. Admittedly, the number given on the form was not the application's filing number, i.e. No 83 110 450.0, but the number of the prior Italian application, No. 24040A/82, a type of number not used for European patent applications. The EPO as receipient therefore had to rely on the other information in the form in order to allocate the amount of the cheque. However, the form did show the applicant's names and address. This information ought to have enabled the EPO to establish the purpose of the cheque without difficulty, since the persons making the payment are individual applicants who differ from big firms in not filing a large number of applications.

4. But even on the view that the amount of the cheque could not have been allocated with absolute certainty, at the time when the form was received, on the basis of the information contained in it, the fees for application No. 83 110 450.0 would still have been paid in due time. In such cases, i.e. if the purpose of the payment cannot immediately be established, the EPO is obliged by Article 7(2) of the Rules relating to Fees to require the person making the payment to notify it in writing of this purpose within such period as it may specifiy. Only if the person making the payment does not comply with this request in due time is the payment considered under Article 7(2), second sentence, of the Rules relating to Fees not to have been made. No request based explicitly on Article 7(2), second sentence, of the Rules relating to Fees has so far been sent to the appellants' representatives. Nor is this now necessary since the representatives have made it clear beyond any doubt in their statement dated 28 December 1983 that the amount of DM 4530 paid by cheque on 2 November 1983 was intended for the fees for application No. 83 110 450.0. The appellants' representatives repeated that this was the purpose of the payment in a statement dated 16 January 1984 and in the grounds for their appeal. It is true that the purpose of the payment by cheque was not yet known for certain on 21 November 1983, when the one-month time limit for payment of the filing, search and designation fees without a surcharge expired; however, Article 7(2) of the Rules relating to Fees indicates that this is not prejudicial because the purpose of the payment can still be established within a period yet to be specified. In the present case that had already occurred before such a period was specified, which means that the fees for application No. 83 110 450.0 were paid in due time.

5. The question arises as to whether this conclusion is in any way affected by the fact that the cheque for DM 4 530 submitted on 2 November 1983 for application No. 83 110 450.0 was inadvertently allocated by the Receiving Section to application No. 83 110 904.6 filed at the same time as the cheque. The answer is negative because if the Office ever uses fees in a way which conflicts with the intention of the person making the payment this does not affect the purpose intended by the latter. The correctness of this view is borne out by the fact that whether or not a legal consequence arises would otherwise depend upon the commission of an error by the Office when allocating sums of money received by it.

6. It has thus been established that the filing, search and designation fees were paid within the periods specified in Articles 78(2) and 79(2) EPC. Consequently, the surcharge referred to in Rule 85a EPC did not become due and must be reimbursed.

7. The board takes the view that the appeal fee should be reimbursed in accordance with Rule 67 EPC because this is equitable by reason of a substantial procedural violation. The use of fees in a way which conflicts with the intention of the person making the payment, however easy it may seem to explain and excuse, is always a substantial procedural violation because it can have detrimental legal consequences for the person making the payment.

ORDER

For these reasons, it is decided that:

1. The decision of the Receiving Section of 28 May 1984 is set aside.

2. Reimbursement of the surcharge of DM 1 035 (Rule 85a) and of the appeal fee of DM 630 is ordered.