T 0367/90 (Fee reduction) of 2.7.1991

Summary of Facts and Submissions

I. N.V. Philips' Gloeilampenfabrieken validly filed notice of opposition to European patent No. 146 093 granted to Asulab S.A. By decision dated 26 February 1990, the Opposition Division rejected the opposition and maintained the patent unamended.

II. On 27 April 1990 the opponents filed two notices of appeal - one in English, the other in Dutch - and paid an appeal fee minus the reduction under Article 14(4) and Rule 6(3) EPC and Article 12(1) of the Rules relating to Fees (RFees). The statement setting out the grounds for appeal, drawn up in English, was received on 2 July 1990. .p. The respondent filed no observations within the specified period.

Reasons for the Decision

1. Under Article 112(1)(a) EPC, if an important point of law arises or to ensure uniform application of the law the Board of Appeal is empowered during the proceedings and of its own motion to refer the matter to the Enlarged Board of Appeal for decision.

2. Under Article 110 and Rule 65 EPC, the Board must decide whether the present appeal is admissible, and notably whether, in the particular circumstances of this case, the appellant is entitled to pay a reduced appeal fee. If not, the appeal would appear inadmissible, unless the Board could regard twenty per cent of the appeal fee as a "small amount lacking" within the meaning of Article 9(1), last sentence, RFees and which the Office could overlook without prejudice to the rights of the appellant.

3. In the Board's opinion, it is not clear how Article 14(2) and (4) in conjunction with Rule 6(3) EPC should be interpreted when the facts are as in the present case.

The appellant is a legal person with its principal place of business in the Netherlands - a Contracting State with an official language other than English, French or German, namely Dutch (Article 14(2), first sentence, EPC). Under Article 14(4), first sentence, EPC such persons may file documents subject to time limits in an official language of the Contracting State concerned - i.e. other than English, French or German. If the person is an opponent, under Article 14(4), second sentence, EPC he must then file a translation of the document in one of the three EPO official languages within the time limit prescribed in Rule 6(2) EPC. In the present case, this expired one month after filing of the appeal drawn up in Dutch, the appeal period having ended in the meanwhile.

The main aim of Article 14(4) EPC seems to be to enable the persons referred to in Article 14(2) EPC to file documents subject to time limits (including appeals) first of all in their own language and then, if they are acting as opponents, in an EPO official language.

Article 14 EPC says nothing about the amount of the fees to be paid in connection with filing documents of the type referred to in Article 14(4) EPC, but Article 51 EPC provides that "the Rules relating to Fees shall determine in particular the amounts of the fees and the ways in which they are to be paid".

In view of this, it is at first sight surprising to find provision for reducing certain fees made in Rule 6(3) EPC - the rule is otherwise concerned with time limits - rather than in the Rules relating to Fees.

As regards the facts of the present case, Rule 6(3) EPC provides that a "reduction in the ... appeal fee shall be allowed an ... opponent ... who avails himself of the options provided in Article 14(4) EPC". The Board feels that the object of this provision is not absolutely clear. It would be quite understandable for the EPC to include a clause compensating the persons referred to in Article 14(2) EPC for the cost of translations into an EPO official language. But this is not in fact what Rule 6(3) EPC provides for; it merely links the fee reductions to use of the "options provided in Article 14(4) EPC".

4. In the present case, the first question to be examined is whether, given that the appellant filed one notice of appeal in English and another in Dutch on the same day, he in fact "availed himself of the options provided in Article 14(4) EPC". Clearly he had no need of the extension available under Article 14(4) EPC and Rule 6(2) EPC and which appears (as already mentioned) the main aim of Article 14(4) EPC.

In the Board's opinion, requesting a fee reduction for an appeal filed in both Dutch and English on the same day could be regarded as an abuse of the relevant EPC provisions. Given that the appeal was filed in English within the two-month period under Article 108 EPC, the Board considered taking the English version as the "official" notice of appeal, and ignoring the Dutch version as superfluous. To do so however would draw an artificial distinction between two parties both possessing, say, Dutch and English versions before the deadline, one of whom however filed both versions on the same day whereas the other, in order to obtain the fee reduction, deliberately filed first the Dutch text, followed next day by the English one.

This approach could also be regarded as at odds with the spirit of Rule 6(2), second sentence, EPC which envisages that the translation into an EPO official language be filed within the normal period.

If the Board now accepts that filing Dutch and English versions on the same day, as here, entitles a party to claim a fee reduction (even if he does not need an extension under Article 14(4) EPC), this raises the question whether entitlement would also extend to a party filing first an English version followed, within the specified period, by a Dutch one.

In decision J 4/88 (OJ EPO 1989, 483) concerning payment of a reduced fee in connection with the filing of an application, the description and claims were filed in English and Italian on the same day. Without really going into the legitimacy of a fee reduction in such circumstances, the Board concerned ruled that filing the two versions on the same day did not mean the applicant forfeited his entitlement to it.

To ensure uniform application of the law, and that parties referred to in Article 14(2) EPC know exactly what they have to do to obtain a fee reduction, the Board would like the Enlarged Board of Appeal to rule on the correct interpretation of Article 14(2) and (4) in conjunction with Rule 6(3) EPC, and on the possible need to amend that rule.

5. Assuming that filing an appeal in Dutch and English on the same day does not deprive the appellant of entitlement to a reduced appeal fee, a second question arises: whether he should retain this entitlement, bearing in mind that the statement of grounds was filed only in English.

Here, Board of Appeal case law on Article 14(2) and (4) and Rule 6(3) EPC applies. In J 4/88 already mentioned, the Legal Board of Appeal took the view that for entitlement to a fee reduction under Article 14(4) EPC it was sufficient that the substantive parts of the application - the description and the claims - had been filed in Italian.

Following this principle, in the decision contested in T 290/90 (OJ EPO 1992, 368) the formalities officer in opposition proceedings had argued that "The purpose of Article 14 and Rule 6 EPC is to provide a compensation for the nationals of those Contracting States which have accepted to renounce their official language being one of the official languages of the EPO. If this non-official authorised language is not used, then the benefit of the reduction of the fee cannot be granted. The right to the reduction is attached to the fact that said language is used and not only to the nationality or principal place of business of the requesting person. In principle therefore, to be granted the benefit of the reduction of the opposition fee under Rule 6(3) EPC, the notice of opposition should be entirely written in a non-official authorised language".

After citing decisions J 7/80 (OJ EPO 1981, 137) and J 4/88, he went on to say that the part of a notice of opposition governed by Rule 55(c) EPC "should always be filed in a non-official authorised language". In other words - and this time in connection with a notice of opposition - it was once again felt to be the substantive part of the document which had to be filed in the non-official language - e.g. Italian or Dutch - for entitlement to the fee reduction to be secured.

In its decision, the Board of Appeal endorsed the formalities officer's view that the request for a reduction in the opposition fee could not be allowed.

6. By analogy with J 4/88 and T 290/90 and following the same principle, it would seem in the present case that to be entitled to a reduction in the appeal fee the appellant would have had to file the statement of grounds in Dutch rather than English. However, the problem then is that under Article 108 EPC the period for filing the statement of grounds expires two months after the period for filing notice of appeal and paying the relevant fee. Under these circumstances, formalities examination of the statement of grounds might only take place two months or more after expiry of the period for paying the appeal fee. In the present case, the appellants paid a reduced appeal fee, believing that they did not have to file a statement of grounds in Dutch to be entitled to the reduction. Should the Board not agree, the appeal would seemingly be inadmissible - unless, as in decision T 290/90, it took the view that the twenty per cent of the fee unpaid was a "small amount lacking" within the meaning of the last sentence of Article 9(1) RFees. This however would be at odds with the fact that the whole fee has to be paid if the statement of grounds - i.e. the substantive part of the appeal - is not filed in Dutch.

On this point, the Board noted that in previous decisions (e.g. J 11/85, OJ EPO 1986, 1) underpayment of about 10% had been considered a "small amount".

It also noted that J 11/85 had found it might in some cases be appropriate to disregard "small amounts" within the meaning of Article 9(1) RFees in order to reach a fair decision.

Lastly, the Board noted that under Article 9(1) RFees as worded it did not seem possible to require payment of the amount lacking - twenty per cent in this case - once the period in question had expired.

7. It emerges from point 6 above that one rather surprising consequence of the relevant case law is that to secure entitlement to a fee reduction a party such as the appellant might actually have a statement of grounds drafted in English translated into Dutch, thereby incurring additional costs.

To ensure fair and uniform application of the law, the Board would therefore like the Enlarged Board of Appeal to rule on the particular conditions which have to apply for the appeal fee to be reduced.

ORDER

For these reasons it is decided that:

Under Article 112(1)(a) EPC, the following questions are referred to the Enlarged Board of Appeal:

(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?