T 0371/92 (Appeal not filed) of 2.12.1993

Summary of Facts and Submissions

I. European patent application No. 86 870 088.1 was filed on 19 June 1986. On the last page of EPO Form 1001.1 to 1001.9 08.81 for the request for grant of a European patent, under Part XIX ("Additional information"), the applicants requested that oral proceedings be held in the event that the examining division were to consider refusing the application. By a decision dated 8 November 1991 the examining division of the European Patent Office refused the application in accordance with the provisions of Article 97(1) EPC without first holding oral proceedings.

In the notification mentioning means of redress the applicants were advised that an appeal had to be submitted in writing to the European Patent Office within two months of the date of notification of the decision, had to be supported by a written statement of grounds within four months of the same date and was subject to the payment of an appeal fee. The text of Articles 106 to 108 EPC concerning appeals was enclosed with the notification.

II. On 8 January 1992 the applicants paid the appeal fee using Form 1010 ("Payment of fees and costs"), on which the number of the patent application was mentioned and the payment was described as a fee for appeal.

III. On 9 March 1992 the European Patent Office ordered the reimbursement of the appeal fee since it had not received a written notice of appeal.

IV. The statement of grounds for the appeal was filed on 11 March 1992.

V. By fax dated 28 April 1992, received on 30 April 1992, the applicants refused to accept the reimbursement of the appeal fee and paid the fee again, contending that in their opinion the notice of appeal had been filed in writing within two months in accordance with the provisions of Article 108 EPC. For, in fact, a duly signed document, bearing the number of the application and the name and address of the applicants and indicating their intention to file an appeal, had reached the European Patent Office in due time, with the appeal fee being validly paid on the same day.

The applicants applied for a decision in accordance with Rule 69(2) EPC and, in support of their case, cited decision T 7/81 (OJ EPO 1983, 98). As further backup for their claims the applicants referred to another case in which the form for payment of the fee for further processing had by way of exception been considered implicitly as a declaration in accordance with Article 86(1) EPC and a request for further processing in accordance with Article 121 EPC.

VI. By the same letter the applicants filed an auxiliary request for re-establishment of their rights in accordance with Article 122 EPC. They paid the fee for re-establishment of rights and filed an explicit appeal requesting that the decision dated 8 November 1991 to refuse their European patent application No. 86 870 088.1 be set aside in its entirety. In support of their request they cited the following grounds:

The form for the payment of fees and costs had been signed by Mr Eric de K., a chemical engineer, who was at the time responsible for formalities and had thirty months' full-time experience in the applicants' patent division. There was no trace in the applicants' files of a notice of appeal in the form of a letter separate from the form. A letter of this type should normally have been drawn up by Mr de K. and passed to Miss de D., the secretary entrusted only since 19 December 1991 with this duty, who should then have had it signed by Mr de K., who had a general power of signature authorised by Mr L., the professional representative. None of these persons remembers either having carried out or having failed to carry out any of the aforementioned acts. However, each was convinced that the appeal had been validly filed, and the applicants were therefore surprised to receive the communication reimbursing the appeal fee on 16 March 1992. It was only on that date that they became aware of a possible violation of the procedure before the European Patent Office.

VII. In the course of the written proceedings and in the oral proceedings held on 2 December 1993 the applicants added the following arguments to their case:

(i) Since the examining division had not honoured their request for oral proceedings, its decision was void ab initio and without legal effect and therefore could not be the subject of an appeal; in this connection reference was made to T 766/90 (Special edition of the OJ EPO 1993, 65).

(ii) Referring to EPO Form 3322 06.89, by which the registrar of the board of appeal had informed them of the reference number of the "appeal file" and the board of appeal responsible and whose text commences "The appeal filed with your letter of ...", the applicants contended that it seemed obvious to them that a favourable decision had been taken on the existence of an appeal under Rule 69(2) EPC, particularly since they had been advised that the appeal filed had been referred to a board of appeal.

(iii) Decision J 19/90 of 30 April 1992, mentioned by the board of appeal in its communication of 7 September 1992, postdated the events of the present proceedings and had taken five pages of reasons to reach its conclusion, which was ample evidence that it was not so obvious. This was one argument in support of the re-establishment of rights. The case was also to be judged with regard to the scope of the expression "all due care required by the circumstances" in Article 122(1) EPC. For if it could be inferred from the circumstances that payment of the appeal fee accompanied by a form containing the necessary information could be sufficient, less care was required for putting in writing the request, whose deadline, moreover, had been met.

VIII. The applicants requested:

1. as their main request, that the board find that the decision to refuse their patent application was void ab initio and without legal effect and therefore could not be the subject of an appeal;

2. as a first auxiliary request, that the following point of law be referred to the Enlarged Board of Appeal:

"Should a decision issued without having honoured the injured party's request for oral proceedings be considered void ab initio and without legal effect? If it is without legal effect, can it nevertheless be the subject of an appeal?"

3. as a second auxiliary request, that the board find that the conditions laid down in Articles 106 to 108 and Rule 64 EPC had been met;

4. as a third auxiliary request, re-establishment of their rights in accordance with Article 122 EPC.

Reasons for the Decision

1. Main request

Referring to decision T 766/90, Special edition of the OJ EPO 1993, 65, the applicants argued that the decision of the first instance to refuse their patent application was void ab initio and without legal effect since the examining division had not honoured their request for oral proceedings prior to refusing the application and that such a decision could therefore not be the subject of an appeal.

1.1 The right to oral proceedings is governed by Article 116(1) EPC. According to board of appeal case law refusal to honour a request for such proceedings is deemed to be a substantial procedural violation, and it is true that some boards of appeal have declared void ab initio and without legal effect decisions taken without prior oral proceedings although these had been requested. However, in such cases, including the one resulting in decision T 766/90, the request for oral proceedings had, strictly speaking, always been made during the examination or opposition proceedings.

1.2 It should be asked whether an examiner, when reading an application, has also to look at the form for the request for grant of a European patent, seeing that he does not need it for examining the application. The examiner should be able to assume that applicants wanting oral proceedings will make a request to that effect during examination of the application and in particular upon receipt of the search report or in response to communications from the examining division. In any case, it is doubtful whether this omission could constitute a substantial procedural violation. Consequently, the solution adopted in the decision mentioned by the applicants does not apply here in that it refers to fundamentally different circumstances.

1.3 For all that, in the present case the board of appeal is not obliged to rule on the question whether the decision of the first instance has been adversely affected by a substantial procedural violation; indeed, even if this were the case, it would be essential for an appeal to be allowable for the board to be able to confirm it.

1.4 The applicants' allegation that the decision of the first instance could not be the subject of an appeal because it was void and without legal effect is not supported by the Convention.

According to Article 106(1) EPC, an appeal lies from decisions of the examining divisions and those of other departments of the European Patent Office. The effect of an appeal is to pass the proceedings to another department, ie the board of appeal. An appeal under Article 106 ff. EPC is the sole legal means provided in the Convention for having a decision of the first instance set aside. Once the examining division has ruled on an application it is bound by its decision with the result that it is no longer authorised to amend it (see Enlarged Board of Appeal decisions G 4/91, OJ EPO 1993, 707, point 6; G 12/91, OJ EPO 1994, 285, point 2). This holds true even if the decision should be considered void. Until the decision is set aside, it exists with full effect. The principle that the same department is not authorised to amend its own decisions is apparent in the provisions of Article 109 EPC relating to interlocutory revision, which constitute an exception to this rule and which would be superfluous if the rule did not exist.

1.5 Article 109 EPC provides that the first instance whose decision is contested must, in ex parte proceedings, allow an appeal if it considers it to be admissible and well founded. This is the only case where it is provided that the same instance may set aside its own decision. The logical corollary is that where there is no appeal the first instance is bound by its decision even if it considers it void.

1.6 The main request therefore cannot be allowed.

2. First auxiliary request

2.1 Article 112(1) EPC provides that if an important point of law arises the board of appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer the question to the Enlarged Board of Appeal if it considers that a decision is required in order to ensure uniform application of the law.

2.2 The first question, ie whether a decision issued without having honoured a request for oral proceedings should be considered void ab initio and without legal effect, is not purely a question of law since, in order to answer it, account should also be taken of the circumstances of the case in point and therefore of when such a request was submitted. However, even if the Enlarged Board of Appeal were to answer the question in the affirmative its answer would have no effect unless the second question, concerning whether a decision without legal effect could nevertheless be the subject of an appeal, were answered in the negative.

2.3 As the board of appeal has already explained above, this question is resolved by the Convention itself, and in both the aforementioned decisions the Enlarged Board of Appeal held that once a department had taken a decision it was no longer authorised to amend it. It follows that a decision of the first instance can be set aside only by means of an allowable appeal.

2.4 The board therefore feels that it is not necessary to refer this question to the Enlarged Board of Appeal.

3. Second auxiliary request

The applicants maintain that they filed an allowable appeal.

3.1 Article 108 EPC provides that an appeal must be filed in writing within two months of the date of notification of the decision appealed from, that it is not deemed to have been filed until after the fee for appeal has been paid and that a statement of grounds of appeal must be submitted within four months of the date of notification of the decision.

Rule 64 EPC provides that the notice of appeal must contain:

(a) the name and address of the appellant in accordance with the provisions of Rule 26(2)(c);

(b) a statement identifying the decision that is impugned and the extent to which amendment or cancellation of the decision is requested.

3.2 In the present case, the applicants do not deny never having written a notice of appeal satisfying these provisions. Nor, however, is it disputed that the appeal fee and the statement of grounds were received in good time. The problem remains therefore whether the fee payment form can take the place of the missing written document, bearing in mind that it mentions the appeal, is dated and duly signed and bears the number of the patent application for identification purposes.

3.3 In this respect, in one decision - T 275/86 of 3 October 1990 (not published) - Board of Appeal 3.3.1 held that a completed debit order as per EPO Form 4212 05.80 contained essentially the same information as required in a notice of appeal under Rule 64 EPC, ie the name and address of the appellants, the patent number enabling the impugned decision to be identified and a mention that the item covered by the order was an appeal fee. On this basis, the board held that the payment form in itself constituted an allowable appeal.

3.4 In Legal Board of Appeal decision J 19/90 of 30 April 1992, it was stated, in contrast to the aforementioned decision, that the payment of an appeal fee did not in itself constitute the valid filing of an appeal.

The grounds for that decision are equally valid for the present case and the board of appeal has adopted them.

3.5 For a notice of appeal to be valid it must at least contain an explicit declaration of the wish to contest a particular decision by means of an appeal. Not until such notice has been formally filed can legal proceedings be instituted, the case be referred to the second instance and the appeal acquire suspensive effect in accordance with Article 106(1) EPC.

3.6 Payment of the appeal fee at most implies that the applicants intend to file an appeal but does not in itself constitute the notice of appeal required to institute appeal proceedings. When they pay the appeal fee, and even thereafter, the applicants remain free to decide whether or not they wish to lodge an appeal. If they change their mind and drop the matter, the appeal, being non-existent, is not deemed to be withdrawn, but the fee is reimbursed because no appeal has been filed.

It should not be forgotten either that it is dangerous to try to remedy an omission by interpreting provisions that are clear and unambiguous, as is the case for the requirements for instituting valid appeal proceedings, as this only leads to uncertainty regarding the law. Thus, if it were accepted, contra legem, that the payment of the appeal fee by means of Form 1010 was in itself equivalent to the valid filing of an appeal, there would inevitably be illogical repercussions. For if someone who had already paid the appeal fee decided later not to file his appeal, he would be sure to experience difficulties in obtaining reimbursement of the fee.

The requirement for a notice of appeal to be filed in writing clearly refers to the terms of Articles 106(1) and 108 and to Rule 64 EPC. Payment of the appeal fee is an additional requirement which cannot take the place of the notice of appeal, even if the payment is made by duly completing the payment form.

3.7 The applicants are wrong to refer to decision T 7/81, whose conclusions are not applicable to the present case. For in that case the notice of appeal had been filed in writing and only the extent of the appeal had not been stated. In the present case, by contrast, the board of appeal has no scope to interpret the extent of the appeal since it is the appeal itself that is missing.

3.8 Finally, regarding the reference made by the applicants to the request for further processing provided for in Article 121 EPC, no conclusions can be drawn from this either in support of the present case simply because in a different type of proceedings before the European Patent Office the payment form had been deemed to be a valid request for further processing.

For, in fact, such a request is not comparable to the notice of appeal and its particularities as described above. The sole aim of the request under Article 121 EPC is to ensure further processing before the same instance; it has no further effect. The preceding decision caused by failure to reply within the time limit set by the Office is not set aside - only its effects can be.

3.9 Thus the form indicating the purpose of a payment does not in itself constitute a notice of appeal. The appeal is therefore deemed not to have been filed.

4. Decision under Rule 69(2) EPC

The applicants are also wrong in thinking that the form from the registrar containing information on the number of the file and the board of appeal responsible for deciding the case constitutes a decision issued under Rule 69(2) EPC recognising implicitly but necessarily the existence of an appeal.

Rule 69 EPC refers to the loss of any right occurring without a decision having been taken to refuse the application. It therefore does not apply to the present case, particularly since the examining division did take a decision to refuse the application.

The fact that the aforementioned form does not represent a decision implying the existence of an appeal is clear from the very content of the information it conveys, its presentation - which is not that of a decision - and the fact that the form is clearly signed by a registrar.

5. Third auxiliary request

This request concerns the re-establishment of the right to file an appeal.

5.1 According to Article 122(1) EPC, applicants for a European patent who, in spite of all due care required by the circumstances having been taken, have been unable to observe a time limit vis-à-vis the European Patent Office may, upon application, have their rights re-established.

Article 122(2) EPC provides that the application must be filed in writing within two months of the removal of the cause of non-compliance with the time limit and that the omitted act must be completed within this period.

Article 122(3) EPC provides that the application must state the grounds on which it is based and set out the facts on which it relies, and that the fee for re-establishment of rights must be paid.

5.2 The date on which the cause of non-compliance was removed was 16 March 1992, the date on which the applicants say they received a communication from the European Patent Office dated 9 March 1992 concerning the reimbursement of the appeal fee on the grounds that no appeal had been filed.

The statement of grounds for the application for re-establishment of rights was received on 30 April 1992 and the appropriate fee was paid on the same day. Since the formal conditions of Article 122(2) and (3) have thus been fulfilled, all that remains to be seen is whether the basic conditions of Article 122(1) EPC have also been met.

5.3 The fact that an appeal was not filed does not constitute a mistake of law due to ignorance of the need for a written notice of appeal, which would exclude the later re-establishment of lost rights (see decisions J 19/90, point 3.2; D 6/82, OJ EPO 1983, 337).

Although in their main argument the applicants claimed that the form for the "Payment of fees and costs" constituted the notice of appeal they did admit, following a secondary argument, that in addition to submitting the payment form they did usually file a written notice of appeal in accordance with the provisions of Article 108 EPC. Thus, the failure to file a notice of appeal was the result purely of an omission and not of a mistake of law.

5.4 Nevertheless, the applicants are unable to prove that the time limit for filing an appeal had not been observed even though they had taken "all due care required by the circumstances".

The applicants explained their system of handling incoming mail as follows: procedural matters were dealt with by Mr de K. and substantive matters by Mr L.. In the present case, the notice of appeal should have been written by Mr de K. and approved by Mr L., the professional representative. During the oral proceedings Mr L. maintained that both he and Mr de K. thought the other would attend to the matter. In the board's view, this shows that the division of responsibilities was not always strictly observed, otherwise Mr de K. could not have thought that Mr L. would file the notice of appeal himself.

Moreover, the applicants gave no indication of how they ensured that all prescribed time limits were observed. In the present case, the period of two months was observed only for the act of payment and not for the filing of an appeal.

Nor did the applicants give any indication of how Mr L., the professional representative, supervised his staff. It was merely stated that the notice of appeal drawn up by Mr de K. had to pass through Mr L.'s hands. Such supervision extends therefore only to work submitted for approval. However, it is also important that staff be supervised to ensure that they carry out the necessary acts within the prescribed time limits. The explanations given for the failure to file the appeal are not such as to satisfy the board that the applicants had adopted a proper system for ensuring that all time limits were observed and that, in the present case, the failure was nothing but an isolated procedural mistake within a normally satisfactory system (decisions J 2/86 and J 3/86, OJ EPO 1987, 362, point 4).

5.5 Nor can the applicants claim that prior to decision J 19/90 the circumstances implied that the payment of the appeal fee by means of Form 1010 was sufficient. For Article 108, first sentence, EPC clearly states that the notice of appeal must be filed in writing; it is only in the second sentence of that article that the appeal fee is mentioned. In other words, the essence of the appeal lies in the explicit notice of appeal and not in the payment of the fee. Only the failure to pay the aforementioned fee within the prescribed period implies that the appeal is deemed not to be filed. The applicants cannot therefore infer from the Convention that the express filing of the notice of appeal is less important than the payment of the appropriate fee, which is only of secondary importance.

Nor is the length of decision J 19/90 any argument against the univocality of the provisions of Articles 106 and 108 and Rule 64 EPC, since it depends above all on the submissions put forward by the party involved and the individual style of each board of appeal.

5.6 For these reasons the applicants cannot have their rights restored in respect of their failure to observe the time limit prescribed for the filing of an appeal. Consequently, as there is no appeal, the matter will not come before the second instance.

6. Since there is no notice of appeal, the relevant fee paid is groundless and must therefore be reimbursed.

ORDER

For these reasons it is decided that:

1. The main request and the auxiliary requests are refused.

2. Reimbursement of the appeal fee is ordered.