J 0014/12 12-12-2013

Summary of Facts and Submissions

I. European patent application No. 10185974.2 was filed on 1 October 2010 as a divisional application of European patent application No. 99968653.8. That earlier application had been filed on 2 September 1999. On filing the divisional application on EPO Form 1001E, no mode of payment was specified under point 42 "Payment" of that form. An "Internal fee calculation sheet", which is automatically generated by default by the online filing system using the data entered in EPO Form 1001E, was attached to the form in which the filing fee, the fee for a European search and the renewal fees for the 3rd to 10th years were listed by the applicant.

II. With a letter dated 20 October 2010, received by the European Patent Office (EPO) on 21 October 2010 (in the following: "letter of 20 October 2010") the applicant's representative requested that the fees which fell due for payment with the filing of the divisional application be debited, without indicating the purpose of the payment in greater detail. On the basis of this request the Receiving Section gave the instruction to debit the filing fee and the search fee.

III. No renewal fees for the 3rd to 12th years were paid by the applicant, or debited from the representative's account on the basis of his request of 20 October 2010, within four months after the filing date.

IV. After having been informed accordingly by the EPO, the applicant's representative, on 14 March 2011, paid the renewal fees for the 3rd to 12th years and the additional fees of 50% relating to all of those renewal fees. Together with these fees, the filing fee and the search fee were paid a second time; this second payment has since been refunded by the EPO.

V. With a letter dated 18 March 2011, the appellant requested, as a main request, that the additional fees for the 3rd to 12th years be refunded, and, as an auxiliary request, that the additional fees relating to the renewal fees for the 3rd to 10th years be refunded. It takes the view that the respective renewal fees for the 3rd to 12th years were paid in time. After having realized the omission in EPO form 1001E, the appellant, with its letter of 20 October 2010, had requested that the fees which fell due in relation to the filing of the divisional application be debited. This authorization constituted a timely payment of all fees listed on the "Internal fee calculation sheet" of the EPO, including the fees for the 3rd to 10th years. The same applied for the 11th to 12th years following decisions T 170/83, Reasons, pt. 6, and T 152/82, Reasons, pts. 8 and 9.

VI. With its decision of 2 March 2012, the Receiving Section rejected both the main and the auxiliary request as far as the refund of the additional fees relating to the renewal fees for the 3rd to 12th years or the 3rd to 10th years respectively was concerned. Pursuant to Rule 51(3) EPC renewal fees were payable to the EPO. They were due in respect of the third year and each subsequent year. In case of a divisional application where renewal fees for the parent application had already fallen due, these renewal fees had also to be paid for the divisional application calculated from the date of filing of the parent application. The period for payment was four months from the filing of the divisional application. If not paid in due time, the fees might still be validly paid within six months of the date the divisional application was filed provided that at the same time the additional fee of 50% of the late-paid renewal fees was paid (Art. 2(1) No. 5 RFees).The instruction to debit the filing fee and the search fee on the basis of the applicant's request of 20 October 2010 was made erroneously. As in the representative's request on EPO form 1001E no mode of payment was specified and no deposit number was indicated, a clear, unambiguous and unconditional debit order within the time-limit of four months would have been necessary. The letter dated 20 October 2010 could not qualify as such an order, as it did not contain the necessary details. The "Internal fee calculation sheet", which was part of online form 1001E and gave an overview of the fees due to be paid, was automatically generated by the EPO system for the convenience of the applicant and was not uploaded into the EPO's electronic file. Consequently, no valid debit order was on file during the four-month time-limit from filing of the divisional application, and the payment made on 14 March 2011 (renewal fees for the 3rd to 12th years and additional fees) was in the correct amount and therefore, the additional fee could not be refunded.

VII. The applicant filed a notice of appeal on 23 April 2012 and requested that the impugned decision be set aside, and, as a main request, that the additional fees paid for the 3rd to 12th annuities be refunded, or, as an auxiliary request, that those additional fees paid for the 3rd to 10th annuities be refunded. The appeal fee was received on the same day.

VIII. In its grounds of appeal filed on 29 June 2012 the appellant argued that when filing the divisional application on 1 October 2010 via the EPO's filing software it had indicated the filing fee, the search fee and the renewal fees for the 3rd to 10th years by submitting the "Internal fee calculation sheet" (a copy of which was attached to the grounds of appeal as ANNEX A). It inadvertently had omitted to indicate the deposit account number from which the above-mentioned fees should be debited. After having noticed this omission, the applicant, on 20 October 2010, sent a letter to the EPO, in which it was stated clearly and unambiguously:

"It is kindly asked to debit the fees which fell due for payment with the filing of the above-mentioned divisional application from deposit account No. 28000610".

Consequently, a payment via a deposit account debit order had to be considered to have been timely made, and following decision T 170/83, Reasons, pt. 6, this applied to the fees for the 11th and 12th years, irrespective of whether the fees for the 11th and 12th years were listed in the "Internal fee calculation sheet". The applicant had at least every reason to assume that all necessary information was given to the EPO in order to debit all due fees, as the filing fee and the search fee could correctly be debited and no request for communication of the purpose of the payment according to the Guidelines for Examination in the EPO, Part A, Chapter XI-7.1.2 was sent to the applicant. This view was in line with decision T 152/82, in which it was held that a debit order had to be carried out notwithstanding incorrect information given in it if the intention of the person giving the order was clear. Such was the case here. The payment of 14 March 2011 of the fees including the additional fee was only a precautionary measure. If the Board could not accept the aforegoing arguments, at least the auxiliary request should be granted because the applicant's submission of 20 October 2010 had to be read in combination with the "Internal fee calculation sheet" submitted with the application which contained an express indication of the fees for the 3rd to 10th years. It could not play any role that the "Internal fee calculation sheet" was not uploaded into the EPO's electronic file. In any event the EPO had to be taken as having knowledge of its own procedures; additionally the "Internal fee calculation sheet" was part of the documents accompanying the application. Further, reimbursement of the appeal fee was requested because the Receiving Section's failure to carry out the applicant's debit order constituted a substantial procedural violation. Finally the appellant requested oral proceedings "for the event that neither the Main Request nor the Auxiliary Request should not be granted".