11.12. Partial reimbursement (25%) under Rule 103(4) EPC

Under R. 103(4)(a) EPC, where a date for oral proceedings has been set, 25% of the appeal fee is reimbursed if the appeal is withdrawn later than one month after notification of a communication issued by the board in preparation for these oral proceedings but before the decision is announced at oral proceedings.

Under R. 103(4)(b) EPC, where no date for oral proceedings has been set, and the board has issued a communication inviting the appellant to file observations, 25% of the appeal fee is reimbursed if the appeal is withdrawn after expiry of the period set by the board for filing observations but before the decision is issued.

In T 1369/18 the patent proprietor had filed an appeal against the interlocutory decision of the opposition division, which had decided that, on the basis of the second auxiliary request, the patent in suit met the requirements of the EPC. After the board issued its preliminary opinion, the patent proprietor withdrew its main request (as filed with the statement of grounds of appeal) for maintenance of the patent as originally granted and requested as a new main request the maintenance of the patent in the amended form as allowed by the opposition division. The board considered that in doing so, the patent proprietor had, in effect, withdrawn its appeal before a decision was issued within the meaning of R. 103(4)(b) EPC.

Under R. 103(4)(c) EPC, 25% of the appeal fee is reimbursed if any request for oral proceedings is withdrawn within one month of notification of the communication issued by the board in preparation for the oral proceedings, and no oral proceedings take place.

In T 517/17 the appellant's indication that it would not attend the scheduled oral proceedings was taken as an implicit withdrawal of its request for oral proceedings for the purposes of R. 103(4)(c) EPC (see also T 202/18; see T 1888/18 for reimbursement following a request for a decision according to the state of the file). Another interpretation is that R. 103(4)(c) EPC applies only if the party explicitly withdraws its request for oral proceedings (T 73/17, T 191/17 and T 2698/17). See also chapter III.C.4.3.1 "General principle: withdrawal only by virtue of a clearly expressed intention not to proceed with the request" and III.C.4.3.2 "Announcing non-attendance".

In T 1282/16, in response to the communication issued by the board under Art. 15(1) RPBA 2020 in preparation for oral proceedings, the appellant had filed a new main request and stated that it was withdrawing its request for oral proceedings if that new main request could in principle be granted. The board considered the main request allowable and so the appellant's condition was met. This meant that the withdrawal of its request for oral proceedings had taken effect on the date of filing the main request, which was within one month of notification of the communication under Art. 15(1) RPBA 2000.

In T 777/15 the board held that the appellant not having requested oral proceedings could not benefit from another party's withdrawal of the request for oral proceedings. This was so because, for the appellant not having requested oral proceedings, the condition in R. 103(4)(c) EPC that "any request for oral proceedings is withdrawn within one month of notification of the communication issued by the Board of Appeal in preparation for the oral proceedings" was not fulfilled merely because another party had requested oral proceedings and withdrawn their request within the time specified in R. 103(4)(c) EPC (see also T 795/19). By contrast, in T 488/18 the board held that the appellant could obtain reimbursement despite never having requested oral proceedings, based on the respondent's withdrawal of its request for oral proceedings in the time prescribed by R. 103(4)(c) EPC. See also T 598/19.

In T 1610/15 the board held that the appellant's request for oral proceedings had been withdrawn in time. A respondent's belated withdrawal of its request had no adverse effect in this regard. The wording of R. 103(4)(c) EPC did not require that all requests for oral proceedings filed in a case had to be withdrawn within a month of notification of the communication issued by the board in preparation for those proceedings. For the first condition for partial reimbursement under R. 103(4)(c) EPC to be met, it was instead enough that one request for oral proceedings had been withdrawn in time.

In T 2249/18 the decision to hold oral proceedings had been made by the board rather than them being requested by the appellant. For the purposes of R. 103(4)(c) EPC, the board likened the situation in the case in hand to that where an appellant makes a request for oral proceedings. This was because conducting oral proceedings had become unnecessary due to an action by the appellant, in that it filed a request overcoming the objections raised by the board. Applying R. 103(4)(c) EPC by analogy, the board decided that 25% of the appeal fee was to be reimbursed.

In T 1678/17 the request for oral proceedings was not in fact withdrawn within one month of notification of the communication issued by the board of appeal in preparation for the oral proceedings. However, in view of the notice from the EPO dated 1 May 2020 concerning the disruptions due to the COVID-19 outbreak (OJ 2020, A60) and R. 134(2) and (4) EPC, the board held that the conditions for reimbursement of 25% of the appeal fee, stipulated in R. 103(4)(c) EPC, were fulfilled.