Pages 573-576

INFORMATION FROM THE EPO

LEGAL ADVICE FROM THE EUROPEAN PATENT OFFICE No.6/91 rev.

Article 133 EPC

Article 134(7) EPC

Article 7(1) RFees

Article 8(3) RFees

Revised version of Legal Advice No.6/80 (OJ EPO 1980, 303) on the basis of the new version of Rule 101 EPC which entered into force on 1 October 1991 (OJ EPO 1991, 421).

Payment of fees

Refunds of fees or other sums

1. Fees may be validly paid to the European Patent Office by any person.

2. Refunds of fees or other sums are made to the party or to a representative authorised to receive payments.

Payment of Fees

1. The Rules relating to Fees (RFees) do not specify who is to make fee payments. The European Patent Convention describes persons who are required to take certain procedural steps as parties (see in particular Article 113 et seq. EPC), unless they have a special status in the proceedings (e.g. applicant, opponent, appellant). The Rules relating to Fees, on the other hand, use a general term - "the person making the payment (Articles 7, 8 and 9 RFees). In other words, in the context of the authorisation provided for in Article 33(2)(d) and Article 51 EPC, they are based on the assumption that the payment of fees is not an integral part of the procedure in respect of which the fee is paid and in which procedural steps can be taken only by the party or a professional representative acting on his behalf (Article 133(1) to (3), Article 134(1) and (7), EPC).

In line with corresponding provisions in the Contracting States, parties can arrange for fees to be paid by any person and can pay fees themselves, regardless of their place of residence or principal place of business, i.e. fees can be validly paid to the European Patent Office by any person.1

2. Payments which have been effected outside a Contracting State are not accorded the same preferential treatment, in the event of a delay in transmission, as payments effected in a Contracting State. Whereas provision is made in the Rules relating to Fees to ensure that payments effected sufficiently in advance in a Contracting State will under certain circumstances be considered to have been made in due time even if, as a result of a delay in transmission, they are received after the period for payment has expired, no such favourable treatment is laid down in the case of payments made outside the Contracting States. Under Article 8(3) RFees, the period for payment is also considered to have been observed in the case of a late payment if evidence is provided to the EPO that the person who made the payment

(a) fulfilled one of the following conditions in a Contracting State within the period for payment:

(i) he effected the payment through a banking establishment or a post office;

(ii) he duly gave an order to a banking establishment or a post office to transfer the amount of the payment;

(iii) he despatched at a post office a letter bearing the address of the Office and containing a cheque within the meaning of Article 5(1)(d) RFees, provided that the cheque is met, and

(b) paid a surcharge of 10% on the relevant fee or fees, but not exceeding DEM 3002; no surcharge is payable if a condition according to sub-paragraph (a) has been fulfilled not later than ten days before the expiry of the period for payment.

The above is not applicable to payments made outside the Contracting States.

3. When making payments it is important to observe Article 7(1) RFees, which lays down that every payment must indicate the name of the person making the payment and must contain the necessary particulars to enable the EPO to establish immediately the purpose of the payment. The "Guidance for the payment of fees, costs and prices" published regularly in the Official Journal should also be complied with.

4. The fact that a fee is paid by a third party does not make that person a party to the proceedings to which the payment relates. Provided that the procedure to which the fee relates can be identified, any correspondence relating to the payment will therefore be conducted with the party concerned or with his representative and not with the person who made the payment.

Refunds of fees or other sums

5. Any refunds of fees or other sums will be made in accordance with the following procedure to the party or to a representative authorised to receive payments:

5.1 If the representative is a professional representative who, under Rule 101(1) EPC in conjunction with Article 1 of the Decision of the President of the EPO dated 19 July 1991 on the filing of authorisations (OJ EPO 1991, 489), is henceforward required to file an authorisation in certain circumstances only, subject to point 5.3 the arrangements are as follows:

(a) If the professional representative has cited a general authorisation already on file, the refund \viil be made on the basis of the particulars concerning the right to receive payments contained in the general authorisation.

(b) If the professional representative has neither cited a general authorisation already on file nor filed an individual authorisation, the EPO will assume that the party has authorised the professional representative to receive payments.

(c) If the professIonal representative has filed an individual authorisation, since under Article 1(1) of the above-mentioned Decision of the President of the EPO such individual authorisations are not checked, the EPO will assume that the party has authorised the professional representative to receive payments.

Where (b) and (c) apply it is incumbent upon the representative to forward any refunded fees or other sums to the party.

5.2 If the representative is a legal practitioner entitled under Article 134(7) EPC to act as a professional representative, the refund will be made to him if he is authorised to receive payments.

5.3 If a professional representative or a legal practitioner entitled to act as a professional representative - to whom refunds would normally be made in accordance with points 5.1 or 5.2 - requests in a separate document that the refund be made to the party, that request will be allowed.

6. It is not incumbent upon the EPO to ascertain whether there are legal grounds, arising out of the relations between the party or his representative and the person who made the payment, for making the refund direct to the latter.

Consequently, a refund will be made direct to the person who made the payment only if the purpose of the payment cannot immediately be established and the person who made the payment fails, on request, to notify the Office of that purpose in due time. Since the proceeding to which it relates cannot be identified, the fee will be considered not to have been paid (Article 7(2) RFees).