The European Patent Office's (EPO) Enlarged Board of Appeal issued a judgment on the G/14 referral on 19 November 2015. This case relates to the question of whether an appeal, which was filed and paid for after the deadline for filing an appeal passed, is considered to be inadmissible or deemed not filed.
The question may at first appear academic. However, the significance of the question is whether or not a refund of the appeal fee is available. If an appeal is deemed to be not filed, then there is no basis in law for the EPO to accept the appeal fee. In contrast, if the appeal is deemed to be inadmissible, then the appeal was filed, and so the appeal fee will not ordinarily be refunded.
The decision for European patent EP2122134 to be revoked was made on 25 April 2013.
The decision was handed over to delivery company UPS for delivery to the patentee's representative. According to the UPS tracking information, the decision was received on 26 April 2013. The representative signed the receipt (EPA Form 2936) on 07 May 2013, and this was returned by fax on 08 May 2013. Notice of appeal was subsequently filed (and the appeal fee was paid) on 08 July 2013.
Article 108 EPC gives a time period of two months from notification of the decision for filing the notice of appeal and paying the appeal fee. However, according to the patentee, Rule 126(1) EPC, which was in force at the time, was not compiled with:
"Decisions incurring a period for appeal or a petition for review, summonses and other such documents as determined by the President of the European Patent Office shall be notified by registered letter with advice of delivery. All other notifications by post shall be by registered letter".
According to the patentee, Rule 126(1) EPC was not complied with because the UPS tracking information did not constitute advice of delivery. In accordance with Rule 126(4) EPC, since Rule 126(1) EPC was not compiled with, national (German) law applied and so notification was considered to be 08 May 2013. The appeal was therefore filed (and appeal fee paid) within two months of notification, as required by Article 108 EPC.
The Board of Appeal disagreed and argued that UPS tracking information constitutes advice of delivery. Notification therefore occurred on 26 April 2013. Even taking Rule 126(2) EPC into account (the '10 day failsafe rule'), the appeal was made (and appeal fee was paid) outside the two month deadline required by Article 108 EPC. The Board of Appeal referred a question to the Enlarged Board of Appeal regarding whether this resulted in the appeal being deemed inadmissible or deemed not filed.
The referred question to the Enlarged Board of Appeal was deemed to be inadmissible.
In particular, the Enlarged Board of Appeal decided that Rule 126(1) EPC, as it currently stood, had not been compiled with because Rule 126(1) EPC required notification to take place 'by post" and UPS was not "the post".
Since the Board of Appeal's referral was based on a misapplication of the law, it was not admitted.
The judgment in G1/14 is likely to have little effect due to the changes to Rule 126(1) EPC, which took effect on 01 April 2015 as a result of notification in the EPO's Official Journal 2015, A36. Amended Rule 126(1) EPC now reads:
"Decisions incurring a period for appeal or a petition for review, summonses and other such documents as determined by the President of the European Patent Office shall be notified by registered letter with advice of delivery or equivalent. All other notifications by postal services shall be by registered letter".
According to OJ 2015, A36, these changes are intended to allow the Board of Appeal to use whichever postal service they deem to be appropriate rather than requiring use of "the post". By enabling equivalents of proof of delivery, this presumably allows the use of tracking information as used by, eg, UPS.
It therefore seems that Enlarged Board of Appeal would consider such a referral to be admissible if the same situation were to arise in the future. However, the underlying question regarding whether such an appeal is inadmissible or deemed not filed remains unanswered.
EPO G 0001/14 decision (German language) Vorlage an die Große Beschewerdekammer of 19 November 2015: http://dycip.com/g114nov15