Changes in the EPC rules on the reimbursement of the appeal fee will come into effect on 1 April 2014. These changes, combined with the relaxation of the rules regarding the filing of divisional applications, will mean more flexibility for applicants using the appeals process.
Under the current rules, the fee is only reimbursed where the appeal is withdrawn before filing the statement of grounds of appeal, and before the period for filing the statement has expired. As the statement of grounds must be filed within four months of the notification of the decision to be appealed, applicants have only a small window of time in which to recover the fee.
Under the new rules, 50 per cent of the fee can be reimbursed if the appeal is withdrawn:
- if a date for oral proceedings has been set, at least four weeks before that date;
- if no date for oral proceedings has been set, and the Board of Appeal has issued a communication inviting the appellant to file observations, before expiry of the period set by the Board for filing observations;
- in all other cases, before the decision is issued.
Oral proceedings can be set up to several years after the appeal has been filed, so appellants will have a much longer period in which to recover some of the fee. The new rules will apply to appeals pending on 1 April 2014 and those filed after this date.
New rules regarding the filing of divisional applications will also enter into force on 1 April 2014, abolishing the 24 month deadline (from the first relevant examination report) so that divisionals can be filed based on any pending application. If an application is refused, and an appeal is not filed, the refusal is considered suspended, allowing divisionals to be filed up to the expiry of the two month period for filing the appeal. If an appeal is filed, this keeps the suspension going for the duration of the appeal, and therefore extends the period available for filing divisionals.
Until 1 April, filing an appeal in order to buy more time in which to file a divisional has often not been an option, as the 24 month deadline has passed. With the new rules, applicants may increasingly use this option, and the fact that reimbursement of half of the appeal fee is available for potentially a long time after filing the appeal might make it even more attractive. Applicants are also more likely to file a precautionary divisional application just before an appeal decision issues, in order to preserve rights in the case of a negative final decision. However, that “continuation” divisional would be refused unless the deficiencies that had been fatal to the parent on appeal were to be overcome, perhaps by amendment.
An alternative strategy for “continuing” applications would be to file a precautionary divisional just before the date on which the parent is at risk of refusal, usually the date of oral proceedings on examination. Either way, the payment of the official fees on the divisional can be deferred for up to a month, by which time the fate of the parent should be known.
Another factor is the increase in the appeal fee from 1 April 2014 – it will increase by 50 per cent from EUR1240 to EUR1860, which may deter some applicants from using the appeals process.