G1/18: When is an appeal not filed?

This series of articles considers referrals pending before the Enlarged Board of Appeal of the European Patent Office (EPO). Whilst the outcome of these referrals may be some months or years away, the opinions issued by the Enlarged Board of Appeal may fundamentally change the way the law is interpreted. In this article, we look at referral G1/18.

The Enlarged Board of Appeal of the European Patent Office (EPO) has made a decision on the referral G1/18, relating to procedure followed when appeals are filed, or paid for, after the deadline for doing so has passed.

This is a technical, rather niche, point of law, but does impact whether the appealing party receives a refund of fees or not. Here we discuss the decision made by the Enlarged Board and its consequences for practicing before the EPO.

The referral was made by the then President of the EPO, and comprised a single question:

If notice of appeal is filed and/or the appeal fee is paid after expiry of the two-month time limit under Article 108 EPC, is the appeal inadmissible or is it deemed not to have been filed, and must the appeal fee be reimbursed?

Whilst the referral is just a single question, there are in fact three scenarios which are explicitly dealt with in the referral. These are:

  1. The notice of appeal is filed and the appeal fee paid late;
  2. The notice of appeal is filed late but the appeal fee is paid on time; and
  3. The notice of appeal is filed on time but the appeal fee is paid late.

The decision of the Board deals with each of these scenarios separately, and then addresses another scenario, not mentioned in the referral, which is:

  1. The appeal fee is paid on time and the notice of appeal is not filed at all.

G1/18 Decision

In the decision, the Enlarged Board dealt with each of the above scenarios, and issued guidance on the procedure to be followed as a result.

The Enlarged Board ruled that in all four scenarios the appeal is deemed not to have been filed. This means the appeal fee will be reimbursed in each case.

Additionally, the Enlarged Board stated that its decision applies analogously to other proceedings at the EPO, such as those for opposition under Article 99 EPC. As such, it appears that late payment of a fee and or late submission of a notice when initiating proceedings before the EPO will always result in reimbursement of the relevant fee.  

This decision is in line with the prevailing consensus of the amicus curiae briefs filed by notable patent practitioners at the EPO before the Enlarged Board decided the case.

In practice, this provides some consolation to parties who fail to pay the appeal fee or file their notice of appeal in the required period, as they fill receive a refund of the fee. However, this is likely to be of little significance given that the appeal is deemed not to be filed.

The full decision can be read here.

If you have any questions regarding this decision, please get in touch to speak to one of our attorneys.


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