G 1/18 - An Appealing Decision?

G 1/18 - Inadmissible appeal or deemed not filed?

The President of the European Patent Office (EPO) asked a question of the Enlarged Board of Appeal (EBA) as to whether an appeal that was filed after the deadline should be considered as being (i) not filed or (ii) inadmissible. They have now replied in decision G 1/18. The short answer is that such appeals are considered to be “not filed” and therefore in such cases the appeal fee will be reimbursed.

G 1/18 - An Appealing Decision?

A copy of the decision (in French) can be read here and a copy of the EPO press release can be read here .

Turning to the decision in a bit more detail, The President of the EPO referred the following question to the Enlarged Board of Appeal:

"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?"

Thus the question was to decide on the consequence of failure to file a notice of appeal and/or the appeal fee within the two-month time limit following issue of the decision to be appealed - is the appeal inadmissible or is it as if it had never been filed? If the appeal has never been filed then there is no legal basis for the EPO retaining the appeal fee and so it must be reimbursed. However if the appeal is duly filed but inadmissible then the appeal fee need not be reimbursed.

This same point of law was referred to the EBA in cases G 1/14 and G 2/14. However: in G 1/14, the referral to the EBA was deemed inadmissible because the underlying decision of the Opposition Division had not been properly notified (see OJ EPO 2016. A95); and in G 2/14 the referral became moot because non-payment of a renewal fee meant the underlying application was deemed to be withdrawn (see OJ EPO 2016, A13).

The Enlarged Board has decided that the consequence of failing to meet the two‑month time limit (Article 108 EPC) is that the appeal is deemed not to have been filed, and not that it is to be rejected as inadmissible. Therefore, in such cases the appeal fee will be reimbursed.

Specifically, the enlarged board have decided that:

1. An appeal is deemed not to have been filed in the following cases:

(a) where notice of appeal was filed within the two‑month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two‑month time limit;

(b) where notice of appeal was filed after expiry of the two‑month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two‑month time limit;

(c) where the appeal fee was paid within the two‑month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND notice of appeal was filed after expiry of that two‑month time limit.

2. In the cases referred to in answers 1(a) to (c), reimbursement of the appeal fee is to be ordered ex officio.

3. Where the appeal fee was paid within or after the two‑month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND no notice of appeal was filed at all, the appeal fee is to be reimbursed.

This decision is not wholly unexpected as it endorses the prevailing view in the case law of the EPO Technical Boards of Appeal (TBA). However, interestingly, the EBA has also observed that the answers to this point of law might also be applied to similar situations, for example, EPO opposition proceedings under Article 99(1) EPC.

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