EPO Increases Options Available for Obtaining a Refund of the Appeal Fee During Appeal Proceedings

The EPO has announced changes to Rule 103 EPC, which governs reimbursement of the appeal fee. These changes will come into force on 1 April 2020, at the same time as increases to many EPO official fees, including the appeal fee. The intention of the changes to Rule 103 EPC is to provide appellants with further financial incentives to withdraw appeals, and thereby help to reduce the backlog of undecided appeals.

No changes are being made to Rule 103(1) EPC, which specifies that a full appeal fee refund will be issued if the appeal is withdrawn before filing the statement of grounds of appeal and before the period for filing the statement has expired (which is four months from notification of the decision being appealed). However, the possibility of obtaining a 75% or 25% refund of the appeal fee at certain stages of the procedure is being introduced, and modifications are being made to the existing criteria for obtaining a 50% refund of the appeal fee.

In particular, new Rule 103(2) EPC provides for a 75% refund of the appeal fee if the appeal is withdrawn within two months of notification of a communication by the Board of Appeal indicating its intention to start substantive examination of the appeal. The Boards of Appeal do not currently issue such notifications, but presumably will start to do so as of 1 April 2020. It is interesting that the EPO has decided to notify appellants that examination of the appeal is about to start, since the EPO recently decided to stop informing applicants that examination of patent applications at first instance is about to start. The reason for discontinuing the first instance communications was that it did not lead to any noticeable increase in the withdrawal of patent applications to obtain a refund of the examination fee.

New Rule 103(3) EPC as amended contains the same provisions as previous Rule 103(2) EPC, except for some modifications to criterion (a). Specifically, a 50% refund of the appeal fee will be issued if an appeal is withdrawn after the filing of the statement of grounds of appeal, provided that withdrawal of the appeal occurs:

(a) if the date of oral proceedings has been set, within one month of notification of a communication issued by the Board of Appeal in preparation for these oral proceedings;
(b) if the date of oral proceedings has not been set and the Board of Appeal has issued a communication inviting the appellant to file observations, before expiry of the period to file observations; or
(c) in all other cases, before the decision issues.

New Rule 103(3)(a) EPC requires the withdrawal to be within one month of notification of a "communication by the Board of Appeal in preparation for these oral proceedings" (the previous wording required withdrawal at least four weeks before the date of oral proceedings). It seems likely that "communication" referred to in new Rule 103(3)(a) EPC is the communication the Boards of Appeal are now obliged to issue in advance of oral proceedings under Article 15(1) of the new Rules of Procedure of the Boards of Appeal, which sets out matters that seem to be of particular significance for the decision to be taken.

Finally, new Rule 103(4) EPC provides that a 25% refund of the appeal fee will be available in the following scenarios:

(a) if the appeal is withdrawn after expiry of the period of one month from notification of a communication issued by the Board of Appeal in preparation for the oral proceedings, but before the decision is announced at oral proceedings;
(b) if the appeal is withdrawn after expiry of the period to file observations in response to a communication issued by the Board of Appeal, but before the decision is issued; and
(c) if any request for oral proceedings is withdrawn within one month of notification of the communication issued by the Board of Appeal in preparation for the oral proceedings, and no oral proceedings take place.

The scenario under new Rule 103(4)(c) EPC is interesting, in that the appeal as a whole does not need to be withdrawn and a written decision will still ultimately be issued. It therefore seems that the EPO considers that the overall benefit to the efficiency of the Boards of Appeal gained by avoiding oral proceedings merits the 25% refund at this stage of the procedure.

The new appeal fee refund structure is complex, and the EPO has sought to avoid any confusion arising when more than one of the refund rates applies to a particular factual scenario by specifying that in such cases the refund will be at the higher rate. Given that the appeal fee itself is not particularly high, it will be interesting to see whether the introduction of graded rates at which it is refunded has a significant effect on the number of appeals that are withdrawn in the future.

Please speak to your usual J A Kemp contact if you have any questions.