EPO Boards of Appeal: Appeal fee set to increase, with new refund options

In a move which may be intended to help to reduce the backlog of undecided appeals, the European Patent Office (EPO) has decided to significantly increase the appeal fee, whilst introducing new options for claiming a partial refund.

 

From 1 April 2020, the appeal fee for most appellants will increase by about 20% from €2255 to €2705.  Alongside this fee increase, Rule 103 EPC will be amended to introduce new options for claiming a partial refund of the appeal fee. 

 

Currently, 100% of the appeal fee is available for refund if the appeal is withdrawn before the deadline for filing the grounds of appeal has expired (Rule 103(1)(b) EPC).  After this point, a refund of 50% is available under certain circumstances (Rule 103(2) EPC).

 

From 1 April 2020, refunds of 75%, 50% and 25% will be available in the following cases after the deadline for filing the grounds of appeal has expired.

A refund of 75% will be available if the appeal is withdrawn within two months from notification of a communication from the Board of Appeal indicating it intends to start the substantive examination of an appeal (Rule 103(2) EPC).  This is a new communication that will optionally be issued by the Board of Appeal.  It will be interesting to see how frequently this communication is issued in practice, considering that this new provision effectively gives the EPO a financial incentive to not issue the communication. 

A refund of 50% will be available if the appeal is withdrawn under the following circumstances (Rule 103(3) EPC):

• if a date for 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;
• 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.

The EPO has only changed the first option.  Currently, a 50% refund is available if the appeal is withdrawn at least 4 weeks before the oral proceedings.  According to the new provision, the deadline for obtaining a 50% refund will be set by notification of a communication.  This communication is the mandatory communication “drawing attention to matters of particular significance for the decision”, and the Board of Appeal will aim to issue the communication at least four months before the oral proceedings (Article 15(1) RPBA 2020).  Therefore, the new provision may be more or less generous for appellants, depending on the timing of notification of the communication relative to the date of the oral proceedings.

A refund of 25% will be available if the appeal is withdrawn (Rules 103(4)(a) and (b) EPC):

• 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; or
• 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.

Additionally, a refund of 25% will be available 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 (Rule 103(4)(c) EPC).  This effectively imposes a fee on appellants for oral proceedings.

It will be interesting to see whether the increase in the appeal fee along with the new options for refund has a significant effect on the number of appeals that are filed and withdrawn, respectively, in the future.

Action points:

Review appeals:

• Within two months of the Board indicating that substantive examination is about to begin; and
• Within one month of notification of the Board’s preparatory communication ahead of oral proceedings,

to decide if a strategic withdrawal (of either the appeal itself or the request for oral proceedings) makes sense.