Special requirements for belated appeal fee corrections under Rule 139 EPC

At the EPO, under Rule 139 EPC it is possible to correct errors in submissions filed with the office if the correction is “obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction”.

In cases where a person wants to appeal a decision rendered e.g. during prosecution or opposition proceedings, according to Art. 108 EPC “Notice of appeal shall be filed … at the European Patent Office within two months of the date of notification of the decision” appealed from. “Notice shall not be deemed to have been filed until after the fee for appeal has been paid”. 

In the case that led to the Decision T 0317/19, the appellant had arranged for payment of the appeal fee within the time limit. Unfortunately, the payment was not to be regarded as made on the day of receipt of the electronic debit order, for the reason that no payment method was indicated in the respective field.

The appellant filed a separate payment after the expiry of the payment deadline, together with a request for correction of the submitted electronic debit order, now also mentioning a method of payment, namely “Debit from Deposit account”, requesting correction under Rule 139 EPC of the preceding incomplete debit order.

Generally, with regard to Rule 139 EPC, according to the Enlarged Board of Appeal Decision G 1/12, for a correction under Rule 139 to be allowed, four requirements have to be fulfilled:

1. The correction must introduce what was originally intended aim and must not reflect a change of mind;
2. The original intention must be immediately apparent or requires a serious burden of proof “which must be a heavy one”;
3. The error to be corrected may be an incorrect indication or an omission;
4. The request for rectification must be filed without delay.

On that basis, in the Technical Board of Appeal Decision cited above, it was held that the appellant had satisfied those requirements. The appellant/applicant, at the date on which the payment was made “in due time”, had merely forgotten to fill in the “method of payment” field.

The appellant originally intended to refer to "Debit from deposit account" in the box for "Method of payment" on Form 1038E. This was immediately apparent from the notice of appeal containing a corresponding sentence. The error to be remedied was the incorrect statement "Not specified". The appellant filed its correction request as soon as it became apparent that a mistake had been made.

Articles 5(2), and specifically 7(2) of the Rules related to Fees of the EPO, state with regard to “Arrangements for deposit accounts”: "Provided there are sufficient funds in the deposit account on the date the EPO receives the debit order, that date will be considered as the date on which the payment is made." Accordingly, as the EPO received the (retroactively corrected) debit order on 21 November 2018 and as the balance of the professional representative's deposit account was sufficient on that date, the above date – which was before the expiry of the time limit under Article 108, first sentence EPC – was to be considered as the payment date.

In the present case, as it was an ex parte case caused during examination and thus without respondent, the principle of legal certainty was not pertinent. 

Note: The correction under Rule 139 EPC first sentence takes effect retroactively (“retrospective effect” according to G 1/112). In the present case, this effect results in correct indication of the payment method ab initio.

Furthermore, in view of the pending decision on the admissibility of the appeal, third parties could not legitimately trust that the belated payment would be dismissed.

In summary, in the present case and with the specific underlying facts the payment was regarded as valid.

It is thus recommendable to, even if this is not regarded as valid payment, also mention the payment of a required fee and the payment method in submissions other than the debit order form so that a deficient payment order has a chance be corrected later under Rule 139 EPC. Furthermore, it is recommendable to have a sufficiently positive credit balance on the deposit account.For more information about the topics above, please contact a member of Our Team