Fee reductions in proceedings before the EPO – be careful

Published on: 13 June 2013
by Dr. Christian Köster, Patent Attorney at Dennemeyer & Associates, Munich

Apart from the official languages of the EPO, i.e. English, French and German, natural or legal persons who are domiciled in an EPC contracting state with a different official language may use that language for documents which have to be filed with the EPO within a certain time limit, provided a translation is (later) filed as well. In such cases, particular official fees are reduced by 20%, including the appeal fee.

In a recent case, there was an appeal procedure in which the appellant, a Swiss company, used Dutch language for a notice of appeal. Simultaneously, a reduced appeal fee of 80% of the full appeal fee was paid (here, €944 instead of the full €1180). It was undisputed that the Swiss company was not entitled to use Dutch language and was therefore not entitled to benefit from the fee reduction. However, the appellant argued that the principle of good faith applies and that the EPO could have reasonably been expected to identify the error and to warn the appellant of the underpayment. The appellant further referred to Article 8 of the EPC Rules relating to fees, which stipulates that the EPO may overlook any small amounts lacking without prejudice to the rights of the person making the payment. It was argued that the missing 20% of the appeal fee must be considered as such a small amount.

The competent Board of Appeal nevertheless ruled that the appeal was deemed not to have been filed (decision T 642/12 from 11 January 2013). According to the Board, neither the completion of an internal form nor the communication of an appeal number establishes a legitimate expectation that formal requirements of an appeal have already been checked by the EPO. Also, in the decided case, the potential possibility of discovering the error did not establish a legitimate expectation that the appellant should be warned by the EPO of the underpayment. Finally, an underpayment of 20% was considered neither "insignificant” nor “negligible", so that it was not seen as a “small” amount which could be overlooked.

It is learned that whilst any fee reductions are of course nice, one must always carefully double-check whether one is indeed entitled to reduce due fees.