G1/14: An unnecessary question

The Enlarged Board of Appeal of the EPO delivered its judgment in the G1/14 referral on 19 November 2015 (so far only available in German). The decision is short, but not sweet for the referring Technical Board of Appeal 3.2.06: the EBO held that the question was unnecessary, because if the Technical Board had applied the law correctly, the question would not have arisen.

The Technical Board wanted to know whether a notice of appeal that was filed after the time limit according to art. 108 EPC was to be deemed inadmissibleor not filed (note that this question is different from the one in G2/14, where the notice was filed timely, but the fee was paid late. G2/14 was terminated because the patent in question lapsed for non-payment of the annual fee).

Merpel is searching for advice of delivery

The facts are such that the decision of the Opposition Division revoking the patent was sent to the proprietor’s representative by UPSand was, according to the “Tracking Information”, accepted on the premises of the representative on 26 April 2013 by a person named “Weber”. On 7 May 2013, the representative signed the receipt (EPA Form 2936) and on 8 May 2013, sent it by fax to the EPO. Notice of appeal was subsequently filed on 8 July* 2013 (Monday), and the fee was paid on the same day.

According to the appellant, the time limit started on the day the receipt was signed, because German law applied since the formalities of Rule 126(1) had not been complied with (see Rule 126(4)). The Technical Board disagreed, holding that the “Tracking Information” was an “advice of delivery” in the sense of Rule 126(1), and delivery therefore effected on 26 April 2013. Rule 126(1) in force at that time read:

Decisions incurring a period for appeal or a petition for review, summonses and other such documents as determined by the President of the European Patent Office shall be notified by registered letter with advice of delivery. All other notifications by post shall be by registered letter.

The Enlarged Board of Appeal held that the Technical Board had not complied with Rule 126(1): Rule 126(1) required notification by post with “registered letter with advice of delivery”. UPS was not the post and incapable of serving registered letters with advice of delivery, and “Tracking Information” by UPS was not “advice of delivery” in the sense of Rule 126(1). Had the Technical Board correctly applied the law, the question whether a late filed notice of appeal was to be deemed inadmissible or not filed was moot, because the notice was filed timely.

Note that the wording of Rule 126(1) has changed on 1 April 2015. Rule 126(1) now reads (changes highlighted):

Decisions incurring a period for appeal or a petition for review, summonses and other such documents as determined by the President of the European Patent Office shall be notified by registered letter with advice of delivery or equivalent. All other notifications by postal services shall be by registered letter.

The change was effected to allow the EPO to choose any postal service provider it considers suitable for notifying its decisions, summonses, communications and notices (see Notice A36 of 30 March 2015). In other words, in the future the relevant question is whether UPS “Tracking Information” is an “equivalent” of an advice of delivery, which this Kat would answer with a tentative “yes”. But this question was not before the EBA,** and the question that was was unnecessary indeed.

Since the EBA** did not answer the referred questions in both G1/14 and G2/14, we will have to wait for another day to learn whether a late filed appeal is inadmissible or “not filed”, which is relevant for the question whether the EPO has to refund the appeal fee.

photo credit: you've got catmail via photopin (license)

* the initial post said "May", an obvious typo.
** further typos corrected - see comments