Can a wannabe-opponent who did not pay the opposition fee in due time, because of its failure to pay the administrative fee under Article 6 ADA in due time, be re-established in the time limit for paying the fee? That is the question the Board had to answer in the present case.
The problem arose because the opposition fee was to be paid from the deposit account of the ‘opponent’, but the account was not sufficiently funded (similarities to a recent D2 paper are merely fortuitous).
The debit order (705 €) arrived on November 9, 2010, one day before the end of the 9-month time limit for filing an opposition. On November 16 the EPO invited the opponent to replenish its account and to file a debit order for the corresponding administrative fee (211.5 €). The opponent omitted to pay this fee, which triggered a notification of loss or rights under R 112(1). The opponent objected to this finding (invoking Article 7 RRF) and filed auxiliary requests for further processing and for re-establishment (why choose when there are so many wonderful remedies, let the EPO pick whatever they like!).
The Opposition Division (OD) confirmed the loss of rights, explained that further processing was not available and dismissed the request for re-establishment.
The opponent then filed an appeal.
When the Board expressed its provisional opinion that the request could not be granted, the appellant pointed out that all three requirements established by the EBA in G 1/86 were fulfilled: (1) when A 122 was drafted, there were no deposit accounts and the corresponding provisions did not exist yet; (2) the patent proprietor had been informed that an opposition had been filed; (3) the strict standards that apply to a missing statement of grounds of appeal should not be applied to the payment of a penalty (Säumnisgebühr).
Here is what the Board had to say:
*** Translation of the German original ***
 Even the appellant admits that the possibility for an opponent to request re-establishment in view of an opposition fee that has been paid after the expiration of the time limit cannot be derived from A 122. However, it refers to decision G 1/86 where the Enlarged Board (EBA) has provided a broad interpretation of the wording of A 122 [allowing] an opponent who has missed the time for filing the statement of grounds of appeal [to request re-establishment] (cf. the communication of the EPO in OJ EPO 2003, 419). Having considered the history and the purpose of the provision, the EBA has come to the conclusion that re-establishment could be envisaged when the time limit was not a time limit for making proceedings pending (Frist zur Anhängigmachung) but for pursuing them (time limit for filing the statement of grounds of appeal).
 The case G 1/86 to which the appellant has referred concerns the possibility of re-establishment into the time limit for filing the statement of grounds of appeal in inter partes proceedings before the Board of appeal, which are similar to court proceedings. Based on the principle of equal treatment that applies in this case, G 1/86 had decided that an interpretation of A 122 contra legem was necessary. Decision T 702/89 has declined to extend these principles to the time limit for filing an opposition, for the following reasons:
“ Concerning the request for re-establishment of rights[3.1] The requirements relating to admissibility of a request under A 122 filed by the opponent were set out in part in above-mentioned decision G 1/86 of the EBA. The Board shares the Appellant’s opinion that this decision represented a step forward as far as the opponent’s rights were concerned in that it enabled him to benefit from the provisions of A 122 in the event of late filing of the statement of grounds of appeal, whereas previously this would appear to have been limited to the applicant and patent proprietor.However, the EBA’s reasons for this decision were based on an analysis of the differences between the rights which can legitimately be invoked by the opponent and the applicant or patent proprietor, depending on whether the legal process has begun or not (cf. point  of the decision). This process begins in appeal proceedings when the appeal has been filed and the appropriate fee paid (cf. point , second sub-paragraph).For the same reasons as those given by the EBA, the present Board maintains that, in accordance with A 99(1), the legal process begins in opposition proceedings when the notice of opposition is filed and the appropriate fee is paid.Continuing with its analysis, the EBA decided that, since the legal process had given rise to the appeal, the opponent should be granted the same rights under A 122 as the applicant or patent proprietor in respect of the filing of the statement of grounds of appeal and the other time limits provided for in the appeal procedure, because failure to observe the procedural time limits may involve the opponent too in a loss of rights (cf. point  of the Reasons).On the other hand, on the question of time limits connected with the initiation of the legal process, the EBA pointed out that, in the course of the preparatory work on the EPC, a majority of the Working Party which had looked into the scope of re-establishment of rights had considered that re-establishment should not apply to the opponent because he had other means of availing himself of his rights, in particular by bringing an action for revocation before the national courts. Clearly, under similar circumstances where it was not possible to observe the time limits connected with the initiation of the legal process, an applicant or patent proprietor wishing to appeal against a decision to refuse him a patent or to revoke it would irrevocably have lost his rights were re-establishment not possible.It is true that in the above-mentioned decision the matter was only referred to the EBA once the statement of grounds of appeal had been filed. This naturally prompted it to base its reply on an analysis of the circumstances specific to the appeal proceedings (cf. inter alia points  to  of the Reasons). However, when the ad hoc Working Party held that the opponent should not be entitled to have his rights re-established because he had other means of availing himself of those rights, it did not intend such exclusion to apply only to the specific case of non-observance of the time limits for appeal but to all cases of failure to observe time limits before the EPO. The same generalisation is accordingly found in A 122, which does not apply only to appeal proceedings.[3.2] Consequently, the request for re-establishment of rights by the opponent, who has failed to observe the nine-month time limit under A 99(1) for filing the notice of opposition and paying the appropriate fee, must be rejected as inadmissible, notwithstanding any arguments put forward to explain the reasons for not complying with the time limit, which are a matter for consideration in connection with an assessment of the merits and not the admissibility of the request.”
 The appellant now submits that the considerations that have led the EBA to a broader reading of A 122(1) were fulfilled in the present case […]. However, decision G 1/86  expressly states that “the wording of A 122(1), the historical documentation relating to the Convention and a comparison of the national laws of Members States suggest that opponents may not have their rights re-established in respect of time limits of appeals”. The further considerations of the EBA exclusively concern the particularities of the time limit for filing the statement of grounds of appeal, which the EBA distinguishes from the time limit for filing the appeal (and the corresponding payment of the appeal fee). Thus the decision is based on a situation “where the appeal has already been filed, i.e. […] the opponent has validly made known his intention of having the OD’s decision set aside” (point  of the reasons). Therefore, [the EBA] considered a case where “the legal process has already begun” as stated in decision T 702/89.
 This is not the case here, because there is one single (nine-month) time limit in opposition proceedings, within which the opposition fee has to be paid and the notice of opposition has to be filed. Therefore, in contrast to the time limit for filing the statement of grounds of appeal, and in a way that is analogous to the time limit for filing an appeal, the relevant question is whether a legally valid opposition has been filed at all. In this context, decision T 702/89 unambiguously states “that, in accordance with A 99(1), the legal process begins in opposition proceedings when the notice of opposition is filed and the appropriate fee is paid” […].
Thus the situation underlying G 1/86 is different from the present situation in several respects. First, there already was a validly filed opposition [in G 1/86], and secondly, the considerations [of the EBA] refer to the particularities of appeal proceedings rather than to opposition proceedings, where there is no distinction between the time limit for filing the opposition and the time limit for filing the statement of grounds. Both A 122(1) and the decisions G 1/86 and T 702/89 clearly indicate that re-establishment into the time limit for filing an opposition is out of the question.
 This outcome is appropriate (sachgerecht) not only because in opposition proceedings there is one single time limit for filing the opposition and the corresponding statement of grounds but also because the considerations underlying A 122(1), i.e. that a competitor who has not filed an opposition still can avail himself of national revocation proceedings, applies even more to opposition proceedings than to appeal proceedings.
 Based on the factual situations underlying G 1/86 and T 702/89, the Board draws the general conclusion that re-establishment, which is a special legal remedy that, in principle, is only available to the applicant and patent proprietor, is, in application of the principle of equal treatment, exceptionally available to all parties to inter partes proceedings when the proceedings have been validly commenced (eingeleitet) and are pending.
In the present case, however, the opposition proceedings have not been validly commenced yet. The failure to pay the administrative fee pursuant to Article 6.6 ADA in due time has triggered the legal consequence provided in Article 6.7 ADA in connection with Article 7(2) RRF, i.e. the payment is considered to have been made on the date on which the deposit account was duly replenished. It is undisputed that this happened after the expiration of the 9-month time limit for filing an opposition. In application of A 99(1) the opposition shall be deemed not to have been filed. Thus there are no pending opposition proceedings. As a consequence, a party that has failed to pay the opposition fee in due time, even if this is the consequence of the failure to meet the time limit for paying the administrative fee for replenishing the deposit account, cannot avail itself of the possibility of requesting re-establishment.
 The arguments of the appellant […] cannot alter this fact. Although the ADA did not exist at the time when A 122 was drafted (which is the first argument invoked by the appellant), these provisions provide particular rules in favour of the person ordering the payment (Zahlungsgeber) in case the deposit account is insufficiently funded. Thus these provisions contain their proper rules dealing with belatedness (Verspätungsregelungen). Now turning to the third argument of the appellant, these rules are to be considered as a whole and cannot be divided into more or less important acts. The law does not state whether the lack of a statement of grounds of appeal is more or less important than the failure to pay a penalty (Säumnisgebühr). Finally, the provisional communication by the Office regarding the filing of an opposition cannot alter the fact that the latter is inadmissible, even if the patent proprietor relied on this information. Otherwise the patent proprietor could not invoke the inadmissibility of the opposition, just because the Office had informed it on the filing of an opposition. If this was the case, the provisional communication on the filing of an opposition would be legally relevant to an extent that by far exceeds its mere informative character. This cannot be accepted.
 The appellant’s request that the decision be set aside and that re-establishment into the time limit for paying the administrative fee of 211.5 € be granted is to be dismissed. […]
The appeal is dismissed.
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