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Case law 12 Apr 2022

The Board deems in the appellant's favour that the deposit account had sufficient funds despite software settings

A representative of the applicant has experienced a software crash, as a result of which an international application was not filed within the 12-month priority period. To remedy this, a request for restoration of the right of priority under Rule 49ter.2 PCT was made and accompanied by an electronically made order to pay the request fee of 665 EUR via automatic debiting from a deposit account held with EPO. However, due to unfortunate timing of other transfers from and to the account on the same day, when the EPO software was trying to execute the payment of the request fee, insufficient funds were found, effectively hindering the completion of the operation. As the fee was not paid, the request for restoration of the right of priority was deemed not filed. The applicant appealed.

The request for restoration of the right of priority was otherwise duly made. It contained a thorough statement of reasons for the failure to file within the 12-month period, demonstrating that the failure occurred in spite of all due care required by the circumstances and explaining e.g. the correct timing of the communication between the applicant the representative well before the priority deadline, the internal IT procedures in place at the representative’s office, their backing-up and auto-recovery system during the drafting process, description of the help sought with Microsoft helpdesk, and various repair-related invoices etc. The appellant also pointed out that in a co-pending case, filed on the same date and based on the same priority application, where the payment of the fee was successful, the request to restore the priority right was allowed based on the same factual situation.

The Appellant

The appellant then explained why they believed it was the EPO automatic debiting software that was in fault of not executing the payment correctly. Firstly, the appellant explained that several fees for other applications were deduced on the relevant date from the deposit account despite the appellant having withdrawn the debit orders for these fees on or before the relevant date. Hence, the appellant argued that these fees had been erroneously debited from the account on the relevant date and provided the evidence of their refund that followed several months after their debiting by EPO. The appellant thus argued that had it not been for said incorrect deductions, which were impossible to anticipate, the fee for the request for restoration of the right to priority would have been correctly debited from the account.

Analysing by the Board of Appeal

The Board firstly analysed the legal requirements for restoring the right of priority under Rule 49ter.2 PCT. They concluded that the fee for restoration is to be paid at the same time as the filing of the request (Rule 49ter.2(b)(iii) PCT: the request must be "accompanied" by that fee). They then reaffirmed that such a fee is indeed levied by the EPO as designated Office, in line with Art. 2(1), item 13, of the Rules relating to Fees, which mentions restoration under Rule 49ter.2(d) PCT. As the appellant chose to pay the fee by debit order from the deposit account, the Board then analysed the sequences according to which the EPO processes the debit orders to be executed on the same day, as laid out in the Arrangements for Deposit Accounts (ADA). The Board highlighted that according to ADA, debit orders and revocations thereof are processed in ascending order of application number.

It must be deemed in the appellant's favour that the deposit account had sufficient funds for the relevant fee on...
Board of Appeal -

Ex Officio enquiry

To gain more insight to the situation, the Board also made an ex officio enquiry with the competent department of the EPO. Therefrom, they learnt that on the relevant date the account was replenished and various fees were debited in ascending order of application numbers, in line with ADA, until the amount left in the account was lower than 665 EUR. On the same day, the appellant revoked automatic debit orders in relation to several other applications, which was confirmed by an electronic receipt stating "[t]he automatic debit order for the following applications [...] ceased to be effective on the date of receipt of your instruction revoking it." (emphasis added). However, as confirmed by the competent EPO department, the EPO system could not react in time to prevent debiting of the fees. Then, when the appellant filed the debit order for the payment of the restoration fee, the funds we no longer on the account and this later-made order could no longer be executed.

Decision by Board of Appeal

After performing the calculations, the Board acknowledged that had the several wrongly executed fees not been debited, the account would have contained sufficient funds for debiting the fee for restoration. Based on this, the Board’s concluded:

In these circumstances, it must be deemed in the appellant's favour that the deposit account had sufficient funds for the relevant fee on [the relevant date], so that this date is considered as the date on which the payment was made (see ADA, point 5.4.1)”

Consequently, the Board concluded the request for restoration of the right of priority was correctly filed and the case was remitted to the Examining Division.

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