Wednesday, 9 June 2010

T 938/09 – Mind Your Guide

Why entrust an appeal to a professional representative? Wouldn’t it be cheaper to be represented by an employee (or, as far as small businesses are concerned, by the CEO)? Wouldn’t it be simpler to entrust the appeal to the legal practitioner who already represents the party before national jurisdictions? That may well be. But these persons, although allowed to represent a party before the EPO, might be insufficiently familiar with proceedings under the EPC. And this is what appears to have happened in the present case.

Here an application of the Symbasis company was refused by the Examining Division on January 27, 2009. Mr. Z., a legal practitioner (Rechtsanwalt) took over the representation and filed an appeal on March 11, 2009. A second appeal was filed by the CEO of Symbasis, Dr. T. No appeal fee was paid.

The renewal fee for the seventh year having fallen due on October 31, 2008, Dr. T. enquired on March 25, 2009 whether it was correct that he could still pay the renewal fee. The EPO having confirmed this possibility, a payment of 1500 € was received on March 31, 2009.

On April 21, 2009, Mr. Z. enquired why he had not received any confirmation for the filing of the appeal nor an invoice concerning the appeal fee. The EPO replied that it was too late for paying the appeal fee but that re-establishment could be requested. Mr. Z. followed this advice. He explained that in a telephone call made on February 26, 2009, he and Dr. T had agreed that Symbasis would pay the appeal fee. Dr. T. had asked his associate, Mr. S., to transfer the appeal fee. Mr. S. had transferred 1500 € on March 30, 2009. The EPO had entered this as a payment of the renewal fee. Dr. T. might have confounded the fees because he was professionally overburdened at that time. Both Dr. T. and Mr. S. filed declarations in lieu of oath (eidesstattliche Versicherungen) that it was intended to pay the appeal fee and that there had been a confusion.

Here is what the Board had to say:

** Translation from the German **

[3] Pursuant A 122(1) the applicant who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit shall, upon application, have his rights re-established. If the party is represented by a professional representative, re-establishment can only be granted if it can be shown that both the applicant and the representative have taken all due care (J 5/80 [headnote 1]). It is part of the duties of a representative to ensure that current time limits are met so as to avoid unintentional losses of rights. In doing so he has to know the relevant legal provisions. Ignorance of the law is not a valid ground for re-establishment (see e.g. J 6/07 [2.4]).

[4] In the present case the representative apparently did not now the regulations concerning time limits and fees because he told the EPO in his letter dated April 21, 2009, that he had not received an invoice concerning the appeal fee that had fallen due and that he requested such an invoice. Apparently he acted on the assumption that he would receive a request for payment and did not know that the appeal fee had to be paid within two months of delivery of the decision and that the amount to be paid is fixed in the Rules relating to fees. The Board cannot endorse the argument of the representative that this letter was legally irrelevant (unbeachtlich) because it was written after the expiration of the time limit for the payment. As a matter of fact, when assessing whether all due care was taken the overall circumstances always have to be taken into account. Also it is not clear how the letter could be an office error (Büroversehen) because it had been signed by the representative himself.

[5] Even assuming that the representative, in his telephone call on February 26, 2009, mentioned the need to pay the appeal fee in due time, it would have be part of his duties to mention the amount of the fee to be paid and how concretely the time limits would expire. Apparently the applicant is not familiar with patent matters and insufficiently informed on how time limits operate. This can be seen, for instance, in its request for an extension of the time limit to file an appeal (February 26, 2009) or in its enquiry concerning the payment of the renewal fee (March 25, 2009). In such a case, it is the duty of the representative to explain to the applicant until when a fee is to be paid and what the amount is. He cannot have done so in the telephone call on February 26, 2009, because he himself was not aware of these matters, as can be seen from his letter dated April 21, 2009.

[6] The Board cannot endorse the argument of the representative according to which, even if he had not known the time limit on April 21, 2009, he must have known it at least on February 26, 2009, because otherwise he could not have mentioned the need to pay the appeal fee in due time. This does not fit the common experience of life (allgemeine Lebenserfahrung). It rather appears that the representative mentioned the need to pay the appeal fee in due time in general terms (pauschal) without concretely explaining what this means in detail. He left it to the applicant to procure itself the relevant pieces of information. This is not in conformity with the due care a representative [is expected to take]. For this reason alone, the request for re-establishment cannot be granted.

As my boss once said, “if a blind man leads a blind man, both will fall into a pit”. (Mt 15.14)

To read the whole decision (in German), please click here.