T 529/09 – Counter-Evidence Needed

When an Opposition Division (OD) decides to maintain an opposed patent in amended form, it invites the proprietor to pay the corresponding fees and to file translations of the claims as amended within a period of three months (R 82(2)). If the proprietor does not react, there is another communication in which the EPO points out the failure to observe the time limit and the possibility to perform the required acts within two months, provided that a surcharge is paid (R 82(3)). This communication is sent by registered letter. If the patent proprietor asserts that it has not received the communication, the EPO has to provide evidence that the delivery has indeed taken place. If the EPO is capable of doing so, is there something the proprietor can still do if it really has not received the letter? This is the situation addressed in the present decision, which gives a nice summary of the appropriate case law.

[4] A communication pursuant to R 82(3) was sent out on 8 September 2008 by registered letter. The letter was addressed to the proprietor’s representative. According to R 126(2) a registered letter is deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee.

However, “delivered to the addressee” does not mean that the notification in question has to be actually brought to the attention of the professional representative in person. It suffices that the registered letter is received by a person authorized to take delivery, e.g. an employee of the representative’s office (see T 743/05 [1.6]).

[5] In the present case, the Deutsche Post has confirmed that, following an investigation by the foreign mail operator, the letter was delivered on 12 September 2008 to an authorized recipient.

After having been informed of this result of the EPO inquiry by a communication of the board, which included a copy of the confirmation letter, the appellant did not submit any further arguments or evidence in order to demonstrate that the Deutsche Post’s confirmation failed to establish that the registered letter reached its destination.

In these circumstances, the evidence on file has to be regarded as sufficiently reliable and complete for proving the proper delivery of the letter.

[6] The board is aware of the decisions of the Legal Board of Appeal J 9/05 and J 18/05 […] where a similarly worded confirmation letter by the Deutsche Post was held not to be sufficient to prove the receipt of an EPO notification.

However, in those cases the appellant had filed a considerable amount of counter-evidence and pointed out specific reasons why the letter might not have been received by the representative’s office. Thus, there is a significant difference to the present case.

[7] The board therefore considers it to be established that the communication pursuant to R 82(3) was actually delivered to the appellant’s representative on 12 September 2008. In view of the legal fiction contained in R 126(2), this communication is deemed to be delivered to the addressee on the tenth day following its posting (which occurred on 8 September 2008), i.e. on the 18 September 2008. Since the appellant did not perform the acts mentioned in the communication within two months of the notification, it missed the time limit provided for in R 82(3), first sentence.

It was thus procedurally correct for the OD to revoke the patent in accordance with R 82(3), second sentence.

If you wish to download the whole decision, you may click here.

NB: This decision has already been reported on Le blog du droit européen des brevets.