Wednesday, 4 August 2010

T 585/08 – Don’t Announce It, Do It

This decision deals with a request for re-establishment. After the refusal of his application by the Examining Division (ED), the applicant had filed an appeal, but only after the expiry of the two-month time limit for doing so. He then filed a request for re-establishment but did not explain the grounds on which the request was based nor facts to support it.

[8] [… T]he two-month period for filing a request for re-establishment of rights and for performing the omitted act expired on 5 March 2008 (R 131(4)). The appellant observed this time limit to the extent that the request for re-establishment of rights and the notice of appeal were filed on 13 January 2008 and the respective fees were paid on 19 February 2008. This request was also filed within one year of expiry of the unobserved time limit for filing an appeal.

[9] However, according to R 136(2), first sentence, the request for re-establishment of rights must also state the grounds on which it is based and set out the facts on which it relies. According to the established jurisprudence of the boards of appeal, such a statement of grounds, containing at least the core facts on which the request relies, has to be filed within the time limit for filing the request (see for example J 18/98). The facts must also plausibly explain that the events stated were the cause of the failure to observe the time limit (T 13/82).

As pointed out by the appellant it is admissible to present facts in another document provided this document is filed before expiry of the time limit for filing the request for re-establishment of rights (T 287/84). It is also possible to supplement the facts on condition that the supplementary submissions do not extend beyond the framework of the previous submissions (J 5/94 [2.3]).

[10] The appellant argues that in the present case the letters filed before 5 March 2008, the date of expiry of the two-month time limit pursuant to R 136(1), indicate grounds on which the request for reestablishment is based and set out facts on which this request relies.

[11] However, the board does not concur with the appellant for the reasons that follow.

It is clear that neither the fax of 13 February 2008, by which the request for re-establishment was filed, nor the fax of 14 February 2008 contain any grounds on which the request is based or any core facts which would support it. Moreover, this finding has not been contested by the appellant.

Nor do the submissions made by the former representative in the fax dated 11 January 2008 assist in discerning the grounds or at least the core facts on which the request for re-establishment of rights relies. In this letter the former representative set out what, from his point of view, happened during the proceedings before the ED and in particular during the telephone conversation on 8 August 2007. He also stated that, due to said telephone conversation, he was expecting a communication from the ED setting out the date from which the one-month period for submitting further amendments and/or arguments would run, but that he had never received such a communication.

The board takes the view that these submissions put forward facts and grounds in support of a procedural violation which possibly occurred in first instance proceedings and the misunderstanding resulting therefrom. However, these submissions do not explain why the time limit for filing an appeal was missed. Rather they indicate why the contested decision could possibly be set aside or why the appeal fee could possibly be reimbursed, in the event that the present appeal was admissible and allowable. Thus these submissions do not assist the appellant’s case.

The board considers that the appellant’s fax dated 16 January 2008 does not explain either why the notice of appeal was not filed in due time. What the text of the letter indicates is that there was a failure in communication between the former representative Mr B. and the examiner as well as between the former representative Mr. B. and his client. However, it is not explained what the circumstances for this breakdown of communication were.

Moreover it is stated in this letter:
“I was not informed of the examiner’s decision until three months later when I received a letter from Mr B. dated January 5th 2008. I have now had the opportunity to discuss the response to the French Specification No. 1 269 288 with Mr B.. He will write to you again explaining the personal circumstances which have led to this delay.”
The Board considers that it could reasonably be understood from this statement that there was a delay with regard to a reaction to the decision of the ED and that a letter of the former representative with explanations on the personal circumstances causing the delay would follow. This, however, was a mere announcement of submissions, which is not sufficient for a substantiated request for re-establishment of rights.

Finally, the fax of the former representative dated 13 February 2008 indicates that there seemed to be a wrong entry on the epoline website which caused some confusion, and that this should be corrected and taken into account in relation to an appeal that was being filed by a further fax on the same day. However it contains no reference to the payment of the fee for reestablishment of rights mentioned in said further fax or to a delay of filing the appeal. Moreover, the board does not gather from this letter any facts or grounds which could be considered as a plausible explanation for the cause of the failure to observe the time limit for filing the notice of appeal.

[12] In view of the above the board comes to the conclusion that the documents on file before the expiry of the period for requesting re-establishment of rights neither state grounds nor set out facts in support of such a request as required by R 136(2), even if all these documents are read together and considered as a whole.

Admittedly, this outcome is not surprising. However, the case is of some pedagogical interest because it shows that meeting the deadline for establishing a case in view of re-establishment is crucial. It will not be sufficient to state that you request re-establishment and that the relevant facts will follow. If they reach the EPO only after the expiry of the deadline, the request is very likely to be dismissed.

This point was well explained in J 19/05 [4-5]:
For a request for RII to be admissible, sufficient substantiation within the meaning of A 122(3) has to be supplied within the corresponding time limit. The request has to designate a well defined (genau individualisierbares) event concerning the way and the moment of the apparition of the obstacle and has to report the factual circumstances of the knowledge concerning the removal of the cause of non-compliance, so that a subsequent change in justification and a circumvention of the time limit can be ruled out. Adding new facts which concern another reason justifying the non-compliance (Hindernisgrund) is not admissible. Also, an application for RII relying on general statements and containing no specific facts is not considered to satisfy the requirement for substantiation. The statements are insufficiently specified if the actual reason for non-compliance and the moment and reason for its apparition and removal are not understandable (nachvollziehbar) to the EPO and allow to add variable explanations (beliebig variierbare Sachverhaltsdarstellungen) in view of the ultimate justification. […] Thus, in order to be admissible, a timely filed application has to give the core facts which led to the non-compliance with the time-limit. Subsequent exposition of facts can only be taken into account if these facts complete the core facts (Sachverhaltskern) ; they cannot be considered if the factual justification is only established by the new facts.
Tomorrow I shall report on another aspect of this decision.

To read the whole decision, you may click here.