T 585/08 – Formalities Agents Aren’t Detectives

We have seen yesterday that the applicant who had filed the appeal and the request for re-establishment was unsuccessful in convincing the Board that all requirements in view of re-establishment had been fulfilled in due time. His second line of defence was to invoke the principle of good faith.

[13] Turning now to the appellant’s argument that the principles of good faith as set out in decision T 14/89 and confirmed in case J 13/90 should be applied in the present case if the board finds that the facts to substantiate the request for re-establishment were not filed in due time.

[14] T 14/89 concerns an appeal by a patent proprietor who filed a request for re-establishment of rights well within the time limit for doing so. This request had two deficiencies: the fee for re-establishment had not been paid and the facts to substantiate the request had not been filed. The Board found (point [5] of the Reasons) that under the principle of good faith, “...the EPO should not fail to draw the appellant’s attention to obvious deficiencies in his acts. This obligation certainly exists if, as in the present case, the obvious deficiencies can be expected to be remedied within the time limit for reestablishment”. It is to be noted that in case T 14/89 the EPO had ample time, about 6 weeks before the expiry of the time limit for requesting re-establishment, in which to inform the proprietor of the deficiencies of his request.

In its decision G 2/97 [3.4] the Enlarged Board of Appeal commented upon decision T 14/89 and found that this decision “... related to the particular facts of that case and that there is no generally applicable principle to be derived therefrom”.

[15] Decision T 14/89 was followed in decision J 13/90, where in another case of re-establishment of rights the Board found that the principle of good faith requires the EPO to warn the applicant of any impending loss of rights, if such a warning can be expected in all good faith, and that such a warning may be expected if the deficiency is readily identifiable for the EPO and the applicant can still correct it within the time limit. In that case, it was clear from a letter addressed to the EPO by the appellant that the latter was in error with regard to the need to make payment of a renewal fee within the two-month period for re-establishment of rights. The Board found that the EPO must not omit any acts which the party to the proceedings could legitimately have expected and which might well have helped avoid a loss of rights (point [5] of the Reasons).

However, the Board also found that:

“It would be taking the principle of good faith too far to expect the Office to warn the applicant of deficiencies in every case - even when the deficiency is not readily identifiable ...”.

[16] The appellant argues that, in view of the above mentioned decisions, the EPO should have advised the former representative of the missing grounds and facts regarding his request for re-establishment of rights since the deficiencies were obvious and could be expected to be remedied within the relevant time limit for requesting re-establishment.

[17] As set out above, according to the jurisprudence of the boards of appeal, the duties of the EPO under the principle of good faith are limited in that the EPO can only be expected to warn a party of a deficiency if the deficiency is readily identifiable by the EPO and the party can still correct it within the relevant time limit.

[18] In the present case, however, the deficiency was not readily identifiable.

Firstly, a number of letters were filed.

Secondly, it would only have been possible to detect the deficiency if these letters had been studied carefully. […] However, in the board’s view, the principle of good faith does not impose any obligation on the EPO to scrutinize several letters on file to establish whether grounds and facts with respect to a request for re-establishment are missing.

Moreover, in his letter dated 16 January 2008 the appellant had announced that the former representative would file explanations as to the personal circumstances having caused the delay. Hence, there was an indication on file that the appellant and his former representative were aware of what had to be done in the present case.

[19] The appellant’s argument that a cursory reading of the letter setting out the statement of grounds of appeal would have shown that it did not deal with the request for re-establishment of rights is not convincing.

First of all, the deficiency would not have been readily identifiable by a cursory reading of said letter alone since said letter comprised three pages of reasoning which did not refer to the request for reestablishment at all. As already set out above, the preceding submissions dated 13 February 2008 and 16 January 2008 gave the impression that the representative was aware of what had to be done in the present case.

Therefore, it was not obvious that a particular reasoning in respect of the request for reestablishment of rights was missing, in the sense that it had been omitted here in error.

In addition, even if the EPO had been in a position to notice this deficiency at the time of receipt of the statement of grounds (14 February 2008), it was not evident that there would still have been enough time for the EPO to warn the appellant about the deficiency in respect of the request for re-establishment of rights.

In the documents then on file there was no explanation whatsoever about the circumstances in respect of missing the time limit for filing an appeal. Hence, there was no submission as to what the cause of non-compliance was or when the removal of the cause of non-compliance occurred. In fact, it was only possible to establish the date of the removal of the cause of non-compliance during the oral proceedings before the board after a discussion in great detail and on the basis of the written submissions and the Statutory Declaration, both filed after oral proceedings had been arranged. In the absence of any indication or submission as to the cause of non-compliance, from the point of view of the EPO, the date of removal could just as well have been the next day (or only a few days) after expiry of the time limit for filing an appeal on 14 December 2007.

In such a case the time limit for filing a request for re-establishment could have already expired on 15 February 2008 and not on 5 March 2008 as it eventually turned out. Accordingly, there was no indication that there was enough time for the EPO to warn the appellant about any deficiency.

The board arrives at the same conclusions in respect of the notice of appeal and the request for re-establishment of rights, since they were effectively filed a few days later on 19 February 2008 when the respective fees were paid.

[20] In view of the above, neither T 14/89 nor J 13/90 can assist the appellant. The deficiency in question was not readily identifiable, and hence, under the principle of protection of legitimate expectations, the EPO had no duty to warn the appellant. Since a warning could not be expected, the EPO was not obliged to set a period in which the appellant could correct the deficiency.

To read the whole decision, you may click here.

NB: This decision was also reported on Le blog du droit européen.