T 331/08 – No More Lacuna

The present decision deals with an appeal that had been filed via epoline at a time when this was not allowed. We have already seen this situation discussed in the case law, but there are some interesting complements in this decision.

Applicable Law

General

[1.1] The decision of the examining division was dated 7 September 2007 and posted on 19 September 2007. Thus the last date on which a notice of appeal could be filed was two months and ten days after 19 September 2007 (R 78(2) EPC 1973). This is prior to the entry into force of the revised EPC (EPC 2000, entry into force 13 December 2007). Thus the applicable law is EPC 1973.

NB: All articles and rules referred to hereafter correspond to the EPC 1973.

Electronic Filing

[1.2] The pertinent provisions are those set out in the Decision of the President of the European Patent Office dated 29 October 2002 (OJ EPO 2002, 543) and the related Notice from the EPO concerning the electronic filing of documents within the meaning of R 36 dated 3 December 2003 (OJ EPO 2003, 609).

According to Art. 1 of the Notice of 3 December 2003 documents other than priority documents could be filed electronically in grant proceedings. It is however explicitly stated therein that

“This possibility is not yet available in opposition and appeal proceedings; in such proceedings, therefore the electronic filing of documents is not admissible.” (De: “nicht zulässig”, Fr: “pas permis” (emphasis of the Notice).

[2] According to R 36(2) all documents (other than the description, claims, drawing and abstract, i.e. those covered by R 27, R 29 and R 32-35) shall normally be typewritten or printed. R 36(5) provides that the President may nevertheless permit documents filed after filing of the European patent application to be transmitted to the EPO by other means of communication and to lay down conditions governing their use.

[2.1] The Notice of December 2003 thus enacted provisions, as foreseen in R 36(5) for the filing of documents - other than priority documents - during the grant proceedings by “other” means, namely electronic means.

[2.2] Opposition and appeal proceedings were however explicitly excluded from these provisions.

[2.3] Therefore the applicant employed a non-permitted means to file the notice of appeal.

[2.4] Furthermore no confirmation of this electronically filed submission by other (permitted) means was provided.

[3] This situation is in the Board’s view comparable with that forming the basis of T 514/05 […].

[3.1] This decision, which was taken during the period that the Notice of December 2003 was in force, after a detailed analysis, came to the conclusion that pursuant to R 36(5) an appeal filed by non-permitted means of communication, specifically via the epoline® system, could not have any legal effect, absent explicit permission of the President (T 514/05 [10]).

[3.2] Further the payment of an appeal fee did not constitute constructive notice of appeal (T 514/05 [11], with reference to J 19/90).

[3.3] Accordingly the consequence of the use of a non-permitted means for filing the notice of appeal was that no appeal had been filed.

[3.4] By the same logic, the notice of appeal in the case in suit is deemed not to have been filed.

[3.5] This conclusion is analogous to the situation underlying T 971/05 […].

[3.5.1] In that case although a notice of appeal had been filed (by permitted means), the appeal fee was not paid and hence no appeal was in existence (T 971/05 [8]).

[3.5.2] Specifically, this Board held in T 971/05 that according to A 108 for an appeal to come into an existence two prerequisites had to be met:

− The valid filing of a notice of appeal and

− Payment of the appeal fee.

[3.5.3] The consequence of the failure to meet one of these conditions - in the case of T 971/05 payment of the appeal fee - was that there was no appeal in existence.

[3.5.4] In the case in suit the failure to meet the other condition - valid filing of a notice of appeal - leads therefore to the same conclusion.

Request for the Board to confirm that the appeal had nevertheless been filed

[4] In its pleadings […] inter alia the applicant noted that electronic filing of appeals was now permitted and hence that the Board should, in the light of this deem the appeal to have been correctly filed.

[4.1] This request of the applicant cannot be complied with since the Board does not have the power to do this.

[4.2] As explained in […] T 514/05 [7] a Board of Appeal is not entitled to exercise discretionary power to consider whether the appeal, filed by epoline® might be deemed to have been filed since:

− To do so would be tantamount to exercising a legislative power;

− Such legislative power is however clearly delegated in R 36(5), i.e. that provision to which the Notice of 3 December 2003 relates, to another authority within the European Patent Organisation, namely the President;

− Thus pursuant to A 23(3) the Board is precluded from examining whether this purported notice of appeal could be deemed to have been received, since such a procedure would be ultra vires;

− It is immaterial that this means of communication is now permitted for the filing of appeals. At the time in question, i.e. 12 November 2007 this was not permitted, and it is the law and instructions in place at this time which have to be applied to this case.

Aspect of “good faith” or “legitimate expectations”

[5.1] It is true that a number of communications were sent by the office - either from the examining division or the Board relating to the purported appeal.

[5.2] Such communications are however of merely administrative nature and the existence thereof does not prejudge substantive examination of the facts of the case by the Board (T 781/04 [2] and T 781/04 [28]). Furthermore parties cannot shift responsibility for complying with the provisions of the EPC to the EPO (T 991/04 [28]).

[5.3] This Board is of course aware that the Board responsible for T 781/04 held it to be appropriate to exercise the principle of good faith and thus allowed restitutio in integrum, whilst in T 781/04 the Board held that the principle of good faith required that the Board deem the appeal to have been validly filed. However the then prevailing situation with respect to epoline® was different from that existing at the time of the case in suit.

As noted in T 781/04 [10.1-3] and T 991/04 [31] there was - at the relevant time in those cases - no on-screen warning in epoline® that filing of appeals by electronic means was not permitted. Such a warning was however introduced subsequently in the light of a number of problems, as reported in T 781/04 [10.3], i.e. as a consequence of a “lacuna” in the system (see also T 991/04 [31]).

[5.4] This consideration however does not apply in the present case since at the time the applicant submitted the “notice of appeal” the warnings the absence of which was referred to in T 781/04 and T 991/04 were in place both on the website and also on the electronic form to be filed with the submission. These warnings explicitly alerted the users of the system that this was not permitted for filing appeals.

[5.5] Accordingly in view of the manifold steps taken by the EPO to ensure users would be aware of the restrictions placed on the use of the epoline® system, not only by means of the announcements in the OJ, of which it could be expected that a professional representative would be aware but also, as a further precaution, by means of warnings on the website, the Board can identify no justification for application of the principle of “good faith” or “legitimate expectations” to lead the Board to deem the “appeal”, filed by non-permitted means, nevertheless to have been filed, notwithstanding the fact that the Board does not have the competence to do so […].

On the contrary, as held in T 781/04 [10.3] and T 991/04 [28] it is the responsibility of the professional representative to ensure the relevant instructions of the Office are followed and that the appropriate means for making submissions is employed and this responsibility cannot be transferred to the EPO.

[5.6] These considerations are not changed by the fact that in the intervening period electronic filing of appeals has become possible. As explained […] above, the relevant provisions are those in force at the relevant time, not those that came into force at a later time, or which had been in force at an earlier time.

Request for restitutio in integrum

[6.1] As explained above with regard in particular to T 971/05, since no valid appeal was filed within the time limit […] an appeal procedure was never initiated and consequently there are no rights to be re-established.

[6.2] This notwithstanding the Board recalls that according to A 122(1) this provision is applicable to an applicant or proprietor who “in spite of all due care required by the circumstances having been taken” fails to observe a time limit (emphasis of the Board).

[6.3] Although in a number of cases involving electronic filing of documents in the appeal proceedings e.g. that underlying the aforementioned T 781/04 the Board was prepared to grant restitutio in integrum, […] these findings relied on the observation that that at the relevant time there was a “lacuna” in the EPO system since the epoline® website contained no warning or reminder that electronic filing of appeals was not permitted (T 781/04 [10.1]). T 781/04 (and T 991/04) - both dating from the latter half of 2005 - note that the problem had in the meantime been addressed by introduction of a warning on the website.

[6.4] However in the case in suit the applicant was made aware of the restrictions on the use of the epoline® system

- over and above the announcements in the Official Journal:

− By means of the warning on the website and

− was also required as a prerequisite for making the submission to sign – electronically - a document which stated unequivocally that the submission was not in relation to an appeal […].

[6.5] Accordingly the evidence is that the applicant in electing to file a notice of appeal by non-permitted (i.e. electronic) means overlooked not only the information published in the official journal but also ignored two warnings, one of which was on the electronic document signed by the representative.

[6.6] The Board is unable to consider this conduct, involving as it does a triple failure, to be evidence of the exercise of “all due care” in filing the appeal, and thus finds that the availability of the provisions of A 122(1) in respect of the filing of the notice of appeal is precluded.

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