One of the more delicate situations a professional representative can encounter is when his/her client does not settle the bills. The present decision shows a case where such a situation led an experienced attorney to act in a way that was found to violate his duty to exercise all due care.
The Board found the appeal and the request for re-establishment to be formally admissible. The following passage deals with the allowability of the request:
*** Translated from the German ***
[3.2.1] According to the established case law of the Boards of appeal, a request for re-establishment can only be granted if the party filing the request under A 122 has taken all due care required by the circumstances and nevertheless could not observe a time limit. All the circumstances of each case must be looked at as a whole. The obligation to exercise due care must be considered in the light of the situation as it stood before the time limit expired. In other words, the steps the party took to comply with the time limit are to be assessed solely on the basis of the circumstances applying at that time (see: Case Law, 5th edition, 2006, chapter VI.E.6, p. 372)
By “all due care” in this context is meant all reasonable care, that is to say, the standard of care that the notional reasonably competent patentee/applicant/ representative would employ in all the relevant circumstances (cf. T 30/90 [3]).
When determining the standard of due care, it has to be taken into account that during the whole examining proceedings the appellant was represented by a professional representative who declared that he had paid all due fees in advance.
When determining the standard of due care, it has to be taken into account that during the whole examining proceedings the appellant was represented by a professional representative who declared that he had paid all due fees in advance.
In this context it also has to be taken into account that the private practice of the professional representative is a small office, the only other employee being the representative’s wife, who was in charge of the accounting, as well as the fact that the representative followed a – partly inpatient and partly ambulatory – medical treatment between march 2008 and January 2009.
[3.2.2] For the request for re-establishment and, therefore, the present appeal to be justified, it is decisive whether both the applicant himself and his professional representative have taken all due care required by the circumstances, both in the general organisation of the internal procedures and in the concrete handling of the payment of the renewal fee for the third year.
[3.2.3] The appellant has presented the following particular circumstances which hindered him from concretely and correctly handling the payment relating to the renewal fee for the third year and the additional fee:
(1) a staff member of the private practice accidentally forgot to pay the renewal fee;
(2) the professional representative was temporarily unavailable, due to health reasons, between March 2008 and January 2009;
(3) the applicant faced financial difficulties.
[…]
[3.2.4] Insofar as the appellant refers to an accidental omission to pay the renewal fee, it is decisive whether all due care required by the circumstances was taken, both in the general organisation of the internal procedures and in the concrete handling of the payment of the renewal fee for the third year.
[3.2.4.1] Apart from the fact that the submissions of the appellant concerning the circumstances that hindered him from correctly handling the payment which have been given during the proceedings before the Examining Division (ED) and in the present proceedings are not congruent, none of the circumstances that have been presented can excuse the omission to pay the renewal fee for the third year in due time under A 86(1) or at least the grace period under R 51(2), with an additional fee.
[3.2.4.2] According to the submissions related to the appeal (Beschwerdevorbringen), which the appellant has again confirmed in his statement in response to the opinion of the Board […] the professional representative of the appellant had de facto taken over the task of advancing the patent fees falling due, including renewal fees, and charging the appellant after the payment. It was also the professional representative who took the initiative of paying the fourth renewal fee for all applications […] as well as the fees for re-establishment and the appeal fees. To this extent the payments of the fees were made independently of the appellant. Moreover, it can be seen from the submissions related to the appeal that the professional representative had not made the payment of the third renewal fee because he did not want to advance it again, as the appellant had not settled other invoices.
As a consequence, the omission of the payment of the third renewal fee plus the additional fee was not accidental but conscious. Moreover, after the invoice of July 23, 2008, the representative of the appellant has not asked the latter again if the fee was to be paid or warned him of the danger of a loss of rights. Also no reasons have been given – nor does the Board see any – why the appellant did not react to the invoice sent by his professional representative on July 23, 2008. Accordingly the submissions related to the appeal makes it impossible to consider that both the appellant and his representative had taken all due care.
[3.2.4.3] Irrespective of the conscious omission to pay the renewal fee, which as such already excludes the required re-establishment, the appellant cannot in addition point out that the assistant of the professional representative had made a mistake when calculating the grace period for the payment of the renewal fee for the third year plus the additional fee, as he has done in the proceedings before the ED.
This mistake is a mere mistake of calculation because it is based on a misinterpretation of R 51(2). According to the established case law, however, ignorance or misinterpretations of a provision of the EPC cannot justify re-establishment (J 31/89 [3]; Case Law, chapter VI.E.6.3.2b), p. 380 et seq.).
The period of six months, calculated from the due date of the renewal fee that had been missed (due date: May 31, 2008; end of the grace period: December 1, 2008) follows from R 51(2) EPC. The assistant – as well as the representative of the appellant in the appeal proceedings – have misinterpreted (verkannt) this provision.
The period of six months, calculated from the due date of the renewal fee that had been missed (due date: May 31, 2008; end of the grace period: December 1, 2008) follows from R 51(2) EPC. The assistant – as well as the representative of the appellant in the appeal proceedings – have misinterpreted (verkannt) this provision.
On that subject, the appellant cannot successfully assert that the late payment was still possible until the end of January 2009, as this corresponded to the end of the month in which the payment was due (Fälligkeitsmonat). This understanding of the legal situation (Rechtsauffassung), which the appellant presented in his statement of February 25, 2010 / March 1, 2010 filed as a response to the notification of the Board dated December 29, 2009, is not in harmony with R 51.
It is true indeed that the renewal fess for a European patent application in respect of the coming year fall due on the last day of the month which has the same name as the month containing the date of filing of this application (R 51(1)) but this provision concerns the regular payment.
To the extent to which R 51(2) allows the late payment of a renewal fee that has not been paid until the due date (Fälligkeitseintritt), the wording of this provision provides a period of six months after the payment was due, in the present case after expiry of the normal period for paying the fee under A 86(1) and R 51(1).
There is no legal basis in the EPC for mixing those two rules in the way presented by the appellant in his statement filed as a response to the notification of the Board, coming to the conclusion that the grace period ended only after expiration of the sixth month after the communication of the ED dated July 4, 2008. The appellant also misinterprets (verkennt) the corresponding hint of the Board in its notification of December 29, 2009. […]
[3.2.5] As far as the alleged unavailability of the professional representative for health reasons is concerned, the general organisation of the internal proceedings in his private practice are relevant.
[3.2.5.1] It is true that the case law of the Boards of appeal acknowledges that when the question is to be answered whether all due care required by the circumstances has been taken in order to observe a time limit, there may be different requirements for small private practices and companies, concerning the organisation of the monitoring of time limits, depending on the size and the type of private practice or the company, as the case may be, and on the number of delays that have to be monitored. Unlike the situation in a big private practice or a big company having a patent department, one may consider that there is no need for a checking mechanism in a small private practice or a small company where, as a general rule, reliable staff works in an efficient and personal way (J 11/03 [7]; T 166/87 [2]).
In the present case, however, there was no presentation of the usual work process in the private practice if the professional representative of the appellant as far as checking of fee payments is concerned. The Board, in its notification dated December 29, 2009, has expressly pointed out this fact, but the appellant has not filed any further submissions on this topic in his statement.
In the present case, however, there was no presentation of the usual work process in the private practice if the professional representative of the appellant as far as checking of fee payments is concerned. The Board, in its notification dated December 29, 2009, has expressly pointed out this fact, but the appellant has not filed any further submissions on this topic in his statement.
[3.2.5.2] The fact that the professional representative – who declared himself to be “one of the first pioneer representatives” (Pioniervertreter der ersten Stunde) – has not made a single mistake so far, as he pointed out, is not a suitable argument for convincing the Board that there was a functioning system for checking payments and time limits within the meaning of the case law of the Boards of appeal (cf. J 2/86 and J 3/86 ; J 23/92 ; T 491/89 [6]). The general reference to an “error free” functioning of the management of the fee list by the professional representative’s wife as well as her technical training, professional qualification and experience with fee payment over a period of twenty years cannot be sufficient for establishing that the requirements for due care have been observed, either.
[3.2.5.3] Moreover, the professional representative apparently was not continuously unavailable, due to health reasons, over the whole relevant period of time, [so as to be unable] to act as a patent attorney for the patent application under consideration. According to his submissions during the proceedings before the ED and during the appeal proceedings, he underwent a short inpatient medical treatment in March and suffered from medical problems in the following weeks and months, in particular from November 2008 until the expiry of the grace period for the payment of the renewal fee plus the additional fee. However, the appellant did not argue that these problems had completely hindered him from working. Moreover, it has not been shown whether and which precautions the representative of the appellant had taken in order to guarantee that in case of his being unavailable for health reasons other persons would act in order to observe the time limits. Such precautions may be expected from a professional representative in the framework of his duty to exercise all due care (J 41/92; T 324/90).
[3.2.5.4] Moreover, the professional representative of the appellant admitted that he consciously had not paid the third renewal fee because some invoices had not been settled (see above [3.2.4.2]), so that the omission to pay the fee cannot be said to be due to an isolated mistake in an otherwise satisfactory system in the private practice of the professional representative.
[3.2.5.3] Moreover, the professional representative apparently was not continuously unavailable, due to health reasons, over the whole relevant period of time, [so as to be unable] to act as a patent attorney for the patent application under consideration. According to his submissions during the proceedings before the ED and during the appeal proceedings, he underwent a short inpatient medical treatment in March and suffered from medical problems in the following weeks and months, in particular from November 2008 until the expiry of the grace period for the payment of the renewal fee plus the additional fee. However, the appellant did not argue that these problems had completely hindered him from working. Moreover, it has not been shown whether and which precautions the representative of the appellant had taken in order to guarantee that in case of his being unavailable for health reasons other persons would act in order to observe the time limits. Such precautions may be expected from a professional representative in the framework of his duty to exercise all due care (J 41/92; T 324/90).
[3.2.5.4] Moreover, the professional representative of the appellant admitted that he consciously had not paid the third renewal fee because some invoices had not been settled (see above [3.2.4.2]), so that the omission to pay the fee cannot be said to be due to an isolated mistake in an otherwise satisfactory system in the private practice of the professional representative.
[3.2.5.5] Finally, after [having sent] the invoice to the appellant on July 23, 2008, the professional representative has not asked him once more if the fee was to be paid or warned him of the danger of a loss of rights. This omission as such is a violation of the duty of a professional representative to exercise all due care.
[3.2.5.6] Given that the only statement of the appellant regarding the question in the notification of the Board […] concerning the usual work process for fee payments is that he might (wohlmöglich) use the services of a professional third party for future fee payments, this statement is not relevant for the decision.
Irrespective of the fact that the letter of the PAVIS invoicing, information and service organisation of the patent attorneys in Germany, dated February 4, 2010, is only a service offer without any legal obligation, it is in any case irrelevant for the payment that had been missed in 2008, which underlies the appeal proceedings.
[3.2.6] As far as the – alleged – financial difficulties of the appellant are concerned, the Board has acknowledged in earlier cases that financial difficulties for which [the requesting party] was not responsible (unverschuldet) and which led the party to miss time limits for fee payments, can be a reason for allowing re-establishment. Such requests can only be allowed if the financial difficulties were serious and due to circumstances for which the requesting party is not responsible (die der Antragsteller nicht zu vertreten hat) and if the requesting party has exercised all due care in seeking financial assistance (J 22/88 ; J 9/89 [3]; T 822/93 [8]).
The appellant has not given any details concerning his financial difficulties, nor has he made credible (R 136(2)) that during the period under consideration (May to December 2008) he had no means that would have allowed him to make the payments, so that he was completely unable of paying the fees, and that he insistently sought financial assistance […].
In its notification dated December 29, 2009, the Board has expressly made the appellant aware of this lack of substantiation, but he has not made any further submissions on this topic in his statement of February 25 / March 1, 2010. His remark that he “requested an oral hearing of the appellant for explaining the difficult financial situation of the appellant … if the Board considers this to be necessary to establish [this point] in a credible way” is not sufficient as substantiation. Article 13 RPBA together with R 100(2) EPC would stand in the way of a substantiation within the framework of oral proceedings.
[4] For the reasons explained under [3] and in particular under [3.2.1] to [3.2.5], the professional representative has not taken the required due care concerning the payments under consideration, so that the requirements of A 122(1) are not complied with and the appeal is unfounded (unbegründet). […]
The appeal is dismissed.
Should you wish to download the whole decision (in German), just click here.
0 comments:
Post a Comment