Tuesday, 9 November 2010

J 8/09 – Out Of Proportion

This decision is a good reminder of some principles that apply to requests for re-establishment.

The applicant appears to have acted on his own, without any professional help. As is often the case in this configuration, the applicant forgot to pay a renewal fee.

To be more precise, the renewal fee for the fourth year, which fell due on 30 November 2007, was not paid. By a letter dated 4 January 2008 the EPO drew the appellant’s attention to the possibility of paying the fee plus an additional fee within a grace period of six months (R 51(2)). Since no fee was received a “Noting of loss of rights under R 112(1)” communication was sent on 10 July 2008, informing the appellant that the application was deemed to be withdrawn and that he might request reestablishment of rights. The communication was returned undelivered to the EPO and re-sent first on 7 August 2008 and again on 5 September 2008. On 16 September 2008, an employee of the EPO telephoned the appellant concerning a payment made by him which could not be allocated to a specific file. In that conversation he was at his request told how to apply for re-establishment of rights. By a letter dated 24 September 2008, received at the EPO on 13 October 2008, the appellant requested reestablishment of rights and paid all the relevant fees.

[4.1] Under A 122(1), an appellant for a European patent, who in spite of having taken all due care required by the circumstances, was unable to observe a time limit vis-à-vis the EPO which has the direct consequence of causing in particular, the deeming of the application to have been withdrawn, shall upon request have his rights re-established.

[4.2] In considering whether “all due care required by the circumstances” has been taken, the circumstances of each case must be taken as a whole (see T 287/84) and must be judged in view of the situation existing before the time limit expired. That means the measures taken by the party to meet the time limit must only be judged with regard to the circumstances as they were at that time.

Not disregarding the fact that the appellant is an individual appellant acting in person, i.e. without the help of a professional representative, the Board must take into consideration whether he exercised the required care in the course of all the procedural steps to ensure that he did what was necessary in time to avoid any loss of rights (see J 27/01 [3.3.1]).

In this respect, the fact that the appellant is a surgeon without any specific knowledge about procedure and formalities under the EPC does not constitute a ground for re-establishment of rights.

In general, a mistake or ignorance of the law is an insufficient ground for re-establishment: see J 5/94 [3.1], J 27/01 [3.3.1], J 2/02 [8] and J 6/07 [2.4-5]. In the last cited decision, this Board expressed the view that
“Taking of due care requires that a person engaged in proceedings before the EPO, even when a layman, should acquaint himself with the relevant rules”
and further that
“The requirement to take all due care means that he must take all possible steps to ensure that he can do, properly and punctually, whatever is required during the grant procedure to prevent any loss of rights.”
Accordingly, the circumstance that the appellant was absent from his usual residence between 1 January 2006 and 30 June 2008 because he was then working in Aveiro, in the North of Portugal, does not play any relevant role in the present case. The Board can understand that this period of time was a specially difficult one for the appellant and also that it could have caused some disruption in attending to his personal affairs. However, these explanations are all related to the fact that the appellant was waiting for a reminder from the EPO which he never received (namely the letter dated 4 January 2008 ) and not to his awareness of the due date for the payment of the renewal fee.

As already stated by the Examining Division (ED), following established case law, the Notice drawing attention to the due date for the payment of the renewal fee is a voluntary service on the part of the EPO and no claim for re-establishment can be derived if the EPO fails to issue or if an applicant fails to receive such a communication. Consequently, the argument based on the reliability or otherwise of the Portuguese postal service is not relevant either.

[4.3] As correctly stated by the ED, the appellant did not provide any information regarding his system for monitoring fee payments, so the Board cannot assess whether this system, if any, is efficient enough to avoid undue delay.

[4.4] The circumstance that the appellant filed a second and later patent application is also irrelevant insofar that there is no evidence in the file that, for instance, the appellant paid renewal fees for one application instead of the other, or in any way made a mistake based on actual confusion between the two applications.

[4.5] Concerning the principle of proportionality, the appellant relies on the fact that the present patent application is the subject of an agreement with a Swiss company which is already producing the system to which the application relates and argues that, since the loss of rights would jeopardise the production, the consequence of a single late payment of the renewal fee would be disproportionate. In his latest submission he added that this company refuses now to pay royalties and is trying to copy the system using another name.

The Board agrees with the appellant that the principle of proportionality can be defined as a duty for a court or an administration to find a balance between a party’s error and the legally ensuing consequences when a margin of weighing the importance of the circumstances exists (see J 5/97 [5]).

However, when the Boards of Appeal refer to the principle of proportionality in the case law, it is never as a main ground but in support of other grounds already substantiating, to a certain extent, the allowance of the appeal especially when a reliable system for managing the time limits and an isolated mistake within such a system can be assessed (see J 44/92 and J 48/92).

As already stated above […], the Board cannot find in the submissions of the appellant any description of a system for managing the time limits for the payment of fees. Since the appellant fails to place the Board in a position to assess the reliability of any such system, the Board is unable to assess whether an error in such a system could be treated as an isolated mistake so as to allow re-establishment. For these reasons, the principle of proportionality does not apply in the present case. […]

The appeal is dismissed.

Should you wish to download the whole decision, just click here.


Anonymous said...

Cases from private applicants which are prosecuted without the assistance of a qualified representative very often stumble on the question of the first annual renewal fee.

Private applicants usually understand neither the objections initially raised, nor concepts such as added subject-matter or claims.

I once attempted to avoid jargon and made my communication as plain and thorough as possible for a private applicant -- or so I thought. The result was more than a dozen pages with explanations, but I found out that my efforts had been in vain. I tried suggesting as diplomatically as possible that the applicant consults a representative (even though he was under no obligation to do so), warning him that amending an application could be tricky. Alas, to no avail, this was not at all welcomed, and the applicant started implying that I was being partial and out to get him (another typical reaction). The unpaid renewal fee solved my problem of drafting a refusal for an increasingly messy and convoluted file.

In the present case I feel sorry for the hapless applicant who appears to have thoroughly and irremediably bungled his case right from the start, even though he appeared to possess a worthwhile invention, since he managed to get a manufacturer to put his signature on some sort of license agreement. Looking at the tenor of the "contract" I find this rather extraordinary, as the partner himself filed many applications to his name and thus presumably has some understanding and knowledge of patents and what they involve.

The application does not claim the priority of the earlier Portuguese petty patent (probably expired by now). The EP application was filed more than one year later after the PT one; I would have been very worried about any prior public disclosure, to patients for instance.

oliver said...

Thanks for this thoughtful comment. It is interesting to see how the tone of the letters changes. In the first letters to the ED the applicant uses arguments a professional would be very reluctant to use (e.g. that his maid is not very smart ...), but when you read the statement of grounds of appeal citing case law and invoking the principle of proportionality, it is clear that there was some professional advice. Unfortunately, it came too late.