The present decision deals with an appeal against the decision of the opposition division (OD) to revoke a European patent owned by a Spanish company.
The Dutch representative filed the notice of appeal in Dutch, with an attached translation in English. The reduced appeal fee was paid on the same day.
The Board expressed its preliminary opinion that the notice of appeal filed in Dutch by a legal entity having its principal place of business in Spain was not in compliance with A 14(4) and that it intended to deem the appeal as not having been filed.
The patent proprietor challenged the Board’s preliminary opinion along the following lines:
(a) To the notice of appeal in Dutch, dated 19 December 2008, was attached the same letter in English, which has to be considered by itself as the notice of appeal in the official language of the proceedings.
(b) The principle of equity underlying R 6(3), which Rule aims at providing a positive compensation to applicants and parties from a Contracting State not having an official EPO language, as interpreted in decision G 6/91 [17], should allow for a remedy.
(c) A warning from the EPO was legitimately expected by the appellant. Since the EPO was aware of the patent proprietor’s nationality, the language deficiency associated with the notice of appeal was readily identifiable and a timely warning from the EPO would have offered the patent proprietor the possibility to correct it in due time.
(d) By payment of the reduced appeal fee, only 20% of that fee were missing, which should be considered as a small amount lacking in the meaning of Article 8(1) RRF.
The patent proprietor also requested re-establishment of rights under A 122. It asserted an isolated clerical mistake having been made by the administrative department of its professional representative in the exceptional circumstances of exceptional work pressure since a colleague had left the administrative department and because the testing phase of a new digital document management system was being executed. Having signed the notice of appeal in Dutch, the professional representative had noticed the error and signed a corrected document in English. However, his assistant, in the above-mentioned context, placed the wrong document in an envelope and sent it out. When checking the file, the head of the department of portfolio assistants noticed the copy of the letter in English in the file and as a consequence removed the pending deadline from the monitoring system. This was a one-time error in a well-functioning system of monitoring time-limits and performing cross-checks, i.e. despite all due care. A new notice of appeal, also dated 6 July 2009, accompanied the request for re-establishment of rights.
Notice of appeal in Dutch
[2.1] It is not challenged by the appellant that under A 14(4) the notice of appeal filed in Dutch is in a non admissible non-EPO official language for a patent proprietor having its principal place of business in Spain. The residence or principal place of business of the professional representative used is of no relevance in that matter (T 149/85 [6]). Therefore, in accordance with A 108, the corresponding appeal is deemed not to have been filed.
Translation in English
[2.2] The letter in English, also dated 19 December 2008, expressly indicates that it is “a translation of the notice of appeal” of the same date filed in Dutch. Therefore, its legal effect depends on said notice of appeal filed in Dutch and it cannot be considered as such to be the proper notice of appeal. The Board is of the opinion that G 6/91 [10] and T 1152/05 [2.4-6] have to be followed in the present case. These decisions indicate in the clearest possible way that a “translation cannot become the original”.
G 6/91 [12], cited by the appellant, is directed to the question of a possible confusion between the “translation” and the original document, when the “translation” is filed earlier than the original. The present case clearly distinguishes itself from such a situation, since the translation was expressly qualified as such, making absent any possible confusion, and filed together with the original notice of appeal. Therefore, in the present case, the Board does not see point [12] as more relevant than point [10], nor even simply relevant.
The appellant also points out that the facts of the case having led the referral to the Enlarged Board of Appeal in G 6/91 are different to the ones of T 1152/05 and of the present case. The Board sees G 6/91 [10] as a legal analysis the conclusions of which not being restricted in any way to the specific facts of the case referred.
The appellant finally refers to the difference in legal consequences between T 1152/05, where only the appeal of the patent proprietor was deemed not to have been filed but the appeal proceedings were in any case continued on the basis of the opponent’s appeal, and the present case, where a complete loss of rights would result from the patent proprietor’s appeal being deemed not to have been filed.
First of all, the Board sees no legal basis for a possible distinction in applying the relevant A 14(4) on the basis of the possible legal consequences. Further, the legal consequence of the appeal being deemed not to have been filed is the same in both cases, i.e. the loss for the party concerned of the right to be an appellant and to challenge in its favour the impugned decision.
Principle of equity underlying R 6(3)
[2.3] The appellant supports that the “principle of equity underlying R 6(3)” should allow for a remedy in the present case.
The Board cannot see in R 6(3) a “principle of equity” to be broadly applied. G 6/91 [17] only refers to R 6(3)’s aim of equity in interpreting that provision. Further, R 6(3) is the implementing rule to A 14(4) and explicitly restricts its scope of application to the natural or legal persons referred to in said article, i.e. those having filed an appeal in a language admitted by that provision.
In the present case, on the contrary, Dutch is not a language to be admitted for the filing of an appeal by a patent proprietor having its principal place of business in Spain. Therefore, neither A 14(4) nor the specific content of its implementing R 6(3) can find any application in the present case.
Legitimate expectations
[2.4] The appellant further argues that the EPO should have warned it, for correction in due time, of the impending loss of rights following from the easily identifiable deficiency of using a non-admissible non-EPO language in its notice of appeal. It cites J 13/90 [9], stating that if, contrary to the principle of good faith, the EPO fails to draw the applicant’s attention to a deficiency, it cannot claim that a loss of rights has ensued if the deficiency is later corrected.
The principle of protection of legitimate expectations, or of good faith, is effectively recognised by the case-law of the Boards of Appeal. However, this principle does not impose any obligation on a Board to notify an appellant if there is no indication in the notice of appeal or in any other document filed in relation to the appeal from which it could be inferred that the lack of such notification would result in a loss of rights for the appellant (G 2/97 [order]). There is no obligation on a Board to warn a party of deficiencies within the area of the party’s own responsibility. To take the principle of good faith that far would imply, in practice, that the Boards of Appeal would have to systematically assume the responsibilities of the parties to proceedings before them, a proposition for which there is no legal justification in the EPC, nor in general principles of law (G 2/97 [4.2]).
This distinguishes the facts of the cited J 13/90 from the situation of the present case. In this decision, the deficiency was further readily apparent from the request itself whereas in the present case it is not readily apparent from the notice of appeal, only referring to the name of the appellant, without any indication of the location of its principal place of business. The Board therefore sees in the present case no breach of the legitimate expectations of the appellant.
[2.5] In view of the above, the Board concludes that the appeal of the patent proprietor, on the basis of both its letters dated 19 December 2008, is deemed not to have been filed under A 14(4) in accordance with A 108. The payment of the respective appeal fee has, as a consequence, no legal basis and is to be reimbursed.
Small amount of fee lacking
[2.6] The appeal being deemed not to have been filed, there is no need for the Board to examine whether or not the missing 20% of the appeal fee should be considered as a small amount lacking in the meaning of Article 8(1) RRF. In any case, even following the appellant’s position that the English translation should be considered as the notice of appeal, the Board would follow the reasoning of T 905/90 […], i.e. the missing 20% of the appeal fee could not be considered a small amount lacking, with the same outcome that the appeal would be deemed not to have been filed.
Request for re-establishment of rights
[3] The appellant asserts an isolated clerical mistake having been made by the administrative department of its professional representative in the exceptional circumstances of exceptional work pressure since a colleague had left the administrative department and because the testing phase of a new digital document management system was being executed.
A 122(1) requires for a re-establishment of rights to the patent proprietor that he demonstrates having missed the time limit despite all due care having been taken as required by the circumstances. According to the established case-law of the Boards of Appeal, due care is considered to have been taken if the non-compliance with the time limit results either from exceptional circumstances or from an isolated mistake within a normally satisfactory system, in particular a proper organisation of administrative procedures.
In the present case, the error has been made by the assistant of the professional representative, who prepared a notice of appeal in Dutch language for a patent proprietor having its principal place of business in Spain, and by the professional representative who signed that document. Although having been noticed by the professional representative after his signature, the error has not been effectively corrected.
[3.1] An excessive work pressure is usually not recognised as an exceptional circumstance. It is part of the representative’s organisational duty in exercising all due care to make contingency arrangements to ensure that all professional duties are fulfilled and that office services are maintained (Singer/Stauder, The European Patent Convention A Commentary, third edition, Article 122, marginal number 95).
As concerns the fact that a colleague had left the administrative department, it is not demonstrated among others how recent that was or whether it was unexpected, nor which measures had been taken to compensate for that absence and to ensure correct functioning of the administrative department nor the causal relation between the absence of that person and the problem at issue.
The installation of a new computer system is also not an exceptional circumstance, the resulting burden on employees has to be considered as foreseeable and containable, had appropriates measures been taken in good time (T 489/04 [5]). This seems to apply by analogy to the testing phase of the new digital document management system of the present case.
[3.2] Since the Board in the present case does not see exceptional circumstances, it has to consider if an isolated mistake occurred within a normally satisfactory system. From the general description given by the appellant, it appears that it was the intention of the professional representative’s firm to have a system of monitoring and checking in place, able to detect and to correct errors.
In the present case, the error has been noticed by the professional representative after signature of the wrong document. However, even after signature of a new corrected document, the wrong document has not been shredded or at least definitively isolated from the file. On the contrary, it has been placed by his assistant in an envelope and sent out. Further, when placing the documents back in the file, the assistant did not see that the corrected document had not been sent out but was still present as an original in the file. When checking the file for removing the deadline from the management system, also the head of the department of portfolio assistants did not notice that the original to be sent out was still in the file, with the copy of the corrected letter, and therefore did not perform an effective check. The deadline was then removed on the basis of a document which had not been sent. In the circumstances of this case, the assistants of the professional representative had to be aware of the particular importance of the notice of appeal to be filed in the correct language, of the absolute criticality of the error detected by the professional representative and of its possible fatal consequences for the appeal and for the patent at issue. That should have justified a particular attention to the document to be sent out. From the above and in particular from the cascade of failures to effectively correct the error detected, the Board considers that the present situation does not result from an isolated mistake in a normally satisfactory system.
The Board is as a consequence of the opinion that the appellant has not demonstrated to have taken all due care in the specific circumstances of the present case. Therefore, the Board considers that the request for reestablishment of rights has to be refused.
Second notice of appeal
[4] Since the Board refuses the request for reestablishment of rights, the notice of appeal dated and filed on 6 July 2009, i.e. more than two months after the notification of the impugned decision, does not comply with A 108 and is therefore deemed not to have been filed. As a consequence the payment of the corresponding appeal fee, requested by letter dated 6 July 2009 to be debited from the appellant’s account lacks legal basis and is as a consequence also to be reimbursed. […]
The appeals are deemed not to have been filed.
Should you wish to download the whole decision, just click here.
NB: This decision has already been reported on Laurent Teyssèdre’s blog. I much like the (dare I say, tongue-in-cheek) illustration he chose.
6 comments:
In my view, both this decision and T 1152/05 misinterpret G 6/91. See also my comments on T 1152/05 here.
According to Art. 14(4), the document in Dutch is deemed not to have been filed. Filing a translation for this document in the sense of R. 6(2) is therefore not even possible.
According to point 12 of G 6/91, a translation is only recognisable as such if the original is available when it is received. Otherwise, the document must be considered the original.
In the present case, no "original" for the document labelled "translation" is available, since the original is deemed not to have been filed. The document labelled "translation" therefore counts as an original document.
The Board actually considers this argument, but rejects it for the reasons that:
1. the document in English states that it is a translation;
2. the documents in Dutch and English were filed together.
Regarding 2., this misses the point that the document in Dutch is deemed not to have been filed, and that in any case the EPC does not provide for a translation of that document.
Regarding 1., I am convinced that G 6/91, point 12, does not make an exception for this case. The point of point 12 is that one cannot first file a translation, and some days later the original. Certainly this cannot be circumvented by explicitly labelling the document filed first as "translation".
I tend to agree with you. The way the translation was dealt with appears to be very severe.
Indeed, and such a harsh approach does not seem to have been the intention of G 6/91 at all.
I think in this case it does not make much difference, since the missing 20% is not a small amount anyway, but if the proprietor had paid the full appeal fee in expectation of a reimbursement, everything would have been fine had the Board followed my interpretation of G 6/91.
Btw, I wonder if the proprietor would have stood a chance if he had used R. 139 EPC to replace the notice of appeal in Dutch by one in Spanish? The applicant's true intention was to file an appeal and make use of the 20% fee reduction, and the mistake was to do this in Dutch instead of Spanish.
Good Morning .
A good site
@Myshkin
i find your argument interesting.
However, if this interpretation is followed then there will never be any sanction for using the wrong language: a) if translation is filed before the original, then translation becomes original independently of the language of the original (G6/91 r 12); b) if translation is filed with or after the original and the original is filed in the wrong language (so deemed not to have been filed) then tranlsation becomes again the original. No harm done - apart from the loss of the reduction of the fee, that is.
I believe that this was not the intention of the legislator.
When the translation was filed - simultaneously with the original - the original was available at the EPO and the translation was identified to be what it was: a translation (G6/91 reasons 12). It was only later, when assessing admissibility, that the problem was recognised and the notice "deemed" not to have been filed. But at the time of the filing of the translation the original was available at the EPO.
@Manolis:
"It was only later, when assessing admissibility, that the problem was recognised and the notice "deemed" not to have been filed."
Are the criteria for determing whether documents are deemed to (not) have been filed to be applied when determining admissibility, or are these criteria applied in an earlier phase? I would think that determining which documents have (legally) been filed comes first. Admissibility is then determined on the basis of the documents that have (legally) been filed. (I haven't tried to find decisions to support this, though.)
This still leaves open the possibility that matching "translations" with "originals" comes before the application of Art. 14(4) and R. 6(2) EPC. I don't see why though, since it is Art. 14(4) EPC that is the basis for the concept of a document being a "translation" of another document. In my view, if Art. 14(4) does not apply to a document, e.g. a document in Dutch filed by a Spanish applicant, there is simply no legal possibility for filing a translation of that document. In that case a document labelled "translation", even when filed at the same time, is not a translation in the sense of Art. 14(4), R. 6(2) and G 6/91, point 10.
Regarding the sanction: is it not enough that the document in the wrong language is ignored? This may result in a time limit being missed (R. 6(2)) or the failure to pay a fee (R. 6(3)). If the document labelled "translation" is received in time (i.e. before the expiration of the original time limit, not the one of R. 6(2)), and any required fee is fully paid, why punish the applicant for this silly mistake that did not hurt the public or the EPO in any way?
Or let's put it this way: why should an applicant be worse of when filing a document in the wrong language than when not filing that document at all? If the applicant in T 41/06 had not filed the document in Dutch at all, then certainly the document stating "this is a translation" would have been considered an original notice of appeal. Why should the fact that he also filed a document in Dutch hurt him? Of course, if the law says so, then so be it, but in this case the law seems open to interpretation.
(Btw, note that not or wrongly signing a document is not sanctioned at all. If anything, it is rewarded.)
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