The present appeal is directed against the decision of the Examining Division (ED) rejecting the request of the applicant for re-establishment in relation to the period for payment of the renewal fee for the sixth year.
The renewal fee for the sixth year had fallen due on June 30, 2008. On August 4, 2008, the Office sent the applicant a notice drawing his attention to the fact that the renewal fee had not been paid and that the fee, together with an additional fee, could still be validly paid within six months following the due date. However, the EPO received no payment by the expiry of that period. With a communication pursuant to R 112(1) dated February 6, 2009, the EPO informed the applicant that the application was deemed to be withdrawn.
By letter received on April 6, 2009 the representative filed a request for re-establishment of rights. In his request, the applicant stated that responsibility for payment of the renewal fees had been transferred to Diamond Wood International (“DWI”), a company that had the right to use the invention. The applicant further set forth that the fees in question had remained unpaid due to a misunderstanding on the part of the owner of the right.
In a letter received on July 14, 2009, the applicant maintained that responsibility for payment of the renewal fees had been transferred to DWI, and to his representative. He argued that he had exercised all due care by delegating this responsibility to a representative and the party being entitled to use the invention. He contended that his representative had been responsible for advising DWI on the due dates and amounts to be paid and that the representative had discharged his duty by sending a reminder (by e-mail) for payment on December 16, 2008.
In a communication dated September 28, 2009, the applicant was informed of the intention of the ED to reject the request for re-establishment of rights. A single reminder two weeks before the final deadline for payment of the renewal and the additional fee was considered to be insufficient to meet the required standard of care.
In his response received on December 7, 2009, the applicant argued that his representative had had no reason to verify payment by DWI at the end of December 2008, because the time limits for payment had been observed by DWI in the previous years. Thus, this payment arrangement had worked well up to December 2008 when DWI forgot to pay.
By decision of January 27, 2010, the ED rejected the request for re-establishment of rights on the grounds that the applicant had failed to show that all due care had been taken: a single reminder two weeks before the final deadline for payment was considered to be insufficient to meet the required standard of care.
Here is what the Board had to say:
[3.1] Pursuant to A 122(2) and R 136(2), first sentence, the request for re-establishment of rights must state the grounds on which it is based and must set out the facts on which it relies. As a condition for the admissibility of the request, a statement of grounds which is sufficiently substantiated must be submitted within the time limit for filing the request for re-establishment of rights (J 19/05 [4]). If this requirement has been fulfilled, it is then admissible to supplement the facts on condition that the supplementary submissions do not extend beyond the framework of the previous submissions (J 5/94 [2.3]; J 19/05 [5]; T 585/08 [9]).
[3.2] A request for re-establishment of rights complies with the requirement of R 136(2), first sentence, if a conclusive case is made, setting out and substantiating the grounds and facts on which the request relies. Thereby it is ascertained that the factual basis for the requested decision is not altered after the expiry of the time limit for the request (cf. J 19/05 [4-5]; T 585/08 [9]). Therefore, the request for re-establishment of rights must set forth the precise cause of non-compliance with the time limit concerned (i.e. a fact or obstacle preventing the required action within the time limit), specify at what time and under which circumstances the cause occurred and was removed, and present the core facts making it possible to consider whether all due care required by the circumstances had been taken to comply with the time limit concerned (cf. J 19/05 [4]).
[3.3] In the request for re-establishment of rights dated 6 April 2009, the [applicant] merely stated that responsibility for payment of the renewal fees had been transferred to DWI, who had the right to use the invention. The [applicant] further set forth that the omission (i.e. non-compliance with the time limit for payment of the renewal fee) was due to a “misunderstanding” on the part of DWI.
[3.4] Although the [applicant] invoked a misunderstanding as obstacle preventing payment of the renewal fee, he did not give any explanation as to of what kind the alleged misunderstanding was, nor when and under which circumstances it had occurred. Nor did he explain how the error led to the omission and why it should be considered excusable. Thus, the actual circumstances surrounding the misunderstanding that allegedly led to the omission were not addressed at all in the request for re-establishment of rights. Moreover, there were gaps in the submissions regarding the respective duties and responsibilities of the persons involved in the payment of the renewal fees.
[3.5] The board cannot gather, from the submissions filed within the time limit for the request for re-establishment of rights, facts or grounds which could be considered as a conclusive explanation for the failure to observe the time limit for the payment of the renewal fee. The request relies on general statements only and contains no specific facts. Given the a priori indefinite number of possible “misunderstandings” as reasons for non-observance of the time limit, as well as the total lack of any specific facts in the request, variable explanations are conceivable as to who had misunderstood what and when this had happened.
Since the submissions filed within the time limit for filing the request for re-establishment of rights do not substantiate a set of circumstances allowing to determine whether any subsequent introduction of new grounds or facts in support of the request would make out a new factual case or would as such be a complement to the submissions filed within the time limit, the latter do not satisfy the requirement for substantiation under R 136(2), first sentence.
[3.6] Neither the [applicant’s] submissions dated 14 July 2009 nor his letter dated 7 December 2009 filed in response to the communications of the first instance [...] assist the [applicant’s] case. A failure to submit, within the time limit for filing the request for re-establishment, a statement of grounds containing at least the core facts on which the request relies cannot be subsequently remedied by the addition of further facts, as the case law only allows the [applicant] to supplement, but not to alter, the facts set out in the submissions made within the time limit for filing the request for re-establishment. Facts submitted only with the statement of grounds of appeal are even less able to remedy a lack of substantiation of the initial request for re-establishment of rights (J 18/98 [4, 7]).
[3.7] But even if the [applicant’s] letters dated 14 July 2009 and 7 December 2009 were to be taken into consideration, these submissions would not remedy, but on the contrary would confirm, the inadequate substantiation of the initial request for re-establishment. In his letter of 14 July 2009, i.e. more than three months after the filing of the request for re-establishment and well after the expiry of the period for requesting re-establishment of rights, the [applicant] submitted as a new element of fact that his representative had been responsible for giving renewal advice to DWI. The [applicant] contended that the representative had discharged his duty by sending a reminder for payment on 16 December 2008. In response to the communication pursuant to A 113(1) dated 28 September 2009, the [applicant] introduced a further element of fact by arguing that his representative had had no reason to verify payment by DWI at the end of December 2008, because the time limit for payment had been observed by DWI in the previous years. On the other hand, the [applicant] no longer relied on a misunderstanding on the part of DWI as the reason for non-observance of the time limit. The [applicant] did not advance any other fact or obstacle that had prevented the payment of the renewal fee by DWI and could be regarded as pertinent for excusing the omission. Instead, he acknowledged in his letter of 7 December 2009 that “the payment of the renewal fee for the EP-application was forgotten by DWI”. The variation in the [applicant’s] submissions and the resulting diversity of conceivable explanations for the omission show that the initial request for re-establishment did neither set out or substantiate in sufficient detail the core facts making it possible to consider whether all due care required by the circumstances had been taken to comply with the time limit concerned.
[3.8] In view of the above the board comes to the conclusion that the submissions filed by the [applicant] before the expiry of the period for requesting re-establishment of rights neither state grounds nor set out facts in support of such a request as required by R 136(2), first sentence. The request for re-establishment of rights is therefore inadmissible.
The whole decision can be found here.
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