Friday, 11 March 2011

J 20/10 – No Fallback On Inventors

What is noteworthy in this decision is not so much the outcome or the reasoning of the Board but the arguments presented by the applicant, whose request for re-establishment into the time limit for paying the renewal fee had been rejected by the Examining Division (ED) in a decision taken on April 12, 2010 and notified to the applicant on April 18, 2010.

The applicant (the SVAB company) filed an appeal on May 20, 2010. The statement of grounds of appeal was received by the EPO on July 9, 2010. In a letter dated August 1, 2010, the applicant requested an extension of the time limit for paying the appeal fee. Unsurprisingly, the EPO replied that such a request could not be granted.

Finally, the appeal fee was paid on August 3, 2010. The applicant was informed on September 30, 2010, that the appeal was deemed not to have been filed.

In a letter dated October 23, 2010, the applicant requested that the consequences of the late payment not be opposable to Mr Eckendorff, inventor and manager of the SOREV company, which was the sole shareholder of the SVAB company.

The applicant pointed out that Mr Eckendorff, who was not a party to the proceedings, was not responsible for the fact that the renewal fee, which should have been paid by the SVAB company, had not been paid. When confronted with these shortcomings, he had decided to dissolve this company and to pay himself the sums that were due in order to maintain the patent.

The applicant also indicated that it was only after the time limit had expired that the EPO pointed out that the time limit for paying the appeal fee could not be extended.

*** Translated from the French ***

[1] Pursuant to A 108 the notice of appeal, to be filed within two months of notification of the decision, shall not be deemed to have been filed until the fee for appeal has been paid.

[2] In the present case, it is not contested that the appeal fee has not been paid within this time limit. The payment was made on August 3, 2010, but it should have reached the EPO on June 22, 2010, at the latest.

[3] The answer to the request for extension of the time limit filed on August 1, stating that this time limit could not be extended, was given as early as August 9, 2010.

It is a fact that on the day on which the extension was requested, the time limit had already expired. Nevertheless, in case this was the argument underlying the explanations of the applicant, it has to be noted that this situation was not caused by the EPO. Incidentally, the EPO is not obliged to remind the applicants which fees have to be paid, and which are the applicable time limits.

[4] The EPC does not contain any provision allowing a legal consequence of a failure to pay appeal fees to be deemed not to be opposable to the inventor or without effect as far as the inventor is concerned, thereby allowing him to pursue the proceedings in his name. It should be noted that no request for a transfer of the application under consideration has been filed with the EPO and that the EPO is not officially aware of the dissolution of the SVAB company.

[5] As the time limit for payment has expired on June 23, 2010, as indicated above, [the Board] can only note that the appeal is deemed not to have been filed and close the file.

For some reason unbeknownst to me, the Board did not order the reimbursement of the appeal fee.

Should you wish to download the whole document (in French), just click here.

To have a look at the file wrapper, click here.


Myshkin said...

The "closing of the application" document of 09.02.2011 seems to indicate that the appeal fee was in fact reimbursed.

Since it's normal for the EPO to reimburse fees that were paid without legal basis, I guess it's not necessary for the Board to order so.