Monday, 21 March 2011

J 7/08 – Let’s Be Formal

At the beginning of this case, there was a failure to pay the renewal fee for the third year. The EPO sent a notification pursuant to R 69(1) EPC 1973 dated March 16, 2006. On May 26, 2006, the attorney-at-law representing the applicant requested re-establishment and pointed out that the renewal fee plus the additional fee had already been paid on December 23, 2005 at a German bank.

The request for re-establishment was refused in a document dated February 13, 2006. EPO Form 2901 was used, which comprises the paragraph headers “Decision” (Entscheidung), “Reasons for the decision” (Entscheidungsgründe) and “Information on legal remedies” (Rechtsmittelbelehrung).

On the right upper margin of the form the contact details for the The Hague Office of the EPO are given in small print. Below the indication “formalities officer” (Formalsachbearbeiter) as well as a name and telephone numbers in Munich and The Hague are given. On the bottom left there was the official seal of the EPO.

(click to enlarge)
The applicant’s reaction – now filed by a professional representative - was twofold.

First, it contested that the document was indeed a legally effective decision, because the document was seriously deficient on a formal level: it could not be seen from the “decision” which department of the EPO had made it, which made it impossible for the applicant to check whether this department was competent.

As a precaution, the applicant also filed an appeal against the “decision”.

In what follows, the Board deals with the formal objection. Its musings on the substance of the decision will be the object of a forthcoming post.

*** Translated from the German ***

Starting point

[1.1] The Board can only deal with the written submission of the applicant […] it has to decide on the appeal - filed by way of precaution - against the document issued by the EPO on February 13, 2008. As a matter of fact, pursuant to A 21(1) EPC 1973, the Boards of appeal are responsible for the examination of appeals from the decisions of the Receiving Section, Examining Divisions (ED), Opposition Divisions and of the Legal Division. Pursuant to A 106(1) also, appeals can be filed against the decisions of these departments only.

The EPO document dated February 13, 2008, therefore, would have to be a decision of one of these departments. The applicant has made it clear that, when stating that there was no “legally effective” decision, it presumed that there was no decision at all. As a matter of fact, the applicant has filed its appeal by way of precaution only and has requested that if a new first instance decision was to be taken, the arguments made in the statement of grounds of appeal be taken into account.

The Board points out that it would have to leave the treatment of the applicant’s submission dated April 9, 2008 to the first instance if there was no decision. This would hold true, irrespective of the fact that the formalities agent had referred the appeal to the Board..

The existence of a decision

[1.2] According to the case law of the Boards of appeal, in case of doubt, the question of whether a document constitutes a “decision” or not depends on the substance of its content and not on its form (see “Case Law of the Boards of appeal of the EPO”, 6th edition, 2010, VII.E.7.2.2, in particular J 8/81).

The document under consideration here, dated February 13, 2008, deals with the applicant’s request for re-establishment into the time limit for paying the third renewal fee plus additional fee. EPO Form 2901 comprises the paragraph headers “Decision”, “Reasons for the decision” and “Information on legal remedies”. The reasons for the decision, which were annexed (EPO Form 2916) present the facts of the case, and the paragraph bearing the header “Reasons for the decision” explains why, based on the applicable law, the request of the applicant has to be refused. The document finishes with a “decision phrase” (Entscheidungsformel) which expressly rejects the request for re-establishment.

It follows from all of this that the document is to be classified as a decision, both according to form and contents.

The applicant is of the opinion that there is no decision because the document under consideration does not state which department of the EPO has issued it.

The Board points out that pursuant to R 9(3) EPC 1973 (now R 11(3) EPC), the issuing of decisions can be entrusted to formalities officers as an allocated duty. Moreover, it can be seen from the circumstances of the present case that the formalities officer has taken the impugned decision for the ED. This follows from the following considerations:

It is true that the decision does not state the department for which the formalities officer was acting. However, the “communication pursuant A 113” dated August 21, 2006, which refers to the request for re-establishment dated May 24, 2006, and which had prepared the decision under consideration, was signed by the very same formalities officer as the one [who signed] the decision under consideration (indicating the Munich telephone number that was also given in the impugned decision), expressly “in the name of the ED”. The notification of loss of rights dated March 16, 2006, was also issued by the ED, which was expressly mentioned at the end of the communication (although the letter head indicated “EPO customer service”. Therefore, it is clear that the formalities officer has also issued the impugned decision in the name of the ED.

This assumption is not contradicted by the fact that the letter of the “EPO customer service” of DG1 of the EPO, dated September 2, 2005, contained a reference to A 86(2) EPC 1973 and Article 2.5 RRF 1973 concerning the payment of the renewal fee for the third year, on EPO Form 2522, without any indication of an employee. As a matter of fact, this [letter] is a voluntary service of the Office. The EPC does not contain any provision according to which the Office has to notify the applicant or its representative that fees – and, therefore, also the renewal fee for the third year – have not been paid in due time (see J 12/84 [4]). Therefore, the activities of the “EPO customer service” do not allow to draw the conclusion that the formalities officer acted for a department other than the ED when issuing the impugned decision.

All these circumstances could have been known (erkennbar) by the applicant. As a consequence, its assertion that it was unable to check whether the department issuing the decision was competent is not correct.

As the formalities officer acted in the name of the ED, there is a decision of this department mentioned in A 21(1) EPC 1973 and A 106(1) EPC. This holds true, not only in view of the substance of the content, which the case law of the Boards of appeal considers decisive, but also in view of the possibility of recognizing (Erkennbarkeit) the department issuing the decision. The question of whether such a perceptibility is a prerequisite for acknowledging that [a document] is a decision may, therefore, be left open.

Incidentally, it is irrelevant for the existence of a decision whether this decision has been issued in a legally effective way. A decision that is legally defective can, as a rule, only be overcome if a Board of appeal sets it aside after an appeal has been filed. Therefore, as far as the existence of a decision and the necessity of filing an appeal to set it aside are concerned, it is also irrelevant, in the present case, whether the formalities agent was indeed competent for issuing the decision. Rather, it was necessary to file an appeal so that the issued decision could possibly be set aside, as requested by the appellant. Therefore, the appeal filed by way of precaution has to be understood as an appeal and the applicant is to be considered as appellant.

Whether the decision was issued by a competent department is to be examined when the allowability of the appeal is assessed. This question cannot render moot the admissibility of the appeal (T 9/00 [1a]).


[1.3] As the EPO document dated February 13, 2008, is a decision, the letter of the applicant dated April 9, 2008, is to be considered as an appeal. As there are no reasons to doubt that the remaining admissibility requirements are fulfilled, the appeal against this decision is admissible.

We shall have a look at the allowability of the appeal in a forthcoming post.

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

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