Friday, 29 April 2011

R 18/10 – Last Day Action

Remember J 8/09? In this decision, which I have presented in an earlier post, the Legal Board of appeal dismissed a request for re-establishment filed by a Portuguese physician acting on his own, who had forgotten to pay a renewal fee. It is one of those cases where you can see that professional help is needed in proceedings before the EPO, and this becomes frightingly clear when looking at the way in which the petition proceedings were conducted.

The decision of the Legal Board was dated August 23, 2010 and posted on August 31, 2010. So the 2 month time limit for filing a petition (A 112a(4)) expired on November 10, 2010.

The applicant sent the following letter to the Legal Board on October 14.

The same letter was sent to the Chairman of the Administrative Council (!) on October 19.

The applicant paid the fee for the petition on the very last day, i.e. November 10. It was credited to a bank account held by the EPO on November 11.

On the same day, he sent a more formal petition for review to the EBA. It was received on November 19 and contained the following letter:

In the proceedings before the Enlarged Board (EBA), the applicant submitted that he posted his request for review on 10 November 2010, i.e. in due time because in Portugal the date of the receipt of a registered letter was considered the same as the date of posting.

Needless to say, the petition did not succeed, but at least the petitioner recovered the petition fee:

[1] Pursuant to A 112a(4) in conjunction with R 108(1) a petition for review based on the grounds of violation of right to be heard (A 113) or another fundamental procedural defect under R 104 shall be filed within two months of the notification of the contested decision. Within the same period the prescribed fee has to be paid.

[2] The calculation of periods in cases before the EPO is governed by the provisions of the EPC and not, as the petitioner seems to assume, by Rules of the national law of the Contracting States. Thus, R 131(2), last sentence, applies. This provision rules that where a procedural step is a notification, the relevant event shall be the receipt of the document notified, unless otherwise provided. According to R 126(2) in cases where notification is effected by registered letter such a letter is deemed to be delivered to the addressee on the tenth day following its posting. The decision in case J 8/09 was posted on 31 August 2010 with the consequence that regardless of the fact that actual notification occurred on 6 September 2010 the two months time limit under A 112a(4) ended pursuant to R 126(2) on 10 November 2010.

[3] With respect to the Decision of the President of the EPO dated 14 July 2007 (OJ EPO Special Edition No. 3, 2007, I.1, p. 119) concerning the application of R 133(1) on the late receipt of documents an exception is made in so far as a document is deemed to be received in due time if it was posted five days before the expiry of the relevant time limit.

[4] The question, however, whether this is the case here and the petition for review dated 19 November 2010 has to be considered filed in good time and is therefore admissible or not can be left open, since the fee for the petition for review prescribed in A 112a(4) was not paid in due time.

[5] It is acknowledged that the bank order was given by the petitioner on the last day of the period, but the money was only credited to a bank account of the EPO on 11 November 2011. Pursuant to Article 7(1) of the Rules relating to fees (RRF), when deciding whether a relevant act has been made in due time, it is to be considered that the date of payment is the date on which payment is actually received by the office and not the date the order was given. Thus, the payment effected by the petitioner is considered to be late.

[6] The EBA is aware that, according to Article 7(3)(b) RRF, a payment effected within the period in which it should have been made may be considered to be effected in good time under the condition that a surcharge of 10% on the relevant fee, but not exceeding 150 Euro, is paid. However, the petitioner has not paid any surcharge. Thus, the legal consequence is, that the petition is not deemed to have been filed (A 112a(4), Article 7(4) RRF). […]

The fee for the petition for review is reimbursed.

To read the whole decision, click here. The file wrapper can be found here.


Myshkin said...

I very much doubt that the Enlarged Board has respected the applicant's right to be heard. That the surcharge was found not to have been paid was communicated to the applicant for the first time in the decision on the petition for review.

This is all the more serious given the fact that the applicant had in fact paid the surcharge, as acknowledged by the registrar of the Enlarged Board in a communication dated 07.04.2011. According to the registrar, a revision is excluded as the decision is res iudicata.

Of course the registrar is right that this unfortunate course of events is financially beneficial for the applicant, but that does not take anything away from the seriousness of this violation of the applicant's fundamental rights.

I have some doubt that the registrar's statement that the decision is res iudicata is correct. If the decision concludes that a petition was never filed, is there really a decision? I don't know if there is case law on this, but I don't see a good reason to exclude revision of a clearly incorrect decision that a petition or appeal is deemed not to have been filed. That would also allow Boards to deal with appeals for which no appeal fee was paid in the way it was done here, i.e. without bothering about the right to be heard.

In my view, petition proceedings are still pending for this case.

Myshkin said...

Would it not have been far more correct if the EBA, after finding that the surcharge had not been paid, had issued a notice of loss of rights in accordance with R. 112(1)?