Monday, 25 July 2011

T 1882/08 – A Smouldering Wick

The applicant filed an appeal against the decision of the Examining Division to refuse its application, but then omitted to pay the renewal fee for the seventh year so that the application was deemed to be withdrawn before the date on which oral proceedings (OPs) were to be held.

What will the Board do in this situation?

[3] According to the information available to the Board, the renewal fee for the 7th year and the corresponding additional fee had not been paid and the prescribed period of grace for payment according to R 51(2) had expired before the date of the OPs. Thus, at the time of the OPs the application was deemed to be withdrawn. In this situation the Board could have simply awaited the further course of action to be taken by the Office, i.e. the delivery of the obligatory noting of loss of rights according to R 112, and a potential reaction of the appellant.

Despite the fact that, in the present situation, the application was deemed to be withdrawn before the date of the OPs, the Board recognizes that the noting of loss of rights (which has not yet been issued) due to non-payment of the renewal fee and the additional fee could theoretically still be challenged under R 112(2) by the appellant, or that reestablishment of rights pursuant to A 122 could be requested. In view of these factors, which may potentially prolong the proceeding, and in view of the fact that appeal proceedings are independent from proceedings concerning the payment of renewal fees, the Board decided in the present case to continue the appeal with the arranged OPs.

In arriving at this decision the Board also took into account the fact that, since the appellant had refrained from providing any indication concerning its intended course of action, the members of the Board had to be - and in fact were - fully prepared in substance for the OPs. Moreover, the Board was aware that a substantive decision taken at the end of the OPs could bring all pending proceedings in the present application to a speedy conclusion, in the interest of the EPO as well as of the general public.

Of course, had the Board arrived in its deliberation at the end of the OPs at a view which in substance would have been positive for the claimed subject-matter, it would have had to let the procedure under R 112 and/or A 122 run its course.

As you might have deduced from the last statement, the Board finally snuffed out the smouldering wick, for lack of compliance of the requests on file with the requirements of A 123(2).

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

Also reported on Le blog du droit européen des brevets


Myshkin said...

It doesn't seem right to me that the Board can decide on an appeal when the application is already deemed to be withdrawn. What is now the state of the application? Deemed to be withdrawn, or finally refused?

If an appeal can still be treated when the application is deemed to be withdrawn, one might conclude that the application is still pending so that a divisional could still be filed (provided that the time limit of R. 36(1) has not yet expired).

I think the Board in this decision for the sake of convenience glossed over a great many subtleties, which in my view is rather unfortunate.

Another point:
"Of course, had the Board arrived in its deliberation at the end of the OPs at a view which in substance would have been positive for the claimed subject-matter, it would have had to let the procedure under R 112 and/or A 122 run its course."

Why is that? If the Board feels empowered to dismiss the appeal, I don't see why the Board should not feel equally empowered to allow the appeal. Of course the application would in all likelihood remain deemed to be withdrawn due to the unpaid renewal fee.

Anonymous said...

This is indeed a rather curious decision, but looking at the file wrapper I think I may see the reason which may have motivated the board's approach, namely put a clean end to a slightly messy procedure.

In the examination phase, the applicant had failed to pay the renewal fee for year 4 by the 31.10.2007 deadline.

Summons for an OP scheduled 04.03.2008 were received by the applicant just two days later, 2.11.2007. These had been issued by the ED before the expiry of the deadline.

The EPO's (complimentary) reminder went out 05.12.2007.

On 28.02.2008 a request for postponing the OP was received at the EPO. I find the substantiation of the request rather problematic. I can see no trace of supporting evidence such as a medical certificate in the wrapper, or a mention hinting of other pieces in the non-public part of the application record. The main representative himself was surely familiar with the case, and Mailand is not that far from Monaco di Baviera, and could have easily attended the OP himself. No authorisation was on file at that point for the sub-representative, who had never been mentioned in the procedure up to that date. (This case is not, IMO, analogous to T1382/06). (Form 1003 did allow for sub-representation.) The OP was nevertheless promptly rescheduled. L'OEB est vraiment bonne fille.

An authorisation for the sub-representative was filed by the representative of record only 14.03.2008, well after the initially scheduled date.

The renewal and supplementary fees were received 27.03.2008, i.e., after the initial OP date, at the end of the 6-month grace period. Not exactly the epitome of diligence.

A phone conversation took place on 18.4.2008 between the 1st examiner and the SUB-representative. The conversation itself has little legal weight, and the minutes sent to the representative of record, but I get a queasy feeling from this, as I'm not entirely sure whom the contact person should be. New objections under A 123(2) were formulated and substantiated, but also unspecified "minor" ones in the conclusion of the minutes which were to be discussed at the OP.

The OP could have very well taken place during the examination phase whilst being deemed withdrawn, albeit before receiving a refusal on formal grounds.

In view of the preceding messiness, I have understanding for the board issuing summons even if fees were again due at the time. At least the board isn't as hindered as the ED, as the substantive examiner's computer system prevents the issue of official actions when there is an "ADWI" code pending. (This is only checked when sending the communication, and not when you create/edit it. It can be infuriating not to be able to send the communication you took a day to write because you did not know that the application was in limbo.)

What alternative had the board? Schedule the OP before the expiry of the 6 month grace period? Wait for the application's status to be settled. The OP was an open-and-shut case, which officially lasted all of a quarter hour, if one believes the (15) minutes.

Looking at the substance of the matter, the "science" behind the invention ("shielded antennas") for mobile phones is a bit flaky too. The applicant is a silversmith offering gold or silver plated phone casings, apparently with an opening at the right place. Somehow reminds me of an old Ian Fleming story...

oliver said...

Thanks for your in-depth study.

Myshkin said...

"What alternative had the board?"

Cancellation of the OP. The only way to revive the application is a successful request for re-establishment, which is very unlikely to happen.

As it is now, we have a decision that legally speaking is maybe not a decision but only a piece of paper due to lack of competence of the Board to take a decision. I know of no legal system in which a judge may ignore issues of competence. In the present case the Board does not explain why the application being deemed to be withdrawn does not bar the Board from deciding on the appeal. If this not problematic already based on general principles, it can certainly be argued that dismissing an appeal, thereby lifting the suspensive effect of a refusal, is contrary to Art. 97(2) when the Convention provides for a different legal consequence (such as ADWI).

Well, should the Boards ever run out of work, I guess they can now start to take decisions in long dead cases.

It is interesting that the minutes of the OP are completely silent on the issue. It is that point V of the decision states that the Board became aware of the issue while preparing for the OP, otherwise... :-)

"At least the board isn't as hindered as the ED, as the substantive examiner's computer system prevents the issue of official actions when there is an "ADWI" code pending."

This safety mechanism surely protects the EPO against a lot of embarrassment. While a file is dead, substantive communications should not be issued. What should be infuriating to the examiner is not being properly informed that the application was in limbo.

Myshkin said...

In T 1382/04 the Board did consider that it could not take a decision if the application was deemed to be withdrawn:
"1. Rule 100(2)(3) EPC - Pendency of the application

According to Rule 100(2) EPC, the appellant has been invited to file observations on the Board's communication dated 18 December 2008. Failure to reply to such an invitation in due time would result in the application being deemed withdrawn (Rule 100(3) EPC). Hence, before deciding on the present case, the Board has to ascertain that a reply meeting the requirements of Rule 100(2) EPC has been received in due time. If no response qualifying as a reply has been received, the case is not pending any more. The question arises because the appellant has not made any substantive observation on the Board's communication."

(Unfortunately the conclusion in that decision that a request for OP qualifies as a reply seems to be in conflict with other decisions, but anyway.)