Wednesday, 24 August 2011

T 1535/10 – K.O. Because Of c/o?

This decision deals with the admissibility of the appeal filed by the opponent following the rejection of its opposition by the Opposition Division (OD).

The opponent (Dynamit Nobel Defence GmbH) was represented by professional representative (PR) Andreas S., member of the law firm (Vertretergemeinschaft) “Patente, Marken & Lizenzen”, which is closely associated with the Chemetall company, as its postal address suggests:

Patente, Marken & Lizenzen
c/o Chemetall GmbH
Trakehner Straße 3
60487 Frankfurt am Main

The impugned decision was sent on May 4, 2010 to

Andreas S.
Chemetall GmbH
Trakehner Straße 3
60487 Frankfurt am Main

Mr P. of Chemetall GmbH signed the receipt on May 14, 2010. PR Franz U. of “Patente, Marken & Lizenzen” signed a receipt on May 17, 2010.

The appeal was filed on July 15, 2010, i.e. more than ten days plus two months after the date of dispatch.

In what follows the Board deals with the question of whether the appeal was filed in time or not.

*** Translation of the German original ***

[1] Pursuant to A 108, first sentence, notice of appeal shall be filed, in accordance with the Implementing Regulations, at the EPO within two months of notification of the decision.

[1.1] According to the Implementing Regulations, decisions incurring a period for appeal shall be notified by registered letter with advice of delivery (R 126(1)). According to R 126(2), such letter shall be deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be. If a representative has been appointed, notifications shall be addressed to him (R 130(1)). If several representatives have been appointed for a single party, notification to any one of them shall be sufficient (R 130(2)).

Time limits are determined pursuant to R 131(1) and (4).

[1.2] The impugned decision of the OD has been posted as registered letter with advice of delivery on May 4, 2010, in compliance with R 126(1). It was addressed to the PR of the [opponent]. Consequently, this date is decisive for the computation of the time limit for filing an appeal. Application of the ten-day-rule according to R 126(2), first alternative, as well as R 131(1) and (2) shows that the time limit for filing the appeal ended on July 14, 2010, unless there has been a delay of delivery that is imputable to the EPO, which contradicts or invalidates the legal fiction of delivery within ten days pursuant to A 126(2), as the case may be.

[1.3] The [opponent] has invoked such a delay of delivery and pointed out that the ten-day-rule could not be applied in the present case because the delivery was not duly directed to the PR, because of the deficient postal address, and, notwithstanding the receipt on May 14, 2010 by a third party, which it said not to have been authorised to receive mail (Mr P.), the delivery had been received by the representative only on May 17, 2010 (R 125(4), R 126(2), second alternative as well as R 130(1) and (2)).

[1.4] Regarding the objection of a deficient postal address, the letter sent on May 4, 2010, enclosing the impugned decision actually contains an error with respect to the address. The address did contain all particulars of the PR (Andreas S.), the name of the law firm (Patente, Marken & Lizenzen), the indication of street and city (Trakehner Straße 3, 60487 Frankfurt am Main), as well as the name of the Chemetall company, at the business location of which the PR resides. However, the supplement “c/o” was missing before the latter.

[1.4.1] However, contrary to the [opponent’s] opinion, this incorrectness does not result in the transmission of the impugned decision having to be qualified as not directed to the PR of the [opponent], in violation of R 130(1). Irrespective of the fact that the representative has explicitly been named in the first place of the address field, and, thus, was unambiguously designated as (final) recipient, the [opponent] has not been able to convince the Board that the assignment of the letter was impossible or even more than insignificantly complicated only because the supplement “c/o” was missing before the company designation Chemetall GmbH.

[1.4.2] First, the affirmation according to which Mr P. in the post room (Poststelle) would not have accepted the letter had the “c/o” supplement been used but would have referred the post man to the office of the law firm is in contradiction with its other submissions. As a matter of fact, when asked by the Board, the [opponent] has explained that the law firm did not even have its own post room but rather used the material and facilities of Chemetall GmbH.

The use of the franking machine of Chemetall GmbH for the receipts that were sent back to the EPO, both in the opposition and appeal proceedings […] provides further evidence for the fact that the law firm, and in particular the PR of the [opponent] did not himself handle the mail circulation but used the post room of Chemetall GmbH.

As the PR and the law firm of which he was a member had no post room but used the central post room of Chemetall GmbH for its incoming and outgoing mail, Mr P., who worked in this very post room, could not have referred the post man delivering the letter containing the impugned decision [to the post room of the law firm], even if the “c/o” supplement had been provided in the address field, because there was no post room to which he could have referred.

[1.4.3] Moreover, the various deliveries that have been made to the same address without the “c/o” supplement during the opposition and appeal proceedings and which have all been transmitted to the law firm by the post room of Chemetall GmbH, and in particular also by Mr P. working in the post room – and, in the case of the summons to oral proceedings before the OD, even on the very day of receipt – provide evidence that the assignment of the mail directed to the PR manifestly did not create difficulties.

[1.4.4] Moreover, the Board endorses the inquiring remark of the [patent proprietor] […] why the PR who invokes a wrong address used in mailings on behalf of the EPO, based on the missing “c/o” supplement, has not drawn the attention of the EPO to this error in connection with earlier identical mailings made during the opposition proceedings. The PR of the [opponent] has not explained why he had not taken this obvious action but has remained completely inactive.

[1.5] The objection of the [opponent] concerning the non-imputability of the receipt of the impugned decision by Mr P., who it declared not to be authorised [to receive mail on its behalf], on May 14, 2010, is related to the question to whom the risk of delayed transmission of a mail between the post room of Chemetall GmbH to the PR of the [opponent], who has confirmed receipt on May 17 only, is to be imputed.

[1.5.1] It follows from R 125(4) and R 126(2) that the EPO has to bear the risk arising in its own sphere, as well as the transport risks, such as the risk of losing a letter on the way to the recipient.

[1.5.1] However, risks that arise in the sphere of organisation and control of the recipient, such as the risk that employees or other persons in charge of receipt do not transmit the letter deposited at the business address, or the risk that a fax the receipt of which has been confirmed with an “OK” comment sent by the receiving apparatus is “lost” due to a malfunction of the memory or the printer of the apparatus (for the transfer of risks in the latter case, see T 580/06 [1.4.2]) are to be distinguished ; the recipient himself has to bear such risks. For a letter to be deemed to have reached the sphere of organisation and control of the recipient, it is sufficient that the letter reaches the recipient and that the recipient has the possibility of taking notice of the letter.

The case law of the Boards of appeal has acknowledged that this possibility is given when an employee of the addressee or another person which the addressee (here: the PR) has put in charge of receipt accepts the mail on his behalf. It is not necessary that the PR “receives” and/or takes notice [of the mail] on behalf of his client. The fact that the recipient (here: the PR) takes notice of the mail only several days or even weeks after [the receipt] is not relevant because the only legal condition, i.e. the delivery to him, is fulfilled (T 247/98 [1]; T 172/04 [4]; T 743/05 [1.6-8]; T 261/07 [1.6]; T 529/09 [4]).

Decision T 703/92, which has been invoked by the [opponent] is not to be understood differently. To the extent (see point [1.1.1]) that this decision states that in order to assess the effectiveness of the transmission it is relevant whether and when the representative was in possession of the complete decision, this statement concerned a particular situation that was different from the situation of the present appeal proceedings.

This decision dealt with a violation of R 81(1) EPC 1973 (now R 130(1)) because the written reasoned decision and the minutes of the oral proceedings had not been sent to the authorised PR but to the opponent itself. This deficiency of delivery was only remedied by a (new) delivery to the representative pursuant to R 82 EPC 1973 (now R 125(4)).

In contrast, in the present case the impugned decision was sent to the authorised PR of the [opponent] right away and the only question that matters is when this delivery has taken place: when the mail was handed over to an employee in the post room of Chemetall on May 14, 2010, or when the PR confirmed that he had taken notice, on May 17, 2010.

In this respect the [opponent] pointed out that Mr P. was not an employee of its PR or of the law firm and that he was not authorised to receive mail on behalf of the representative or the law firm, and that, therefore, only the fact that the PR had taken notice mattered.

[1.5.3] Consequently, it is decisive whether the alleged delayed transmission of the letter containing the impugned decision subsequent to the transmission of the letter by the post man to Mr P. is still part of the transport, for which the EPO is responsible, or if it occurred within the sphere of control and responsibility of the PR.

The latter would be the case if, irrespective of the fact that, as alleged by the [opponent], Mr P. was not authorised to receive mail, his receipt of the letter would be imputable to the PR, because he was enabled as from this moment to take notice of the impugned decision.

Indeed, for the PR being enabled to take notice, he does not have to have taken possession of the letter, but it is at least necessary that the letter is brought so close to him that it only depends on him whether he takes notice of the letter or not.

[1.5.4] Insofar as the [opponent] has affirmed that Mr P. was not authorised to receive mail addressed to the PRs of the law firm, as he has declared in his declaration in lieu of oath dated May 10, 2011, this assertion does not conflict with the assignment of the receipt of the impugned decision in the post room of Chemetall GmbH to the PR.

Even if Mr P. has not been expressly authorised, the law firm – and, consequently, the PR – has organised the mail circulation in a way which created the impression, at least towards the outside world, that the post room belonging to Chemetall GmbH (and which is, therefore, external to the law firm) was the law firm’s own post room. According to the [opponent’s] own submissions, the law firm was so closely connected to Chemetall GmbH, both organisationally and infrastructurally, that at least as far as mail circulation is concerned, they could not be distinguished from outside.

This close connection is based on the use of the stationery of Chemetall GmbH with all its indications, including its entry into the commercial register, its VAT identification number and its banking details. The [opponent] has also admitted a personal connection consisting in that some law firm employees were also employees of Chemetall GmbH. Moreover, from an organisational and infrastructural point of view, the connection comprised, as the [opponent] admitted, the use of material and facilities of Chemetall GmbH, such as the post room, including the franking machine, and the e-mail server (

Finally, the PR of the [opponent] and the law firm authorised by it also appear to have used the deposit account […] of Chemetall GmbH for paying the opposition fee and the appeal fee.

All in all, the close connection between the law firm and Chemetall blurred the legal independence of the former, when seen from outside, to such an extent that the law firm authorised by the [opponent] and the PR of the [opponent] have to accept to be treated, as far as the organisation of mail circulation is concerned, as if the post room of Chemetall GmbH also was – or had to be deemed to be – its own mail room.

Consequently, the question of whether Mr P. was expressly legally authorised to receive mail addressed to the law firm or to PRs belonging to it, is not relevant, because de facto the law firm was, as far as mail circulation is concerned, so closely connected to the post room of Chemetall GmbH that its post room simply served as post room of the law firm or appeared to do so, when seen from outside, respectively.

[1.6] Apart from these considerations, there is another reason why the PR of the [opponent] and the law firm which was authorised by the [opponent] during the opposition and appeal proceedings have to accept that the receipt of mail addressed to them in the post room of Chemetall GmbH is deemed to be their proper receipt and why they have to bear the consequences of any internal delay in the (internal) transmission of mail from the mail room of Chemetall GmbH to their offices.

In the exercise of his professional duties, a PR has to ensure that he can be always be reached by mail, without any restriction (see Regulation on Discipline for Professional Representatives, OJ EPO 1978, 91, OJ EPO 2008, 14; Code of Conduct of the Institute of PRs (epi) before the EPO, OJ EPO 2003, 523). This general basic rule for dealings between the PR and his client, the EPO and other PRs requires a proper mail room (be it only a letter box) or some other arrangement for receiving mail.

In the present case, this means that the PR of the [opponent] and the law firm authorised by it were allowed to compensate for the absence of a proper post room by using a “foreign” mail room (here: the mailroom of Chemetall GmbH), but they have to accept that, as far as the delivery of communications that trigger a time-limit is concerned, this mail room is deemed to be their proper mail room.

A different understanding, according to which in a case where there is no proper mail room it is not the receipt in the “surrogate” post room that triggers the moment of delivery and, therefore, the time limit, but the moment at which the PR takes notice of the content of the communication, would create insecurity for all users of the European patent system because in this case the answer to the question of whether the delivery had actually taken place would depend entirely on the honesty, the good will or the organisational skills of the PR.

[1.7] Finally, the [opponent] cannot invoke the sheet of time limits (Fristenzettel) of the law firm which the [opponent] has filed together with its written submission of December 16, 2010 and on which the PR Franz U., who was also authorised by the [opponent], had written: “Attention! No 10-day rule!”

As noted above, the ten-day rule according to R 126(2) did apply, which means that the PR made an error of law. According to the established case law of the Boards of appeal, ignorance or erroneous interpretations of a provision of the EPC, in particular concerning the computation of time limits, are not to be taken into account (see e.g. J 31/89, Case Law of the Boards of appeal, 6th edition, 2010, VI E.7.4.2b)

Therefore, the [opponent] cannot successfully invoke the – erroneous – computation of the time limit on behalf of the PR in order to rely on a delivery after May 14, 2010.

[2] Therefore, the letter containing the impugned decision was delivered on May 14 in the post room at the business location of Chemetall GmbH, with effect also for the law firm and the PR of the [opponent]. The fact that the latter only took notice of the impugned decision on May 17, 2010, as pointed out by the [opponent], is not relevant for the question of receipt and, therefore, of the effectiveness of the delivery, which had been made on May 14, 2010.

Consequently, the delivery of the impugned decision occurred within the ten day time limit pursuant to R 126(2) and the time-limit for filing an appeal pursuant to A 108(1), first sentence, as well as R 131(1) and (2) expired on July 14, 2010.

Thus the appeal filed by letter on July 15, 2010, reached the EPO only after expiry of the time limit for filing an appeal and is, therefore, inadmissible.

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

The file wrapper can be found here.

NB: You might want to have a look at the French summary offered on Le blog du droit européen des brevets.


Anonymous said...

Like the Italian saying goes:

You wanted the Tax-shell bycicle so much, well now pedale!

Tufty the Cat said...

Excellent job Oliver. Thank you. This will come in handy for the appeal board OPs I will be attending next month.

oliver said...

Hello Tufty,

I have heard that you are quite into A 126 these days. Best of luck!

Anonymous said...

Article 126? Nice job if you can get it... You did mean Rule 126, n'est-ce pas?

As a backup to the post office, practitioners should perhaps monitor their own files in Register Alert/WebRegMT, so that they could find out whether something is amiss. The downside with the e-mail warnings is that there can be several days between an event and the appeareance of a new document. Furthermore, examiners fiddling with their files on their computers don't always realize that actions can get coded even if they are not actually sent yet on paper. One example is a proposal for grant, which can be prepared and "sent" (i.e., uploaded to a database), but may not be actually processed by formalities officers for weeks or months until after all examiners deigned to apply their approving signatures to the paper copy. After that, the file gets signed out by the director, and the FO re-checks the composition of the Druckexemplar. QC may also intervene somewhere in that chain...

oliver said...

Yes, indeed, I meant R 126. Thanks for the QC. ;-)

Myshkin said...

"One example is a proposal for grant, which can be prepared and "sent" (i.e., uploaded to a database),"

Uploaded to the European Patent Register?

If purely internal actions are signalled to the outside world, something is terribly wrong.

Tufty the Cat said...

Just to let you know that, at least partly thanks to your reporting of this decision, I won the appeal I mentioned earlier. I shall be reporting on this once the written decision appears.

oliver said...

Good for you! I shall be happy to report on your case, too.