Wednesday, 2 November 2011

T 1973/09 – Ultra Vires

On January 7, 2005, the Examining Division (ED) decided to refuse the European application under consideration because it considered that the subject-matter of claim 1 lacked an inventive step. 

The applicant filed an appeal against that decision, together with amended claims. 

The Board (decision T 697/05) considered it appropriate to remit the case to the ED so as to give the appellant the possibility to argue its case before two instances.

On May 8, 2009, the ED refused the application again, for lack of inventive step and lack of clarity. This time the applicant did not file an appeal in time but filed a request for re-establishment on August 26, 2009.

The professional representative of the applicant pointed out that the applicant had taken all due care by issuing instructions in good time (on June 5, 2009). He then explained the circumstances of the appeal:

On September 8, 2009, the representative filed a copy of the relevant fax transmission report:

On September 23, 2009, the formalities officer of the ED sent a written decision allowing the request for re-establishment. The ED then decided not to rectify its decision and transmitted the case to the Board of appeal.

The Board did not like the way in which the request for re-establishment had been handled:

Request for re-establishment of rights (A 122)

[1.1] By its decision dated 23 September 2009, the formalities officer acting on behalf of the ED allowed the applicant's request for re-establishment of rights dated 25 August 2009. This decision had the effect that the notice of appeal was deemed to have been filed in due time and the proceedings were continued.

[1.2] Under R 136(4), the department competent to decide on a request for re-establishment of rights is the department competent to decide on the omitted act.

[1.3] In the present case the omitted act is the filing of the notice of appeal, which is to be carried out within the time limit defined under A 108. The department competent to decide whether the appeal is inadmissible for non-compliance with A 108 is, under R 101(1), the Board of Appeal.

Therefore only the Board of Appeal is entitled to decide upon the request for re-establishment of rights.

[1.4] A 109(1), which empowers the department of first instance in ex parte proceedings to set aside its own decision if it considers an appeal to be “admissible and well founded” (emphasis added by the Board), provides an exception to the principle of general devolutive effect of the appeal, in order to allow an interlocutory revision. This exception, as such, has to be construed narrowly in connection with the interlocutory revision, and not as a broader entitlement for the first instance to decide whether an appeal is admissible (T 473/91, T 808/03, and Case Law of the Boards, 6th. edition 2010, VI.E.3.1, page 495). This is reflected in the Guidelines for Examination (E-VIII, 2.2.7) which indicate that the request for re-establishment is only then to be considered by the competent department if interlocutory revision is to be granted, which in the present case it was not.

This exception is necessary since interlocutory revision requires that an appeal exists before a positive decision can be taken for the appellant to grant the interlocutory revision. When it considers the appeal to be well-founded, the department of first instance is required therefore to form an opinion as to the admissibility of the appeal. This does not infringe upon the power of the Boards of Appeal to decide upon the admissibility of appeals since it applies only to well-founded appeals which in the case that they are also considered by the department of first instance to be admissible never reach the Boards of Appeal. Since the department of first instance only takes positive decisions on admissibility of an appeal in the case of well-founded appeals the rights of the appellant, at least in so far as it has not requested the refund of the appeal fee, are preserved, since it achieves what it has requested without the necessity of going through a complete appeal procedure.

[1.5] The department of first instance, however, in the present case followed neither A 109(1) nor the Guidelines for Examination since it decided upon the request for re-establishment of rights to conclude that the appeal was admissible, but not well founded. The decision of the department of first instance was thus ultra-vires.

[1.6] Since the department of first instance was not empowered to take the decision that it did, the Board sets aside the decision of the department of first instance to allow the request for re-establishment of rights.

Admissibility of the appeal

[2.1] The Board has considered the fax transmission report submitted by the appellant with its letter of 8 September 2009 and concludes from this that the letter dated 29 June 2009 containing the notice of appeal in the present case was sent and received by the EPO on that same date.

[2.2] However, the Board notes that the facsimile number of the addressee of the fax (+49 089 2399 2528) is in fact the number of the Treasury and Accounts department of the EPO, i.e. it is not the facsimile number (+49 089 2399 4465) of the filing office of the EPO in Munich (Article 3 of the Decision of the President of the EPO dated 12 July 2007 concerning the filing of patent applications and other documents by facsimile, Special edition 3/2007 of OJ EPO, page 7, and point 3 of Notice from the EPO dated 12 July 2007 concerning the availability of the EPO filing offices, Special edition 3/2007 of OJ EPO, page 6).

[2.3] Should it have been established that the said notice of appeal was not duly filed at the EPO, the appellant could at least legitimately have expected to receive a corresponding warning from the EPO that its filing was deficient, i.e. that it was sent to the wrong fax number, because the deficiency was readily identifiable for the EPO. Since 20 days then remained for the appellant to file a notice of appeal at a correct EPO address, the Board is convinced that the appellant would have filed its already prepared notice of appeal again at the correct address, both in due time and in due form.

[2.4] Therefore, applying the established case law on the principle of protection of legitimate expectations, the Board deems that the notice of appeal was filed on 29 June 2009, i.e. in due time.

Since the order for payment of the appeal fee was part of the same letter dated 29 June 2009, the same applies to the payment order.

[2.5] Consequently, the Board deems the appeal to be admissible without any necessity to consider a re-establishment of rights.

Re-imbursement of the fee for re-establishment of rights

[3.1] In view of the above finding that the appeal was admissible without consideration of the request for re-establishment of rights, the request for re-establishment of rights has no more basis.

[3.2] Therefore, the Board orders the reimbursement of the corresponding fee already paid by the appellant.

The Board then dismissed the appeal on substantive grounds.

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