Wednesday, 14 March 2012

J 29/10 – No Country For Old Men

The present appeal was filed against the decision of the Examining Division (ED) not to reimburse a fee for further processing. The facts of the case can be summarised as follows:

On January 13, 2009, the ED had informed the applicant on its doubts regarding the patentability of the claimed subject-matter and had given him four months for remedying the deficiencies.

On April 27, 2009, the applicant requested a two-month extension of the time limit because the communication between the Swiss applicant, the inventor (residing in Great Britain) and the German representative needed more time.

On July 23, 2009, the applicant requested another two-month (or at least one-month) extension of the time limit :
“Unfortunately, it is necessary to respectfully request to

e x c e p t i o n a l l y

extend the time limit for responding to the communication by another two months, i.e. until

September 23, 2009,

or at least by one month.

The reason for this request is that the undersigned has to cope with an unusually high work load.

a) Until the end of 2007, patent attorney Dr. S. had dealt with the cases of the Krohne company, but he then left [the law firm]. After the departure of patent attorney Dr. S. the undersigned is the only professional representative dealing with the Krohne cases in this association.

b) The undersigned has had to deal with very unusually time consuming cases over the last months, i.e.

ba) three law suits pending before the Düsseldorf Regional Court, one before the Frankfurt Regional Court, another one before the Regional Appellate Court in Karlsruhe and one pending appeal against refusal of leave to appeal (Nichtzulassungsbeschwerde) before the Federal Supreme Court;

bb) three nullity proceedings pending before the Federal Patent Court and another two nullity proceedings pending before the Federal Supreme Court;

bc) two cancellation proceedings pending before the German Patent Office and cancellation proceedings pending before the Federal Patent Court;

c) This situation has the consequence that the undersigned – who is sixty-nine years oldworks about 65 to 70 hours per week on average, normally also on Saturdays and often also on Sundays.

d) Very much like the undersigned, some Examiners or EDs of the EPO have to cope with  a great work load, which entails that often search reports or communications have to be waited for for a long time. In this situation, it would be “simply nice” (“einfach schön”) if the EPO could show understanding for the above mentioned situation of the undersigned.”
On July 31, 2009, the ED dismissed this request as unsufficiently justified.

On November 10, 2009, the applicant requested further processing and reimbursement of the fee for further processing.

The request for further processing was granted. On December 7, 2009, the ED informed the applicant that the request for reimbursement was likely to be refused and requested him to comment within a time limit of two months.

On February 8, 2010, the applicant requested a two-month extension of the time-limit, which was granted. On April 16, 2010, the applicant requested two more months – because of an “extreme work load” – and again the ED granted the request. The third request for two more months, filed on June 17, 2010, was, however, refused, and an appealable decision was issued on August 5, 2010.

The applicant then filed an appeal.

Here is what the Legal Board had to say:

*** Translation of the German original ***

Admissibility of the appeal

[1.1] As a rule, decisions of the ED are appealable, provided that they terminate proceedings, A 106(1). It is true that from a procedural point of view a request for reimbursement of the fee for further processing is an auxiliary request (Nebenantrag) which has to be decided upon within the framework of a substantive final decision. Insofar it has already been decided that an applicant whose application was deemed to be withdrawn (nach Verfall seiner Anmeldung) because he had not taken some required action in due time can first request further processing pursuant to A 121 and has to pay the corresponding fee for further processing. He then can request reimbursement of the fee and, thereby, implicitly request a judicial review of the question whether the refusal of the extension of the time limit pursuant to R 132(2) was lawful (cf. J 37/89 [3.5]). Insofar as an applicant is adversely affected by an isolated refusal of the request for reimbursement – as in the present case – a separate appeal against this decision is admissible (cf. J 37/89 [4.2-3]).

[1.2] Irrespective of the fact that the representative of the appellant himself bears the costs for the appeal proceedings, the Board considers – in favour of the appellant, in the name of which the appeal has been filed – that it is the appellant itself and not its representative – who, from the procedural point of view, is not adversely affected – that is party to the appeal proceedings.

[1.3] The other requirements of A 106 to 108 are fulfilled; the appeal is admissible.


[2.1] The impugned decision is based on the fact that the requested further processing pursuant to A 122 [sic] has created the duty for the appellant to pay the corresponding fee for further processing after [the appellant] had missed the time limit for filing the required comments in response to the communication of the ED dated May 16, 2008, which had led to the application being deemed to be withdrawn according to A 94(IV). There had not been any reason to reimburse [the fee] because the refusal to extend the time limit was legitimate. The alleged excessive work load on the representative did not constitute particular circumstances that could justify an exceptional extension beyond six months.

[2.2] Pursuant to R 132(2) periods specified by the EPO, which, normally are neither less than two nor more than four months, and, in certain circumstances, up to six months, may be extended upon request. The Guidelines for examination, E-VIII 1.6, further explain that for any communication raising a matter of substance – such as in the present case – a request for extension, even if filed without reasons, should normally be allowed if the total period set does not thereby exceed six months. However, according to the Guidelines, a request for a longer extension – especially if the total period set exceeds six months – should be allowed only exceptionally, when the reasons given are sufficient to show convincingly that a reply in the period previously laid down will not be possible. The Guidelines cite examples for such exceptional circumstances : the fact that a representative or client is so seriously ill that he cannot deal with the case in time, or the need to perform extensive biological experiments or tests. On the other hand, [the Guidelines] expressly state that leaves or pressure of other work should not be accepted as a sufficiently exceptional circumstance.

[2.3] The Guidelines for Examination in the EPO are based on the power entrusted to the President of the EPO in application of A 10(2)(a) to adopt internal administrative instructions. They are not legal provisions but contain instructions regarding practical and procedural aspects and, according to their General Part, point 3, serve as general instructions intended to cover normal occurrences, in order to render the practice of the Office as uniform as possible, in view of creating and maintaining legal security. The concretisation of the “special cases” referred to in R 132(2) by means of the examples of a “serious illness” or extensive biological experiments as well as leaves or pressure of other work, respectively, is appropriately based on criteria related to predictability of and the possibility to avoid the particular circumstances, for the person concerned in the individual case.

[2.4] The appellant has not persuasively exposed sufficient reasons for its opinion that the rules for extending time limits are “unlawful, and in any case inappropriate”, nor does the Board see any such reasons. Insofar as the appellant requires a modification of the “system for time limits introduced by the Notice of the Vice-President of the Directorate-General 2 of the EPO of February 28, 1989”, by referring to some selected individual cases and justified by the fact that the EPO itself had an excessive work load because applications or required submissions had not been dealt with in a final manner even after several years, and, therefore, invites [the EPO] to exercise its discretion in dealing with requests for the extension of time limits in a less restrictive manner, this objection cannot succeed.

[2.4.1] As a matter of fact, the discretion (Ermessensrahmen) referred to [by the appellant] has been introduced by the Guidelines for examination in the EPO, part E-VIII 1.6 based on the above mentioned power [of the President of the EPO] pursuant to A 10(2)(a).

[2.4.2] This discretion has been referred to in point 4 of the Notice of the Vice-President of the Directorate-General 2 of the EPO of February 28, 1989 (OJ EPO 1989,180), but it is expressly stated that requests for a longer extension, after expiration of a total period of six months, will in future be strictly applied and that such requests will normally be refused.

The established case law of the Boards of appeal has confirmed this strict application of time limits in view of the absolute necessity for speedy proceedings (see J 12/07 [2.2] and, for appeal proceedings, T 79/99 [2.1]). The Board fully agrees with this [approach]. It may well be that in individual cases there can be unsatisfying effects when the chronology of a case is considered. However, it is not the object and purpose of Guidelines for examination to exclude such situations.

[2.5] The way in which the ED exercises its discretion regarding the handling of requests for the extension of a time limit pursuant to R 132(2) should be inspired by these indications. Insofar the Guidelines can be used as a help for interpretation, from which [the ED] can depart in individual cases where this is justified (see also T 1388/10). Insofar it may exercise its discretion in favour of the parties, in cases which urgently require an exception with respect to the situations where the rule does not allow [an extension] (Regelversagungstatbestände). However, normally this will not be the case in the situations mentioned in the Guidelines, such as holidays or – as in the present case – excessive work load.

[2.6] Seen in this light, the impugned decision is not to be objected to. In particular, the Board cannot find any fault in the way the ED has exercised its discretion. Even in principle the excessive work load mentioned by the representative of the appellant cannot be considered to constitute unpredictable or exceptional circumstances within the meaning of the above mentioned provisions. Nor was there any good reason for considering that the case was exceptional, in view of the general requirement of handling requests for extension of time limits beyond six months, because there were no sufficient reasons to do so. The appellant has explained the excessive work load of the representative by pointing out that an attorney who had dealt with its cases until then had left the association of its representative in May 2007. However, as this situation had already lasted for more than two years when the request for extension was filed, on July 23, 2009, the ED correctly expected the representative to have taken the necessary measures to reduce the work load to such an extent that it was possible to definitely keep – generous – time limits. However, there was no submission regarding this aspect.

[2.7] it was not possible to reimburse the appeal fee. Neither the submissions of the appellant nor the other elements of the file have allowed the Board to spot any legal error of the ED in the way it exercised its discretion. Consequently, the impugned decision was correct.

[3] Contrary to the – unreasoned – suggestion of the appellant, there was no need to refer the case to the Enlarged Board of Appeal in application of A 112(1). Pursuant to A 112(1) a Board of appeal may refer [a question] in order to ensure uniform application of the law, or if a point of law of fundamental importance arises. The Board is of the opinion that none of these requirements is fulfilled. […]

The appeal is dismissed.

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

The file wrapper can be found here.


Roufousse T. Fairfly said...

Hi Oliver,

Just in case this detail escaped your eagle eye...

Have you noticed that the incorrect reference to Article 122 you had noticed was rectified under Rule 140 on the last page? It's the first time I see a correction of this type.

The decision was modified on 8 March according to the PDF data, and placed online on 12.03 around 18:00 according to the HTTP data.

The search opinion was issued on 18.05.2008, and the applicant had to reply to the automatic 2001A communication under Art. 94(3) ultimately on or about 23.07.2009. That's 14 months in all.

The applicant had quite a long time to decide on a course of action, and presumably requested examination in full knowledge of the written opinion.

The communication according to Rule 112(2) went out on 31.08.2009. This is a bit faster than usual. Nevertheless, by paying a mere 210 EUR (today: 225 EUR) the reply could be filed up to about 10.10.2009, in all 17 months after receiving the opinion. Not too bad a deal, I think.

If that wasn't enough, the reply could have included a request for an OPs, mechanically buying more time in the process. I find it curious that it did not, essentially considering the somewhat lightweight nature of the argument (singular) in defense of inventive step, namely that the document D1 was "more than fifteen years old".

This appeal was somewhat a case of throwing good money after bad. The grounds for appeal are entertaining. Where did this overburdened fellow find the time to research and write as many as 17 pages to vent his discontentment?

This reminds me of a certain rep who hat the chutzpah to demand the payment by the office of an amount equal to the fee for further processing because, in his opinion, the examiner took too long to consider his brilliant arguments.

In any case, this whole business prolonged the procedure by three years...

oliver said...

Thank you, Roufousse, I had not seen the correction because I only read the html version (where the correction is absent). I wonder why the Board even took the time to correct the error as anybody who knows the basics of the EPC would spot the error and know what was meant.

Thanks also for your other comments, very interesting, as usual. The eagle eye is all yours.

I am always amused when I see attorneys acting in so cheeky a manner. They would be capable of asking the Grim Reaper himself to grant them an extension of time.