T 2454/11 – Postal Duties

This is an appeal against the decision of the Opposition Division to reject the opposition against the patent under consideration.

The decision was sent on June 27, 2011, which means that the time limit for filing an appeal expired on September 7, 2011.

On the very next day, the opponent informed the EPO that its representative had found through online file inspection that the appeal was absent from the Register although it had been sent on August 23.

The opponent argued that the appeal must have reached the EPO. In the private practice of the representative, letters to the EPO were collected each day, prepared for posting and then handed over to UPS at 4 o’clock. This had also happened on August 22 when the appeal under consideration as well as two further letters, all in the same envelope, were given to UPS. The other two letters appeared in the Register.

The opponent also filed a request for re-establishment, by way of precaution.

Here is what the Board had to say:

*** Translation of the German original ***

[2.1] It is the appellant that is responsible for the receipt of the notice of appeal. It carries the burden of proof [for the assertion] that the submission has actually been filed. Otherwise the Office would have to prove that it has not received a document. The EPO cannot be expected to provide such proof because it is difficult to prove that something has not happened. For the very same reason, it is the EPO that has to prove that its letters have reached the addressees when they assert that they have not received them.

[2.2] The Office ensures proof of receipt by having its letters that define time limits sent as registered letters with advice of delivery. It is the Office that bears the consequences of deficiencies that are relevant for proof, as far as dispatch and transmission of a document are concerned. In contrast to the EPO, the party sending something to the EPO has several additional options regarding the way in which the item is sent, which facilitates the proof of receipt.

[2.3] This holds true for both material and immaterial transmission of documents.

When material transmission is envisaged, it is possible to use the traditional postal transmission of a document by means of registered letter with advice of delivery and/or the addition of a notice of receipt that is to be returned. Moreover, the sender can choose delivery by hand and thereby obtain confirmation of receipt by the mailroom (Poststelle) of the Office.

A document may also be transmitted in immaterial form, electronically, by fax or e-mail, which is much more simple, sure and fast. When doing so, the sender receives an electronic or automatically printed notice of receipt. He can file them and use them as evidence if need be. These transmission techniques are nowadays the most common ways of transmitting documents to the EPO.

Shortly after a notice of appeal has been received at the EPO, the sender normally receives a confirmation of the competent registrar (Geschäftsstelle) as well as the reference number. This allows him to see that the appeal has been received, although [the confirmation] does not have to occur within the legal time limit. He can also obtain the same information, again possibly after expiration of the time limit, by electronic file inspection, as in the present case.

[2.4] The great number of – in principle equivalent – options regarding the transmission of documents to the EPO does not change the sender’s duty to be capable of proving the receipt of his letter. The fact that a document was lost or may have been lost at the EPO as a consequence of carelessness of its agents does not alter this assessment. In view of this [the sender] has to choose the way of transmission that is least problematic if something goes wrong (im Ernstfall). If he chooses a way of transmission for which proof of receipt is difficult, he has to bear the consequences. This is particularly true in the case of appealing opponents because they are excluded from remedy by means of re-establishment into the time limit for filing an appeal under A 122 (see point [4] below) when the time limit was missed and they fail to provide proof of receipt because of a clerical oversight (Büroversehen).

[2.5] Contrary to the opinion of the appellant, and contrary to Board of appeal decision T 1200/01, the strict rule that it is the party that has sent a letter to the EPO that has to bear the burden of proof is not attenuated according to the balance of probabilities of receipt. Such a standard of proof would seriously affect legal security and would lead to a softening of the due legal clarity in formal proceedings such as those before the EPO. As a matter of fact, the indefinite legal concept of probability, which would have to be interpreted when a dispute arises, and the judicial assessment (gerichtliche Abwägung) of whether the delivery is more or less likely, would lead to multifaceted casuistry where contradictions cannot be excluded. This goes against the need for transparent and clear proceedings, and is to be avoided in the interest of third parties involved in the proceedings and of the public.

[2.6] As a consequence, the decision on the receipt of a document cannot be based on a high probability of delivery. Rather, the sender has to provide proof for the receipt to the satisfaction of the Board.

[2.7] Even if – contrary to the opinion of the Board, and although there is no real need to decide on that matter – a high probability of receipt of the notice of appeal was sufficient, it may be questioned whether the appeal was filed in due time. This is because the explanations of the appellant, according to which an envelope containing the notice of appeal and two further documents as well as a list of the three documents (document D1), which was deemed to be an acknowledgement of receipt, was handed over to the UPS courier on August 22, 2011, and delivered to the EPO on the day after, do not dispel corresponding doubts in a way that would allow to consider that receipt in due time was highly probable.

The Board considers the explanations of the representative of the appellant and the declarations in lieu of oath on behalf of the secretaries (cf. documents D6 and D7) to be credible, but it does not find them suitable for establishing that the receipt of the notice of appeal was highly probable. It may well be that the secretary has put the notice of appeal into the envelope and that the document was lost at the Office subsequently. However, the declarations in lieu of oath filed by the appellant allow to imagine other not unlikely courses of events, such as the possibility that because of an oversight the notice of appeal was not put into the UPS envelope. Indeed, the secretary in charge of the dispatch declares in document D7:

“I have prepared the documents to be sent to the EPO on August 22, 2011, as I do every day. … I am not aware that I could, because of an oversight, have omitted to put any document referred to in the transmission logbook (Übermittlungsbuch) into the parcel to be sent to the EPO.”

This declaration also allows the converse assumption. The statement “I am not aware” leaves open whether the document was actually sent. The Board considers this to be explicable because the facts under consideration occurred more than eleven weeks before the statement was made. According to the common experience of life, an assistant who sends several mail items (Poststücke) every day may not be expected to recall exactly how all items were sent.

Moreover, neither the three documents nor D1 contain any hint for the mailroom that it should confirm receipt. Also, the appellant itself admits that document D1, which lists the individual documents contained in the UPS envelope, was neither postmarked by the EPO nor sent back to the representative’s law firm. Finally, D1 does not appear in any of the electronic files to which those documents belong, so that it is questionable whether this document was received. Assuming that high probability was indeed the correct standard of proof, all these circumstances give rise to doubts as to whether the notice of appeal was indeed delivered on August 23, 2011, such that one can hardly conclude that the receipt was highly probable.

Incidentally, the Board wishes to point out that the return of document D1 as acknowledgement of receipt, which was expected by the representative of the appellant, appears not to have been monitored. There were indeed more than two weeks between the receipt of the envelope on August 23, 2011, and the day on which the time limit for filing an appeal expired.

Request for re-establishment into the time limit for filing an appeal

[3] An opponent is not entitled to have its rights re-established when it misses the time limit for filing an appeal under A 108, 1^st sentence (cf. G 1/86).

Thus the request for re-establishment into the time limit for filing an appeal is inadmissible.

Filing of the appeal

As the notice of appeal has not been received in due time and as the request for re-establishment cannot be granted, the appeal is deemed not to have been filed, A 108, first sentence.

According to the case law of the Boards of appeal, the appeal fee is to be reimbursed when the appeal is deemed not to have been filed, see J 21/80 [4].

Request for reimbursement of the fee for re-establishment

Pursuant to R 136(1), second sentence, a request for re‑establishment shall be filed in writing within two months of the removal of the cause of non‑compliance (in the present case: September 8, 2011). It follows that the request for re-establishment filed on November 8, 2011, together with the fee for re-establishment, has been filed in due time.

In view of G 1/86, older decisions of the Boards of appeal of the EPO have considered a request for re-establishment filed by an appealing opponent to be “void” (gegenstandslos) or “legally ineffective” (nicht rechtswirksam gestellt) and have ordered reimbursement of the fee for re-establishment, see e.g. T 520/89 [2-3] or T 266/97 [4].

In more recent decision T 1026/06 the Board made the following statement on this issue:

“The fee for re-establishment cannot be reimbursed. The reimbursement of a fee is only possible when the fee has been paid without there being a cause in law (Rechtsgrund) or when the situation is such that the law requires reimbursement. Pursuant to A 122(3) [EPC 1973; now R 136(1), third sentence] a request for re-establishment of rights shall not be deemed to have been filed until the fee for re-establishment has been paid. Therefore, the payment of the fee is required in order to make the request effective. Thus there was a cause in law for the payment and there is no situation where the law requires reimbursement.”

The Board endorses this opinion and adopts it as its own. Thus the request for reimbursement of the fee for re-establishment has to be dismissed.

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