Friday, 22 March 2013

J 7/12 – Last Minute Risks

This is an appeal against the refusal of the Examining Division (ED) to grant re-establishment.

The applicant’s PCT application (earliest priority: November 2005) had entered the European phase in May 2008.

In a letter dated January 7, 2010, the EPO informed the applicant’s representative that the renewal fee for the fourth year, which had fallen due on November 30, 2009, had not been paid and that it still could be paid within six months of the due date, provided that an additional fee was also paid within that period (i.e. on or before May 31, 2010, “de ultimo ad ultimo”).

A communication of loss of rights was sent to the representative on July 8, 2010.

On July 28, 2010, the applicant filed a request for re-establishment.

The representative explained that the applicant had requested him to pay the fee by fax, on May 31, 2010. The order was received at 5 o’clock p.m. but there was a fax problem causing the fax not to be printed out. The problem was discovered on June 1 only because the office staff was surprised to see that apparently no faxes had been received during the night.

The ED considered that the requirement of all due care had not been complied with and refused re-establishment.

The applicant then filed an appeal.

Readers familiar with re-establishment case law will not be surprised that the appeal was not successful.

*** Translation of the German original ***

[3] As explained in great detail in the communication [NB: annexed to the summons to oral proceedings before the Board] a request for re-establishment can be granted when an applicant, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the EPO (A 122(1)).

According to the established case law the duty of due care enshrined in A 122 concerns both the applicant and the representative (J 3/93 [2.1]; T 381/93 [6]; J 17/03 [5]; J 1/07 [4.1,7]; cf. Case Law, 6th edition, 2010, VI.E.7.3.1), the due care required on behalf of the representative depending on the relationship between him and his client (J 19/04 [9]; J 1/07 [4.1]).

[4] As correctly stated in the impugned decision, the representative has clearly and in due time informed the applicant of the fee being due. The reminder sent by the representative on April 9, 2010, contained all the information that was needed; it also bore the indication “final time limit”. It clearly follows from the letter that the representative could only pay the renewal fees if he was instructed to do so by the applicant. The representative received the required funds together with the corresponding instructions.

It follows that the applicant alone had the duty to take all due care required by the circumstances for the time limit for paying the fees to be met. However, the fact that the representative did not make any mistake does not protect his client from the consequences of its own errors or negligence (J 3/93; T 381/93; J 16/93; J 17/03).

[5] The argument that the applicant could not have known which time limits [, if not met,] would result in the irrevocable loss of the application is not sufficient for establishing that all due care had been taken. This ignorance rather proves the need to be more careful and, therefore, to act much earlier than on the last day of the additional period (Nachfrist). According to the established case law of the Boards of appeal, ignorance or wrong interpretation of a provision of the EPC cannot justify re-establishment. Incidentally, this principle also applies to individual applicants that are not represented (J 2/02).

[6] Moreover, as mentioned during the oral proceedings, anybody who puts himself in a situation where he cannot be sure that the required action can be taken in due time takes the risk that his legal request (Rechtsbegehr) will be unsuccessful (cf. J 16/92).

In the present case the order to pay (Zahlungsanweisung) has only been transmitted in the late afternoon of the last day for paying the renewal fee and the additional fee. By acting in this way, the [applicant] (almost) completely exhausted the additional period. Such action is per se acceptable, but it creates a risk that is to be borne (also) by the [applicant], namely that errors may occur during the receipt and execution of its instructions. Under these circumstances the [applicant] would have had to enquire of the professional representative or his clerk whether the instructions had been received and had been (or would be) carried out in due time (T 1289/10; J 16/92). This requirement does not amount to an unduly high standard for due care on behalf of the applicant, as extensively argued by the [applicant] - both orally and in writing. Rather, it only corresponds to the due care that is required in the applicant’s own interest and reflects the concrete circumstances. The requirement to enquire (Erkundigungsobliegenheit) thus results from both the fact that the applicant, by exhausting (Ausreizen) the time limit has created the particular risk that delays in transmission may lead to a failure to miss the time limit, and from the fact that – in contrast to last-minute transmissions directly to the Office – the instructions of the applicant to its representative still lie in the sphere of the applicant and that the interposition (Zwischenschaltung) of the representative naturally generates further transmission risks.

[7] For the above reasons the requirements of A 122(1) and R 136 have not been met and, consequently, the appeal has to be dismissed.

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

The file wrapper can be found here.