Thursday, 6 June 2013

J 10/11 – File In A Cupboard

In this decision the Legal Board dealt with a refusal of an Examining Division (ED) to refund a fee paid for further processing.

On April 14, 2008, the ED had issued a Communication pursuant to A 94(3) and invited the applicant to respond within a period of six months (i.e. on or before October 24, 2008). Because of an internal coding error, the ED issued a communication noting a loss of rights on September 25, 2008. Upon request of the applicant, the ED cancelled this communication.

On October 24, 2008, the appellant requested an extension of the six-month period by two months. This request was refused on November 5 on the ground that the request did not give sufficient reasons.

On November 28, 2008, a communication noting a loss of rights was issued.

The applicant requested further processing on December 3, 2008, as well as a refund of the corresponding fee. It expressed the opinion that the request should have been granted, in view of the special circumstances (first erroneous noting of loss of rights).

When the ED refused this refund, the applicant filed an appeal.

The Legal Board found the appeal to be inadmissible.

The legal framework

[2.1] One of the conditions of admissibility of the appeal is that the statement of grounds of appeal satisfies the provisions of A 108, third sentence, and R 99(2). Otherwise, the appeal must be rejected as inadmissible under R 101(1).

According to A 108, third sentence, “[w]ithin four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations.” Pursuant to R 99(2), “[i]n the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.”

If the appellant submits that the decision under appeal is incorrect, then the statement setting out the grounds of appeal must enable the board to understand immediately why the decision is alleged to be incorrect and on what facts the appellant bases its arguments, without first having to make investigations of its own (cf. T 220/83 [4] and T 177/97 [1]; affirmed by numerous decisions, and in particular recently by T 573/09 [1.1]).

Whether the requirements of A 108, third sentence, in conjunction with R 99(2) are met has to be decided on the basis of the statement of grounds of appeal and of the reasons given in the contested decision (see, e.g., J 22/86 [2]; T 162/97 [1.1.2]).

Exceptionally, it has been acknowledged that “the requirement for admissibility [laid down in A 108, third sentence, EPC 1973] may be regarded as satisfied if it is immediately apparent upon reading the decision under appeal and the written statement [of grounds] that the decision should be set aside” (see J 22/86 [headnote I]).

The reasons given in the decision impugned

[2.2] In order to determine whether it is possible for the board to understand immediately why the decision by the ED rejecting a refund of the fee for further processing is alleged to be incorrect and should therefore be set aside, the board notes that the ED provided the following reasons for its confirmation of the refusal of the appellant’s request for extension of the six-month period:

(i) No reasons were given in that request why exceptionally an extension should be allowed.

(ii) The EPO’s unintentional erroneous first noting of loss of rights could not be regarded as exceptional circumstances justifying such extension. This is because the appellant had been afforded a period of six months for filing a response to the examination report. The appellant’s representative should have known that, in accordance with point 1.6 of Part E, Chapter VIII of the EPO Guidelines, sufficient grounds had to be given for a request for extension of time, acceptance of which would lead to a total period set exceeding six months.

The ED concluded from the above reasons that the request for reimbursement of the fee for further processing had to be rejected.

The content of the statement of grounds

Re reason (i)

[2.3.1] In the statement of grounds, the appellant did not allege that it had filed any reasons together with its request for extension according to which such extension should exceptionally be allowed.

Re reason (ii) above

[2.3.2] The ED […] found that “the unintentional mistake made by the EPO [i.e. the first noting of loss of rights having been issued in consequence of the erroneous coding of a four month time-limit ] … can not [sic] be regarded as exceptional circumstances” (making a reply in the six-month period impossible).

The appellant, in the brief statement of grounds comprising little more than one page, has not made it clear why this finding is allegedly incorrect.

In the fourth paragraph of the statement of grounds, referring to the above-quoted portion of the decision impugned, the appellant argued as follows: “This statement is clearly erroneous as most time limits are entered correctly into the EPO computer system”. The appellant thus asserted that there were exceptional circumstances being the erroneous coding of the six-month time limit as a four-month period that caused the first noting of loss of rights that was later cancelled. In this context the appellant also mentioned that it took a reminder to make the EPO act more than two years from its mistakes. Both facts ran counter to its legitimate expectations.

However, the appellant has made no submissions as to why those allegedly exceptional circumstances made it impossible for the appellant to file a timely reply, i.e. what was the causal relationship between the reasons given in the statement of grounds of appeal and the asserted invalidity of the findings of the decision impugned. Such submissions would have been necessary because a causal relationship is not obvious in the present case.

The ED’s communication of 14 April 2008 unambiguously invited the appellant to reply within a period of six months that expired on 24 October 2008, i.e. the date when the appellant filed its request for extension that included no reasons. It is not clear what impact the erroneous loss-of-rights communication by the EPO of 25 September 2008 according to which the time limit had expired two months earlier (than 24 October 2008) could have had on the appellant’s ability to reply within the six-month period. This is even less so as it had been the appellant itself that had spotted the error and informed the EPO thereof by its letter dated 10 October 2008, further to which the EPO, on 15 October 2008, cancelled the noting of loss of rights. In the letter of 10 October 2008 the appellant expressly referred to the “due date of October 24 next”.

An alleged or apparent relationship (connection) between the grounds of appeal and the findings of the decision impugned, however, would have been required. Otherwise the board is not in a position to understand immediately why the decision is alleged to be incorrect as required by the case law set out above […]. If no causal relationship in the above sense were required, then any submission, even if not having any connection with the reasons on which the decision impugned is based, would be acceptable. This would render the provisions of A 108, sentence 3, moot. It is true that, taking into account that the furnishing of a statement of grounds is a condition of the admissibility of the appeal and not of its being well-founded, the grounds do not have to be conclusive in themselves, i.e. justify the setting aside of the decision impugned. The grounds must however enable the board to assess whether or not the decision is incorrect.

Re reason related to the term “under the circumstances”

[2.3.3] For the first time in the oral proceedings (OPs) the appellant claimed that the portion of the grounds reading that the
Applicant and the undersigned [its representative] were in good faith under the impression that an extension of two months would be available under the circumstances (emphasis added)
explained why the decision under appeal was incorrect. The appellant argued that this portion expressed the legitimate expectation to the effect that any first extension of a time limit set for filing observations to a communication pursuant to A 94(3) would be granted. During years of practice a first extension of such time limit had always been granted, even in case of an initial time-limit of six months and notwithstanding the wording of the pertinent part of the EPO Guidelines.

However, the board is unable to attribute such a content to the text of the one sentence quoted above, which gives no specific indications as to the nature of the “circumstances” and immediately follows the paragraph referring to the erroneous initial coding of the time limit by the EPO. Nor can any indication to this effect be derived from the remainder of the statement of grounds, which nowhere refers to any constant EPO practice to grant a first extension of a six-month time limit in the absence of any reasons given to this end.

[2.4] Whether it is immediately apparent that the decision cannot be upheld

The board cannot discern that this is an exceptional case in the sense of the last paragraph of point [2.1] above. It is not immediately apparent upon reading the decision under appeal and the written statement of grounds that the decision should be set aside.

The erroneous loss-of-rights communication

[2.4.1] In the decision under appeal, the ED […] referred to the appellant’s letter of 3 December 2008 in which the appellant explained that there was not sufficient time to file a response due to a mistake made by the EPO, i.e. the noting of a loss of rights in error. In that one-page letter […] the appellant’s representative argued that he only received the EPO’s letter cancelling the (first) noting of loss of rights on 20 October 2008 and “needed more time than four days to handle this file” (emphasis added). The board is unable to understand this explanation. There is nothing on file suggesting that the representative was unaware at any point in time that he had a period of six months, and not four days, “to handle this file”.

On the contrary, as referred to […] above, in its response of 10 October 2008 to the erroneous loss-of-rights communication the appellant itself expressly referred to the “due date of 24 October next” and asked for cancellation of the communication. This makes it crystal clear that the appellant was aware of the six-month time limit and that the loss-of-rights communication had no impact on the appellant’s ability or inability to respond within the time limit set.

But even if the appellant’s explanations in this regard made subsequent to the statement of grounds of 15 July 2011 in its letter of 8 May 2012 could be taken into account, the board would still be unable to detect any respective serious mistake in the first-instance proceedings. In that letter the appellant’s representative argued that, under the standard work flow in a firm of patent attorneys, the patent attorney took up the file of an overseas applicant again as soon as the time limit for reply to a communication by the EPO approached. If no instructions were received from the applicant, the patent attorney drafted a reply for the applicant’s approval, if possible. Otherwise, the patent attorney requested further information from the applicant and an extension of time of two months from the EPO. As to the present case, the representative stated that it was only after the communication of 25 September 2008 noting a loss of rights (“After this had been redressed …” […]) had been cancelled with a letter of 15 October 2008 received on 20 October 2008 that he started studying the case (and concluded that further information was needed from the applicant).

However, as the board had said at point 5 in its communication annexed to the summons to OPs of 20 September 2012,
… it is the rationale of allowing a longer than four-month original time limit expressed in the Guidelines at point 1.2 that it must be “clear that in the circumstances a four-month time limit cannot be adhered to. … a six-month time limit might be justified if for example the subject-matter of the application … or the objections raised are exceptionally complicated.” This means that the representative is afforded two more months for dedicating time to working on the case and not for leaving the file in the cupboard and waiting until the time limit “approaches” to then contact the applicant if necessary. (Emphasis added)
With respect to the appellant’s request that the board withdraw the reasoning “under 5 of the preliminary opinion”, the board notes that there is no legal basis for a board of appeal to withdraw statements of fact or conclusions of law of the kind made provisionally under point 5 of the communication annexed to the summons. The above-quoted statement by the board, being the gist of point 5 of that communication, is a general one and cannot be considered as suggesting that in the case under appeal no contact between the representative and the applicant had taken place at earlier stages of the prosecution of the present application. The board repeats that the appellant had six months and not four days “to handle this file”. Hence the board could not detect any obvious serious mistake as far as the period allowed for the appellant to respond to the communication of 14 April 2008, on which the ED’s communications were based, is concerned.

Delay in issuing the decision impugned

[2.4.2] The appellant also relied on the fact that the EPO issued its decision only subsequent to a reminder after more than two years’ time. However, this cannot have any bearing on the question of whether the content of the decision was influenced by an obvious procedural mistake.


[2.5] In the light of the foregoing considerations, the board has arrived at the conclusion that the statement of grounds of appeal does not comply with the provisions of A 108 and R 99(2). It follows that the appeal must be rejected as inadmissible under A 101(1).

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