J 4/13 – Late Payment Due To Premature Delivery

This decision deals with a request for re-establishment into the time limit for filing the renewal fee for the third year, which had fallen due on November 30, 2007.

The factual situation was as follows:

Renewal fee payments had to be made by the representative. An employee, Mrs Ariane C., was in charge of these operations. On her return from her holidays, in August 2007, she had informed her employer that she was pregnant and that she envisaged taking a maternity leave after the birth, which was expected to take place in December. After a premature delivery on October 14, 2007, she took her maternity leave and finally resigned on February 8, 2008. As her intentions were not clear before her resignation, it was difficult to find an adequate replacement strategy.

Mrs Valérie T., who had been in charge of the secretarial work for over ten years, fell seriously ill in February 2008. Her sickness finally led to her being made redundant on July 11, 2008. She was replaced by Jean-Louis B., who worked under the supervision of the representative.

The professional representative also invoked the fact that another IP law firm (Célanie) had been asked to help with the monitoring of time limits. A list of all the due dates was to be established under the supervision of a competent patent engineer of this law firm. Unfortunately, this patent engineer was unable to warn the professional representative on the November 30 time limit, probably because the list was established in chronological order.

The EPO expressed reservations on the admissibility and allowability of the request and invited the representative to comment on the objections within two months. As no response was received, the request for re-establishment was refused on October 30, 2009. The letter was received on November 3, 2009.

On March 17, i.e. well after the time limit for filing an appeal, the representative filed an appeal against this decision. He explained that it was during a meeting of the representatives of the applicant that he had learnt about the decision refusing re-establishment. As the acknowledgement of receipt had not been signed by a person entitled to do so, the appeal was filed in time. As an auxiliary request, he filed a request for re-establishment into the time limit for filing an appeal.

Here is how the Legal Board of appeal (LBA) handled this case:

*** Translation of the French original ***

Admissibility of the appeal

[1.1] The impugned decision is dated October 30, 2009. Pursuant to R 126(1), first sentence, it has been notified by means of a registered letter on November 3, 2009. Assuming a regular notification, the time limit for filing an appeal expired on January 10, 2010 (i.e. Ocober 30, 2009 + 10 days + 2 months, R 126(2) in connection with A 108, first and second sentences). The notice of appeal (completed by the statement of grounds for appeal) was received at the EPO on March 17, 2010, i.e. well beyond the legal two-month time limit. The same holds true for the appeal fee, which has been paid on March 18, 2010. Thus in principle the appeal is deemed not to have been filed (A 108, first and second sentence).

[1.2] In his notice of appeal, the representative explains that the acknowledgement of receipt had been signed by Mrs M., an employee of the Delpharm company, and not of the Gefib law firm, to which the decision of refusal had been sent and which was located in the same building as the Delpharm company. Mrs M. was not entitled to sign acknowledgements of receipt on behalf of the Gefib law firm but had to send the postman to the Gefib law firm where the registered letter was to be received. A corresponding declaration on behalf of Mrs M. was filed.

[1.3] In view of the explanations and the declaration under consideration, [the Board] has to accept that the notification was deficient.  

[1.4] Pursuant to R 125(4) “the document shall be deemed to have been notified on the date established by the EPO as the date of receipt”. Thus the LBA has to establish when the decision to refuse the request for restitution in integrum was actually received by its addressee. As the acknowledgement of receipt, which normally establishes this proof, is not regular, [the Board] comes to the conclusion that Mr B., who is the professional representative to whom the communication was to be sent (R 130(1)), was informed of the letter on February 4, 2010, as he had admitted (cf. notice of appeal […]).

[1.5] As the notice of appeal was received on March 17, 2010, and the appeal fee paid on March 18, 2010, the appeal has been filed within the two-month time limit under A 108, first and second sentence. As the statement of grounds of appeal was annexed to the notice of appeal and received on the very same day, the statement has, therefore, been received within the four-month time limit stipulated in A 108, third sentence.

[1.6] Thus the appeal is admissible.

Request for restitutio in integrum

Admissibility of the request for restitutio in integrum

Date of the removal of the cause for non-compliance (R 136(1), first sentence)

[2.1.1] According to the established case law of the Boards of appeal (see e.g. J 7/82 and T 428/98), the cause of non-compliance is removed on the date on which the person in charge of the patent application (in the present case: the duly authorised professional representative) realizes that the time limit has not been met. In the present case, this is the receipt of the communication of loss of rights dated July 4, 2008, which has made the professional representative pay the taxes that had fallen due, i.e. complete the “omitted act”. This means that the dates that could possibly trigger the two-month time limit under R 136(1), first sentence, are on or after July 5-6, 2008 – the date on which the communication of loss of rights was received – and before or on July 21, 2008, the date on which the due taxes were paid, i.e. the date on which the “omitted act” was completed.

[2.1.2] As the professional representative has filed a request for restitutio in integrum together with the corresponding grounds and paid the fee for restitutio in integrum on August 26, 2008, the two-month time limit  mentioned above has been respected, irrespective of which hypothesis is retained.

[2.1.3] Thus the request for restitutio in integrum is admissible (A 122(2), first sentence, in connection with R 136(1) and R 136(2), second sentence).

[2.1.4] In addition to that, although this is not decisive here, the Board wishes to emphasize that the fact that the EPO sends a communication pursuant to R 51(2) and establishes its date of receipt cannot constitute, as such, the date of “removal of the cause for non-compliance”. The latter date is established based on the factual elements of the case under consideration. The removal of non-compliance is a factual question that has to be decided on a case-by-case basis (see the decisions cited above, point [2.1.1]). On the other hand, contrary to what has been asserted by the professional representative, the pure and simple application of the fictitious delay of notification  (the 10-days-rule), in the present case, to the communication of the loss of rights for calculating the two-month time limit pursuant to R 136(1), first sentence, is legally wrong and would go against the established case law of the Boards of appeal.

Allowability of the request for for restitutio in integrum

Requirement of due care

[3.1.1] According to A 122(1), the applicant or, as the case may be, its professional representative has to show that it was unable to observe a time limit vis-à-vis the EPO in spite of all due care required by the circumstances having been taken.

[3.1.2] According to the established case law of the Boards of appeal, the facts of each case have to be examined as a whole, as they were before the expiration of the time limit, in the present case between November 2007 and June 2008. In other words, what is to be examined in order to determine whether “all due care required by the circumstances” is exclusively the circumstances as they were during that period.

[3.1.3] Following the absence and the departure of Mrs Ariane C., the law firm of the professional representative has implemented three levels of supervision of time limits:

(a) The replacement of Mrs Ariane C. by Mr B. the younger;

(b) the use, under these particular circumstances, of the additional help of an outside IP law firm, the Célanie law firm;

(c) the supervision of the time limits by the Benech law firm, which had remained in direct contact with the applicant.

[3.1.4] Concerning point (a):

The replacement of Mrs Ariane C. by a person that was “equally qualified”, i.e. Mr. B the younger, was said to be one of the measures establishing that all due care required by the circumstances had been taken. However, [the applicant] has not indicated or proven the date of replacement. It appears that it occurred quite some time after the time limit had been missed. In this context the Board notes that no evidence has been filed for the asserted facts, such as declarations or affidavits of the persons concerned and material elements.

[3.1.5] Concerning point (b):

The role of the Célanie law firm in the supervision of the time limits is unclear. It is not sufficient to just mention another law firm and to supply a CV of its manager. Point 16 of the statement of grounds of appeal mentions a competent patent engineer who had failed in his task. No declaration on his behalf concerning the proceedings he had supervised was filed. Generally speaking, as already indicated above, all the facts have to be justified by means of declarations or affidavits of the persons concerned. No such documents have been filed, even after the Board had expressly asked for such documents in its communication.

[3.1.6] Concerning point (c), it is true indeed that the Benech law firm has informed the Gefip law firm of the renewal fee to be paid before November 30, 2007. However, this warning has not had any effect, for reasons that have not been set forth.

[3.1.7] Finally, in point 14 of the statement of grounds of appeal it is said that the professional representative has done some supervision work, but no explanation or evidence whatsoever has been provided as to the concrete mode of supervision.

The “isolated mistake”

[3.2.1] According to the appeal, Mrs T. had been performing her duties as an assistant for ten years. In the present case, she has not carried out the task that had been entrusted to her, i.e. filing the cheque at the bank. This was said to be an isolated mistake made  by an assistant. This mistake was explained by the fact that she had fallen ill in Feburary 2008 and had been made redundant in July 2008. It was asserted that the instability and weakness caused by her sickness probably led her to make that mistake, which she had never made before.

[3.2.2] However, Mrs T. was said to have received the instruction to pay the taxes as soon as the communication was received on January 8, 2008. She has fallen ill in February 2008, i.e. one month after her “isolated mistake”. The Board cannot help but note a lack of coherence of the facts. On the other hand, point 19 of the statement of grounds of appeal asserts in regard of the deposit of the cheque at the bank that “the enclosed slip had already been filled in” and that “[t]he other payments entrusted in January … had been made”. These assertions are not supported by any evidence although the Board has expressly asked for the corresponding documents to be filed.

[4] In view of the above, the Board can only conclude that the request for restitutio in integrum is not allowable (A 122(1), together with R 136(2), first sentence). Thus the appeal has to be dismissed.

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

The file wrapper can be found here.