T 50/12 – Please Mister Postman

This examination appeal would have gone unnoticed by me if Laurent Teyssèdre had not discussed it on his blog (here).

The Examining Division (ED) had refused the application on July 7, 2011.

In principle the time limit for filing an appeal expired on September 19, 2011.

The appeal was filed on September 20.

The appellant filed a statement of grounds of appeal as well as an auxiliary request for re-establishment.

The core argument of the appellant was that the actual day of delivery was not July 19 (the date on the advice of delivery) but on July 20. The mailman was said to have made a clerical mistake by putting the wrong date on the advice of delivery.

The Board found the appeal to be inadmissible:

The legal frame

[1] A 108 provides that the notice of appeal shall be filed at the EPO within a time limit of two months of notification of the contested decision.

Under R 101(1), if the appeal does not comply with, in particular A 106 to A 108, the board of appeal must reject the appeal as inadmissible.

In the present case, considering the date mentioned on the advice of delivery, the appeal was lodged one day after the expiry of said time limit and it should therefore be held inadmissible.

Establishing the date of delivery

[2] By producing the advice of delivery, the EPO fulfilled its duty under R 126(2) to assess the actual date of delivery to the addressee.

Hence, the burden of proof now lies with the appellant. If the appellant intends to establish that the date mentioned on the advice of delivery is erroneous, it has to bring convincing evidence, which is not the case at present.

The appellant’s submission that the starting point of the time limit should be fixed on 20 July 2011 due to a mistake made by the mailman in Italy, who erroneously affixed the stamp of the previous day, does not convince the board.

To this end the appellant submitted two documents.

The appellant’s representative produced a written statement (first document), signed by the gatehouse responsible for its building, asserting that said letter with advice of delivery arrived on 20 July 2011 and that no such letter was delivered at all on 19 July 2011.

It also produced a copy of the EPO Form 2936 (second document) indicating “Received on 20.7.2011” with the signature of the authorised recipient, M. Paolo G., also the representative of the appellant.

As to the first document – the written statement of the caretaker – this cannot be placed on the same level, as regards its reliability, as the act of a postman who is a civil servant and exercises his duty under oath. This statement therefore does not convince the board.

As to the second document, i.e. EPO Form 2936, this acknowledgement of receipt was introduced by the EPO a long time ago in order to avoid difficulties linked with the fact that advices of delivery were not returned to the EPO or not completed. The parties were thus given the possibility to date and sign this form and to return it immediately (emphasis added by the board) to the EPO through Epoline, by fax or by post, as explained in the Notice from the EPO dated 10 June 2010 and published in OJ EPO 7/10, 377, in particular point 4.

In the present case, the acknowledgement of receipt constituted by Form 2936 was not returned to the EPO immediately after the date of notification, but later on, namely on 16 November 2011, together with the statement of grounds of appeal and the request for re-establishment of rights, namely on 16 November 2011. This delay deprives the second document of any probative value. It is obvious that in such circumstances the date mentioned on this document may be the one chosen by the addressee to suit his convenience and therefore amounts to self-made evidence.

In passing, reference is made to an “Enclosure of prepared acknowledgement of receipt” presented by the EPO in its Official Journal EPO 7/94, 325, [NB: this should read 7/84, 325] according to which, in its point 4 the recipient was “asked to acknowledge receipt and return the acknowledgement by return of post”.

In summary, there is no convincing evidence that the date of delivery is erroneous.

The contestation of the delivery itself

[3] In its statement of grounds of appeal (last but one paragraph), the appellant wrote: “… the mistake about the effective date of receiving of the communication of refusal (written on the receipt as 19/07/2011, but actually received by us on 20/07/2011) has probably to be ascribed to the Italian Mail Service, which writes on the receipt the date on which the mail has been given to the Mailman for delivery. However, the Mailmen delivered the mail to our gatehouse service in our building on the following day, namely 20/07/2011, as our gatehouse responsible is confirming in writing....”

By the attached testimony, the gatehouse asserted that the person in the gatehouse received no registered letter coming from the EPO on 19 July 2011 but that said letter arrived on 20 July 2011 for which he signed the advice of delivery.

From the above it appears clearly that the advice of delivery dated 19 July 2011 reached the appropriate destination and was signed by the caretaker.

In his letter dated 12 June 2012, the representative put forward the new argument that the one who signed the advice of delivery was unknown, suggesting that it could have been the mailman himself, and concluded that said letter did not reach its addressee. Since the EPO had failed to establish the real date of notification, the EPO should admit that the notification was effective on 20 July 2011 as alleged.

In the board’s view, firstly it must be born in mind that a party cannot deviate completely from an earlier statement in a later one contradicting the first. This derives from the obligation of fairness in the course of the proceedings, an obligation which is not restricted to the EPO or to the boards, but also applies to the parties, among them and vis-à-vis the deciding body.

Apart from that point, a simple comparison between the signature of the advice of delivery and the assessment of the caretaker dated 14 November 2011 confirms beyond all reasonable doubt that the latter was the signatory.

The appellant did not formally deny that said caretaker was entitled to receive and sign registered letters on its behalf. The testimony of the caretaker is evidence at least that such was the common practice.

Therefore, the board concludes that the notification reached the representative of the appellant on the date mentioned on the advice of delivery, i.e. on 19 July 2011.

The provisions of R 126(2) have thus been complied with.

The advice of delivery is the evidence of the receipt of the notification, which amounts to tautology. This is in fact the only evidence that the EPO can bring. According to R 126(4), to the extent that notification by post is not covered by R 126(1) to (3), the law of the State in which the notification is made shall apply. However, in the present case, the provisions of R 126(1) to (3) apply. Thus, the provisions of R 126(4) under which the law of the State in which the notification is made are not applicable in the present case.

Turning back to the contestation of the date of delivery itself, the burden of proof lies on the appellant. The appellant denies the date put on the advice of delivery and it is therefore up to him to provide evidence that this date was wrong, or at least to make the occurrence of a mistake highly plausible, which is not the case at present. As already explained above (point [2.1]) the board cannot accept the statement of the caretaker as conclusive enough.

The expression “in the event of any dispute” used in R 126(2), second sentence, does not mean that where the ten-day fiction does not apply, which is the case at present, the parties should be allowed to raise any kind of objection. The dispute, if any, has to be founded on facts which are likely to cast doubt on the reliability of the date of delivery given. Otherwise, it would mean that the addressee, even in the presence of an advice of delivery, could choose the date of receipt at its own convenience, which would deprive the time limit set out in A 108 of its very substance.

It can be derived from the above that the appeal was late-filed and is thus inadmissible.

Request for re-establishment of rights

Admissibility

[4.1] The request for re-establishment of rights, which complies with the time limit laid down by R 136(1), is admissible.

Allowability

[4.2] Under A 122(1), the applicant for a European patent must have his rights re-established upon request when he 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.

In the present case, the appellant’s representative explains that he was not able to comply with the two-month time limit laid down by A 108 to file an appeal due to the fact that the contested decision dated 7 July 2011 was notified to him on 20 July 2011, and not on 19 July 2011 as indicated on the advice of delivery.

Assuming, for the sake of argument, that the contested decision might actually have been notified on 20 July 2011 instead of 19 July 2011, or that the representative believed that such was the case, the board considers that this did not prevent the representative from filing an appeal within the applicable time limit.

A representative who is facing the possibility of filing an appeal, is concerned firstly with the time limit within which this act has to be done. Hence, he has to consider the documents assessing the starting point, which is the date of the decision plus 10 days or, if later, the date on which the letter was delivered to him (R 126(2)).

In this second case, which is the present situation, he necessarily considers the advice of delivery and thus can assess that the indicated starting point, even if erroneous, is the 19 July 2011. The representative is then aware of the mistake and knows that in order to avoid any concern relating to the admissibility of the appeal, he has to file the appeal on 19 September 2011 at the latest.

Under the present circumstances, the board tends to consider that waiting until after the end of the time limit as it stands from the file does not indicate the exercise of all due care. On the contrary, the appeal has unnecessarily and in full knowledge been put at risk. This is all the more true given that no real cause of non-compliance with the time limit resulting from the date put on the acknowledgement of receipt has been put forward.

Thus, the request for re-establishment of rights is not allowable and, consequently, the appeal remains inadmissible.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

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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.

T 744/11 – Three Minutes

This is an examination appeal.

The statement setting out the grounds of appeal was received in electronic form three minutes after expiry of the four-month time limit for filing the grounds of appeal.

The registrar of the Board informed the appellant of the late receipt of the statement setting out the grounds of appeal.

The appellant responded by requesting the Board to decide under R 112(2) that the statement of grounds of appeal was filed within the relevant time limit or, in the alternative, to grant re-establishment of rights under A 122 in respect of the non-observance of the time limit for filing the statement of grounds of appeal.

[1.1] The decision refusing the European patent application was notified by registered letter on 17 November 2010 and thus was deemed to have been received 10 days later on 27 November 2010 (R 126(2)). The four-month time limit for filing the statement of grounds of appeal, under A 108, would have expired on 27 March 2011. However, this day was a Sunday, so the time limit expired at midnight on the following day (R 134(1)). The appellant filed his statement of grounds electronically. The receipt for this document was generated at 00.03 hours on 29 March 2011, i.e. three minutes after the expiry of the time limit for filing the grounds of appeal. This should normally result in the appeal being rejected as inadmissible (R 101(1)).

[1.2] The representative of the appellant argued that his office was based in Cambridge and that, since the clocks in the United Kingdom were one hour behind Central European Time (CET), he had sent the statement of grounds on 28 March 2011, which was within the time limit fixed by A108. According to Article 9(3) of the “Decision of the President of the EPO dated 26 February 2009 concerning the electronic filing of documents” (OJ 3/2009, 182) the date of receipt accorded to documents electronically filed within the EPO under R 2 should be the date on which they were received at the EPO. This wording was broad and covered, at the very least, the date in any EPC state on which the documents were received at the EPO. The time marked on the receipt was 00.03 Central European Time (CET) 29 March 2011. The United Kingdom, however, was situated in a time zone one hour behind CET, and so the time and date when the document was received at the EPO was 23.03 British Summer Time (BST) on the 28 March 2011.

The Board cannot accept this argument for the simple reason that the relevant time for the purpose of the law is the time at the EPO (i.e. the time at Munich or The Hague) and not the time in the United Kingdom. Therefore, the appellant missed the time limit for filing the grounds of appeal (A 108) which normally results in the appeal being rejected as inadmissible (R 101(1)) and, thus, in the loss of a means of redress.

[1.3] According to A 122(1), the applicant for a European patent who, 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 shall, upon application, have his rights re-established if the non-observance in question has the direct consequence, by virtue of the EPC, of causing the loss of a means of redress.

[1.3.1] The Board considers the appellant’s request for re-establishment of rights as regards the time limit for filing the notice appeal allowable (A 122(4)), in particular because the appellant has shown that the non-observance of the time limit was not caused by lack of due care but rather by a justifiable human error of the representative. However, it is not necessary to go into more details because the appeal, though admissible, is not allowable for the reasons set out herein below. […]

The requests on file were found to lack clarity and the appeal was dismissed.

Re-establishment is not always obtained that easily, is it?

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 555/08 – Things Assistants Can’t Do

“Cathy, I want you to write me an inspiring, dynamic 
speech that bears my unmistakable stamp of genius.”

In this examination appeal case Board 3.5.05 had to decide on a request for re-establishment into the time limit for paying the renewal fee for the 13^th year (1420 €) which had fallen due during pending appeal proceedings.

The applicant, who was not represented, had entrusted the administrative matters related to his patent applications to Mrs Elke Z., the manager of the company that commercialised his inventions.

Mrs Z. intended to pay the renewal fee (which fell due on March 31, 2011) on January 31, 2011, and had her bank manager fill in a form transferring 850 € from her private account to the EPO (she had found in the booklet ‘National Law relating to the EPC’ that 850 € was the amount to be paid for Germany). However, the bank manager had filled in the form such that the money was transferred to the business account of her company, possibly because he thought that the transfer to the EPO would then be made from the business account. Mrs Z. thought that the money had been transferred to the EPO and did not take any further steps.

When the applicant received the communication that the fee had not been paid, he called Mrs Z., who confirmed that the payment had indeed been made. He was satisfied with this information and did not take any further steps; he only realised that something had gone wrong when he received the notification of loss of rights.

Unsurprisingly, the Board did not grant re-establishment. The decision is interesting because it applies the extensive case law on assistants of patent attorneys to assistants of unrepresented inventors.

*** Translation of the German original ***

[3.1] Against the background of the factual situation that has been presented in the course of the written proceedings and discussed in detail during the oral proceedings, it has to be decided, in application of A 122(1), whether the applicant/appellant has missed the time limit for paying the renewal fee for the 13^th year “in spite of all due care required by the circumstances having been taken”.

[3.2] According to the wording of this provision and the established case law of the Boards of appeal a request for re-establishment can only be granted if the requesting party was unable to observe the time limit in spite of all due care required by the circumstances having been taken. For the purposes of A 122(1) the circumstances of the individual case have to be considered in their entirety. The duty of due care has to be assessed in the light of the situation as it was before the expiration of the time limit. “All due care” means the standard of care that the notional reasonably competent applicant or appellant, respectively, would have employed under the relevant circumstances (cf. T 30/90 [3]).

[3.3] When the applicant is not represented by a professional representative during the entire examination proceedings and is sole responsible for the payment of renewal fees, lower standards for the duty of due care are indeed to be applied, but there still is a duty of due care regarding the proceedings. Such an applicant, who does not use the services of a professional representative, has to be prepared, within the limits of his possibilities, to carry out the acts required in the course of the grant proceedings in a regular manner and in due time. He cannot as a rule (generell) invoke his ignorance of the law nor may he refrain from taking reasonable (zumutbar) measures for keeping time limits (J 5/94 [3.1]; J 15/08 [3.2.1]; J 8/09 [4.2]).

[3.4] A system for monitoring pending time limits is part of the reasonable measures for keeping time limits. It is irrelevant in this context whether this system is on paper or electronic (e.g. by means of special software or an Excel sheet) (cf. T 1962/08 [5.2.4(a)]).

[3.5] According to the established case law of the Boards of appeal due care regarding missed time limits is considered to have been taken when the failure to keep the time limit was caused either by extraordinary circumstances such as e.g. illness (no such circumstances have been invoked in the present case) or resulted from an “isolated mistake within an otherwise satisfactory system” (cf. J 2/86 [headnote; 4])

[3.6] In the present case the appellant has entrusted the payment of the renewal fees and the remaining administrative work related to the patent application to his business partner, Mrs Z. An applicant or a representative is not required to carry out all the actions he has to perform vis-à-vis the EPO himself. If an applicant or representative entrusts such actions to an assistant (Hilfsperson) he will not be held accountable for a failure of this assistant only if he himself has complied with a set of particular requirements. He must have carefully chosen the assistant, instructed him/her properly in view of the tasks to be performed and must have exercised reasonable supervision of his/her work (J 16/82 [5]). The expression “assistant” within the meaning of the case law does not refer to the hierarchical position of this person with respect to the applicant or representative but only to the fact that this person carries out certain tasks for the applicant or representative in the context of actions to be performed vis-à-vis the EPO. Thus, as far as the failure to meet the time limit is concerned, Mrs Z. is to be considered as an assistant. When assistants are used, the duty of due care primarily concerns the applicant unless a professional representative acts in his name. When the assistant makes a mistake, it has to be examined whether this mistake is due to insufficient selection, instruction and/or supervision by the applicant.

[3.7] In view of the monitoring of the time limits for paying renewal fees the Board notes that the applicant did not monitor time limits over the relevant period. He had entrusted this task to Mrs Z., to whom he had given a list in 2007 or 2008. This list inter alia indicated the filing date and the dates on which fees had been paid for each patent application; it did not indicate the amounts to be paid or the due dates of the fees to be paid in the future […]. The appellant has not claimed that these due dates or time limits had been documented or monitored in another way.

[3.8] The Board is of the opinion that it is questionable whether the monitoring of time limits as a whole can be entrusted to an assistant without there being a violation of the duty of due care, but this question may remain unanswered. In any case the duty of due care can only be said to have been complied with if the chosen assistant is sufficiently qualified in view of this task and when it is certain that he/she disposes of any information needed for reliably keeping the time limit.

[3.9] Based on the list she had received, Mrs Z. could only have ensured reliable monitoring of the time limits and payment of fees if she had known the relevant provisions of the EPC and the RRF and extracted the missing pieces of information from the European Patent Register. Although Mrs Z. had already correctly performed other duties regarding patent applications of the appellant, he could not rely on the fact that his business partner was sufficiently qualified for retrieving herself the required pieces of information regarding the amounts and due dates of future renewal fees. He would have had to give these pieces of information – which the applicant is expected to know (see above, point [3.3]) – in appropriate form to Mrs Z. The fact that this was not done means that Mrs Z. acting as an assistant was not sufficiently familiar or instructed with her task.

[3.10] As the entire correspondence of the EPO was sent to the appellant, he would have had to ensure that it was systematically and as soon as possible transferred to Mrs Z. Arranging for the incoming mail to be transferred does not constitute an unacceptable (unzumutbar) technical or economic problem, even for an individual applicant who is not represented (cf. J 27/01 [3.3.2]). A mere sporadic and personal transmission of incoming correspondence […] does not allow an assistant to establish a uniform and updated filing system (Ablage). However, such a filing system would be necessary for having an overview over actions that have been carried out and actions that are to be performed in the future. Thus the omission to systematically and rapidly transmit the correspondence constitutes a further lack of instruction of the assistant.

[3.11] The fact that the communication dated May 4, 2011, concerning the renewal fee for the 13^th year was not transmitted to Mrs Z. right away […] was not an isolated mistake but corresponded to the usual practice. The communication inter alia contained the indication of the amount of the renewal fee (1420 €) and the additional fee to be paid in case of late payment (710 €). If she had disposed of the communication, Mrs Z. could easily have seen that the amount she thought she had transferred to the EPO (850 € […]) was not sufficient and that it was at least necessary to clarify the situation. She might have contacted the competent formalities agent of the EPO by phone, because the number was mentioned on the communication of May 4, 2011. Thus the loss of rights could very likely have been avoided had the assistant been instructed completely and in due time, including timely transmission of the communication of May 4, 2011.

[3.12] Once he had received the communication of May 4, 2011, the appellant asked Mrs Z. on the status of the payment of the renewal fees. When she explained that the corresponding renewal fee had been paid, he did not take any further steps until he received the communication of loss of rights […]. In particular, he did not enquire at the EPO.

[3.13] The appellant was satisfied with Mrs Z.’s explanation on the phone that contradicted the contents of the communication of May 4, 2011, which he had before his eyes. In particular, the communication indicated that the renewal fee of 1420 € had not been paid on the due date of March 31, 2011, and that a loss of rights could still be avoided by a payment of 2130 € until the expiry of the sixth month after the due date. He could have quickly established that there had not been a correct payment by asking [Mrs Z.] questions on the transfer and the transferred amount.

[3.14] In a situation where oral assertions of an assistant are uncritically accepted as correct although there must have been doubts regarding this assertion, the standard of due care required in view of A 122(1) has not been complied with (cf. T 602/94 [3]). The omission to question or to check, respectively, has to be seen in the context of the requirement to supervise assistants. In particular when there are signs for a possible mistake, it would have to be checked whether the assistant carries out the duties entrusted to him/her correctly.  The appellant could have been expected to check, and indeed should have checked Mrs Z.’s assertion (e.g. by calling the number given on the communication).

[3.15] Even if the Board assumes in favour of the appellant that he was entitled to entrust all actions regarding the payment of renewal fees (including the monitoring of time limits) to Mrs Z. acting as an assistant, without violating the duty of due care resulting from A 122(1), the duty of due care was violated by the way in which Mrs Z. was used. She was not sufficiently instructed so as to be able to carry out her task (points [3.9] to [3.11]) and once the communication of the EPO regarding the failure to pay the renewal fee had been received, she was not sufficiently supervised (points [3.12] to [3.14] above).

[3.16] The fact that the transfer ordered by Mrs Z. had been made to her business account and not to the EPO […] is irrelevant under these circumstances. If the 850 € had reached the EPO, the communication of May 4, 2011, would still have been sent and the loss of rights would have occurred in the same way. The fact that only 850 € (instead of the required renewal fee of 1420 €) had been transferred is due to the fact that the appellant had insufficiently instructed Mrs Z.

[3.17] Thus the Board comes to the conclusion that the appellant has not exercised all due care required by the circumstances in dealing with the payment of the renewal fee. Consequently, the requirements of A 122(1) have not been satisfied and the request for re-establishment cannot be allowed.

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J 16/11 – Indian Wrestling

In this case the applicant fell into the trap which has been fatal to many unrepresented applicants: he did not pay the renewal fee for the third year in due time.

The fee was due on March 31, 2008.

On May 20, 2008, the EPO sent to the then designated representative (Mr S.) a letter by which it informed the applicant that the fee for the third year had not been paid by the due date, but could still be validly paid up to the last day of the sixth calendar month following the due date, provided that the surcharge was also paid.

The renewal fee was not paid within the time limit.

On November 6, 2008, the EPO issued a notification to the applicant’s representative stating that the application was deemed to be withdrawn.

On December 19, 2008, the EPO was informed that Mr L. had been appointed as the new European representative, replacing Mr S., who had resigned.

On January 8, 2009, the representative filed a request for re-establishment.

The grounds for re-establishment can be summarised as follows:

• At the beginning of 2008 the applicant had no prospective licensee any more for European countries so that he did not consider paying the renewal fee for the third year.
• later on the applicant, then travelling for his business in India, found new perspectives for the invention and intended to pay the renewal fee with the surcharge on his return.
• instead of staying two weeks in India as originally planned, the applicant worked there for about four months. Back in his office on 20 September 2008, the applicant had to face a lot of tasks and for some unclear reasons he did not come across the notice of his U.S. attorneys informing him about the possibility of late payment with a surcharge until 30 September 2008.
• the applicant was thus not aware of the imminence of the deadline which was missed.
• the European representative sent to the U.S. agent several reminders relating to the deadline for payment of the renewal fee for the third year and relating to the possibility of late payment with surcharge.
• the former U.S. attorney, who had meanwhile left the company, had marked the patent application abandoned and the staff member who took over the case did not see any reason to follow up the final deadline.
• the non-compliance with the time limit was noticed on 12 November 2008, when the notification of loss of right was received.

On August 10, 2011, the Receiving Section refused the request for re-establishment

The applicant then filed its appeal.

It the proceedings before the Board the applicant was offered the opportunity to provide some additional information. When doing so, the applicant contradicted its prior arguments to some extent. Small wonder that the Board dismissed the appeal:

[3.1] The decision under appeal considered that the reference point for examining the circumstances under which the applicant was expected to exercise all due care was the time limit of R 51(2), i.e. in the present case the final loss of rights that occurred when the renewal fee and the additional fee were not paid by 30 September 2008. The Board shares this view and will thus examine the case on this basis.

[3.2] Under the provisions of R 136(2), first sentence, the request for re-establishment of rights must state the grounds on which it is based and must set out the facts on which it relies. This means in particular that the request must firstly define the factual context in which the mistake occurred and secondly adduce convincing evidence in support of the alleged cause of non-compliance.

[3.3] The Boards of Appeal have consistently ruled that facts pleaded for the first time during the appeal proceedings should not in principle be taken into consideration(see J 18/98 [4], T 257/07 [1.2]).

[3.4] In the present case, the board by its communication informed the appellant that the evidence currently on file did not seem convincing enough for the contested decision to be reversed and, exceptionally, gave the appellant an opportunity to improve its case at this late stage of the proceedings.

[3.5] However, in its rejoinder the representative of the appellant, instead of filing evidence as suggested by the board, produced a “sworn statement” written by the appellant himself. In this the appellant gave a significantly different version of the facts as compared to what was the case so far and to a large extent in contradiction with the previously described circumstances.

[3.6] In this new statement and the accompanying letter of the representative, the appellant abandoned the stance taken hitherto, namely that he instructed his US attorney not to pursue the application because of a lack of commercial perspectives. He also stated – for the first time in the proceedings – that he did not receive from his US representative the reminder dated 18 December 2007 asking for instructions as to the payment of the renewal fee, nor any of the subsequent reminders, so that he had no reason at all to contact his US representative. The reasons for marking the file as abandoned by the US representative were attributed to a “possible misunderstanding”, the details of which were not known. The appellant furthermore indicated different dates relating to his trips to India, namely May and June 2007 and from 14 January to 12 February 2008, but these details were now held to be irrelevant, given that the cause of the error was seen in the fact that the appellant was not informed of any of the deadlines.

[3.7] The divergence that exists between the chain of events as explained in the grounds of appeal (and also in the request for re-establishment of rights) on the one hand and the version of the events as explained in the last submissions on the other hand is of such an extent that the board is not in a position to establish which version corresponds to the actual situation which led to the loss of the patent. This immediately raises the question whether the last submissions of the appellant are admissible at all, i.e. whether these facts and evidence are to be examined at all by the board (A 114(2)).

[3.8] Given that the new submissions do not complement the already existing facts, but present a new situation, the board holds that these facts and evidence must be disregarded pursuant to A 114(2). These facts clearly do not fulfil the requirements of R 136(2), in that they were not presented in the request for re-establishment of rights. They are also inadmissible pursuant to Article 13(3) RPBA, given that they raise issues which the board cannot be reasonably expected to deal with, such as the questions of due care in the circumstances leading to the alleged misunderstanding between the appellant and his US agents, or the reminders lost between the appellant and his US agents. The board adds that quite apart from the mentioned specific legal provisions under the EPC, bringing completely new and contradicting facts at such a late stage of the proceedings clearly goes against the general duty of fairness and good faith in the proceedings – whether towards the court(here the board) or the other party –, such a general duty being a generally recognised principle of procedural law in the contracting States (A 125).

[3.9] First of all, the board notes that once the last sworn statement of the appellant and the accompanying explanations given it its letter of 7 November 2012 […] are completely disregarded –  given the scale of the contradictions it brings in the party’s case – it does not improve the appellant’s case. From this it follows that the doubts of the board remain, due to the lack of reliable evidence on file as explained in the communication of the board […]. In this manner the board finds that it remains unproven that the appellant and his agents did take all due care as required by the circumstances. In particular, it remains unproven that the appellant was indeed unable to contact his US agents in order to inform them of his intent to keep the patent.

[3.10] Secondly, if the board were to admit formally in the proceedings the last submissions of the appellant, and would accept, for the benefit of the appellant, that all its submissions in fact relate to the same set circumstances, then it would again be bound to conclude that A 122 was not complied with. In the absence of any solid factual basis for the examination of the case, the board can only observe that far from filling the gaps in the account of the facts previously submitted, the last explanations given by the applicant have created a wide discrepancy between the successive versions of these facts so that it has became impossible to determine which (exceptional) circumstances the appellant and/or its representatives had to overcome in order to avoid the loss of rights. As a consequence, the Board is unable to determine whether the requirement of “all due care required by the circumstances” was met (emphasis by the Board), simply because the circumstances themselves remain unclear.

[3.11] When the factual circumstances surrounding the failure to observe a time limit are not established as in the present case, the board cannot examine who, among the applicant and his representatives, bears the responsibility for the mistake or ascertain where the mistake originated from. In such a situation, it is obviously impossible to determine what the appropriate behaviour should have been in order to avoid the loss of rights. Therefore, the request for re-establishment of rights must fail even if the board were minded to examine the last submission of the appellant on its merits.

[3.12] Finally, for the sake of completeness and once more for the benefit of the appellant, if the board were to look away from the fact that the last submission amounts to a completely new case, and were minded to take into consideration solely the last version of the events given by the appellant in his sworn statement and the accompanying letter of the representative, the Board would not come to a different conclusion on the appeal. Briefly, according to this last version of events the appellant had no personal action to undertake but relied on his US patent attorney who bore the responsibility for paying the renewal fee together with the European patent attorney. The file contains evidence as to the fact that the European patent attorney sent the appropriate reminders regularly and on time. The question that arises at that point would be why the US patent attorney did not pay the fee in due time on behalf of his client or send him reminder(s), or why none of these reminders were received. This question cannot be answered with a minimum degree of certainty, essentially because it was not part of the debate in the greater part of the proceedings. These focused instead on the notion that it was the applicant who had decided to let the application lapse and changed his mind later, after he had found new business perspectives. Thus in the absence of any reliable and credible explanation, the board can only come to the conclusion that there is no apparent reason which could possibly excuse the non-observance of the time limit. Given the fact that the appellant did not attend the oral proceedings, these questions could also not be answered during the oral proceedings.

[3.13] Since the appellant has not convincingly shown that he took all due care required by the circumstances the application for re-establishment of rights was rightly rejected. […]

The appeal is dismissed.

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