J 23/10 – Sound Of Silence

The applicant filed a request for re-establishment after it had been informed that its application was deemed to be withdrawn as a consequence of the non-payment of the renewal fee for the third year.

The applicant submitted that the notice drawing its attention to A 86(2) EPC 1973 had been received by Ms R., an employee of the applicant, who had written back to the EPO asking for substantiation of the annuity due date. Since she had not received any reply, she had assumed everything was in order and no further action was needed. The applicant had planned to pay the renewal fees via CPA. CPA got monthly lists of hundreds of cases. However, the present case was not included in these lists. The applicant was encountering severe problems with the interface between its internal software and CPA.

After a communication sent by the Receiving Section, the applicant filed an affidavit of Ms R. in which she explained that prior to April 2006 the applicant’s patent data were electronically exchanged with CPA and automatically entered onto CPA’s records. Owing to a change in the applicant’s software system, after April 2006 the patent data were sent by herself and manually entered by CPA in their records. She could not say why she had not informed CPA. She could simply guess that she had overlooked this particular number when preparing the relevant lists. Furthermore, since she was puzzled by the exact meaning of the communication pursuant to A 86(2) EPC 1973, she had written back to the EPO for clarification. As she had not received an answer, she had understood that the communication had been sent to her firm by accident and did not need to be acted upon.

The Receiving Section refused the request for re-establishment.

Did the Board allow it?

Allowability of the request for re-establishment

[4] According to A 122(1), an applicant can have his rights re-established only if he has sufficiently shown that in spite of all due care required by the circumstances having been taken, he was unable to observe the time limit. Under the established case law of the boards of appeal, an isolated mistake within a normally satisfactory system is excusable. The applicant or his representative must plausibly show that a normally effective system for monitoring time limits prescribed by the EPC was established at the relevant time in the office in question (see references in “Case Law of the Boards of Appeal of the European Patent Office, 6th edition 2010”, VI.E.7.3.3 a)).

[5] In the present case, it has not been shown that the applicant had such a satisfactory system in place. Monitoring of renewal-fee payments was performed by the use of a computer system which contained a great amount of data. Based on the date of filing of an application, this system calculated the due dates for the renewal fees. Every month a report was run in this database and a spreadsheet was generated which listed all the applications for which renewal fees had to be paid within the near future. This list was sent to CPA which then paid the fees due. In the case of a PCT application, the system only calculated the due date for the renewal fee once the “NP-filing date” had been coded, which for unknown reasons had not been done in the present case. This mistake obviously went unnoticed, which seems to imply that the thirty-one month time limit for entering the regional phase before the EPO was not monitored.  

For a system to be satisfactory, it must include a reminder system for an upcoming time limit which has to be met. Since the coding for entry into the European phase had not been performed, the system should have sent a warning that action had to be taken. If such a mechanism had been in place it would have been realised that the only procedural act still outstanding was payment of the renewal fee. Moreover, because no due date for the renewal fee had been calculated, the application did not get onto the list for CPA. At that stage, the next mistake happened. The representative explained during the oral proceedings that Ms R. should have checked the list for completeness based on the data of the parent application (i.e. the PCT application). It seems that this was her essential task at this stage, because the report and the corresponding spreadsheet were generated by the software system. In her affidavit, Ms R. stated that she guessed that she had overlooked this particular application number, which seems to imply that she had not performed her tasks properly. Summarising the above, the Board is of the view that the non-payment was caused not by an isolated mistake but by a series of mistakes which all went unnoticed, so that it cannot be said that the system in place was satisfactory.

[6] Irrespective of the applicant’s system, all due care was not taken, given that the applicant still had the possibility of paying the renewal fee within the additional period under A 86(2) EPC 1973 after receipt of the EPO’s notice of 17 April 2007 and it did not take the necessary action. By the notice of 17 April 2007, the applicant was clearly informed that the renewal fee had not been paid in due time and that it could still be paid within an additional period.

When Ms R. received this notice, all due care would have required checking the files in order to find out why it had not been paid. By doing so the mistake would have immediately become evident. Instead, Ms R. wrote to the EPO, enquiring about the due date.

The representative submitted that from a US applicant who is not necessarily familiar with the European patent system no other reaction could be expected. It was not necessary to provide a procedure in case the EPO erroneously sent a communication directly to the applicant instead of to the European representative.

In the Board’s view, it is indeed not necessary to have a specific procedure for such a situation, but a reasonable reaction which could have been expected of anybody would have been to check the situation based on the applicant’s own files. It cannot reasonably be assumed that, if no reply is received to an enquiry made with the EPO, everything is in order. This applies even more, if one is not familiar with the European patent system and if the applicant has the relevant information at hand to clarify the situation, either by checking its own records or by asking the appointed European representative. Simply believing, as was submitted by the representative, that the notice of 17 April 2007 did not concern the present application, and that no further action was required does not meet the requirement of all due care.

[7] The applicant maintained that the confusion arose because the EPO had sent the notice dated 17 April 2007 to the applicant itself, instead of to the appointed European representative. If it had sent the notice to the representative, the mistake would not have happened. It also would not have happened if the EPO had replied to Ms R.’s enquiry. Therefore, the principle of good faith applied.

[8] The principle of good faith implies that measures taken by the EPO should not violate the reasonable expectations of the parties to the proceedings.

It is to be noted that the notice drawing attention to the additional period under A 86(2) EPC 1973 is a voluntary service. Hence, the applicant cannot derive any claims if this communication is either not sent (see J 12/84) or not sent to the correct addressee.

The question remains whether based on the fact that the Office had not replied to Ms R.’s enquiry (at least not to herself) she could reasonably assume that everything was in good order and no further action was necessary. The protection of the legitimate expectations of users of the European patent system requires that the user must not suffer a disadvantage as a result of having relied on erroneous information received from the EPO or on a misleading communication (G 2/97 [4.1] summarising the previous case law).

In the present case, the Office did not give incorrect information but Ms R. drew incorrect conclusions from the fact that the Office did not reply to her. Furthermore, from Ms R.’s enquiry it was not apparent that she was under the impression that the fee did not have to be paid at all, but only that she was puzzled about the due date. As set out above, Ms R., who was a patent prosecution paralegal, could easily have established the situation by looking into her own records or consulting the European representative. Therefore, the principle of good faith does not apply.

Exclusion from file inspection

[9] According to R 144(d) in conjunction with Article 1(2)(b) of the decision of the President concerning documents excluded from file inspection (Special edition 3/2007 OJ EPO, 125), documents or parts thereof can be excluded from file inspection if their inspection would be prejudicial to the legitimate personal or economic interest of natural or legal persons.

The applicant’s representative explained that from the spreadsheet printout it could be seen that Microsoft paid the renewal fees for certain applications for which they were not the registered applicant. These applications had been transferred to them but this had not been made public. It was still the assignor who was mentioned in the register. In the Board’s view, this is information about internal relationships between the parties concerned, the publication of which could be prejudicial to their economic interests, while being irrelevant for the assessment of the patent application as such and therefore to be excluded from file inspection. Moreover, the content of the list did not play any role in the Board’s decision.

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