J 4/11 – Not Pending Any More

After G 1/09 had issued, there was quite some speculation on whether its verdict could be transferred to the case of deemed withdrawal. Well, here is a decision that sheds light on one such situation.

This appeal was directed against the decision of the Receiving Section (RS) posted to the appellant on 30 September 2010 refusing the request that the application under consideration be treated as a divisional application.

The parent application to the present application was itself filed as a divisional application of a grandparent application which was published on 30 August 2001. These applications are referred as the “present application”, the “parent application” and the “grandparent application”, respectively. Before the date when the parent application was filed, the grandparent application had been deemed to be withdrawn for non-payment of the renewal fee for the fourth year. However, a request for re-establishment of rights had been filed in the grandparent application before the filing date of the parent application. This request was later refused by the Examining Division (ED) – after the filing of the parent application – and an appeal against this refusal was subsequently dismissed.

The RS concluded that the grandparent application was no longer pending when the parent application was filed. This was on the basis that a loss of rights as regards the grandparent application occurred on the expiry of the non-observed time limit and at this point the grandparent application was no longer pending.

The appellant requested the Board to order that the present European patent application be treated as a divisional application. As an auxiliary request, it requestd that the following question be referred to the Enlarged Board of Appeal (EBA):

“In which way should the term “pending” in R 25(1) EPC 1973 (now R 36(1) EPC) be interpreted for the case where the parent application has been deemed to be withdrawn but a request for re-establishment of rights was filed and a relevant appeal was pending at the time of filing of the divisional application?”

The Board did not allow any of these requests.

The headnote sums up its position:

An application which has been deemed to be withdrawn for non-payment of a renewal fee is not pending within the meaning of R 25(1) EPC 1973 in the period for filing a request for re-establishment of rights under A 122 EPC 1973 in respect of such non-payment or in the period after which such an application is filed in the event of such request being refused.

Here is how the Board came to this conclusion:

[2] The question to be decided is whether the parent application was pending when the present application was filed. This in turn depends on whether the grandparent application was still pending when the parent application was filed. The appellant accepts that if the grandparent was not pending at this latter date, then the parent application was never a pending application, in which case the present application cannot be treated as a divisional application and the appeal must fail.

[3] Because of the respective filing dates it was not in dispute that the applicable provisions are those of the EPC 1973. In the following discussion the Board only draws a distinction between the provisions of the EPC 1973 and EPC 2000 where it is necessary to do so.

Initial considerations

[4] R 25(1) EPC 1973 provides that a divisional application may be filed relating to any “pending earlier European application”. The EPC does not define “pending... application” but the appellant accepted that the starting point for the discussion is the statement of the EBA in G 1/09  that for the purposes of R 25(1) EPC 1973 a ‘pending European patent application’ is a “patent application in a status in which substantive rights deriving therefrom under the EPC are (still) in existence.” See point [3.2.4] , emphasis by the EBA. In this context, the EBA also observed (point [3.2.3]) that the requirement of a pending earlier patent application reflects the applicant’s substantive right under A 76 to file a divisional application on an earlier application if the subject matter of the earlier application is “still present” at the time when the divisional application is filed, citing G 1/05 [11.2].

[5] The question is thus whether substantive rights deriving from the grandparent application were still in existence when the parent application was filed. The EBA did not give any definition of the expression “substantive rights” in this context. The Board nevertheless extracts the following points from the EBA’s reasons:

(a)   “Substantive rights” in this context include the provisional protection conferred after publication of the application by virtue of A 67(1), which in turn refers to the protection conferred by A 64. See point [4.2.1]. The combined effect of these two articles is to provisionally confer on an applicant the same rights in the designated Contracting States as would be conferred by a national patent granted in those States. The Board will refer to these rights as the A 64 rights.

(b) The EBA did not expressly say (and did not need to say) whether there might be other relevant types of substantive rights.

(c) A patent application involves two different aspects. On the one hand a patent application is an object of property as set out in A 71 to A 74, conferring on the applicant, inter alia, the provisional A 64 rights. On the other hand it involves procedural rights which the applicant is entitled to exercise by virtue of A 60(3) EPC 1973. The expression “European patent application” may therefore stand for substantive rights as well as for procedural rights of the applicant. See point [3.2.1]. Since R 25(1) EPC 1973 (see now R 36(1)) refers to “any pending patent application” and not to pending proceedings before the EPO, it is not relevant for the purposes of R 25(1) EPC 1973 whether proceedings are pending before the EPO. Pending proceedings cannot be equated with a pending application. See points [3.2.2] and [4.2.5].

(d) A 67(4) provides for the point in time when the A 64 rights must end and thereafter are no longer still in existence. This is when, in the words of A 67(4), the application has “been withdrawn, deemed to be withdrawn or finally refused.”

[6] The EBA also noted (point [3.2.5]) that there are circumstances where an application may be pending but the right to file a divisional application relating to it may be excluded by procedural provisions, as lex specialis. The appellant referred to this point, but it does not help the present Board to decide whether the grandparent application was pending when the parent application was filed because the expressly named exceptions do not apply to the case in hand.

[7] From this starting point the Board will deal with the question which it has to answer in the following stages:

(a) Given that following publication of the grandparent application the substantive rights of the appellant under that application included at least the provisional A 64 rights, what, prima facie, was the effect on these rights of the deemed withdrawal of the grandparent application?

(b) Is the answer to this question affected by either:

(i) the possibility (and indeed the fact) of a request being made under A 122 for re-establishment of rights in the grandparent application following its deemed withdrawal, or

(ii) the possibility of an applicant using R 69 EPC 1973 (see now R 112) to challenge the notice of loss of rights?

(c) If the answers to these questions mean that the A 64 rights were no longer in existence when the parent application was filed, was the appellant entitled to any other substantive rights and, if so, were such rights under the grandparent application still in existence when the parent application was filed?

The prima facie effect of deemed withdrawal on the A 64 rights

[8] A 67(4) provides that a European patent application shall be deemed never to have had the effects set out in A 67(1) and (2) when it has been (a) withdrawn, (b) deemed to be withdrawn or (c) finally refused. The EBA in G 1/09 was concerned with the case of the refusal of an application by the ED: for the purposes of A 67(4), at what point in time is an application to be considered as “finally refused” where no appeal is filed against the decision refusing the application? The Board concluded that this is when the time limit for filing an appeal against a decision refusing the application expires, since it is at this point that the decision to refuse the application becomes final. The retroactive effect of a decision dismissing the appeal does not alter the pending status of the application. See points [4.2.1-2]. Up until this point a substantive right under the application therefore still subsists. This was sufficient to answer the question which had been referred to the EBA.

[9] The present Board is concerned with a different case, namely a deemed withdrawal of an application.

[10] A 67(4) provides that an application is deemed never to have had the effects provided for under A 67(1) and (2) EPC when it is deemed to be withdrawn. The EBA took the position (point [4.2.3]) that A 67(4) is a self contained provision indicating the point in time at which “substantive rights conferred by a European patent application and therefore its pending status must end.” The wider implications of this statement are considered later but so far as concerns the A 64 rights, these rights must therefore have come to an end in the present case when the grandparent was deemed to be withdrawn. Indeed, this is simply what the article says. If it were otherwise there would be no point in giving a person the right under A 122 to file a request to “have his rights re-established.”

[11] As to the point in time when this deemed withdrawal took place, A 86(3) EPC 1973 (see now A 86(1)) simply provides that if the renewal fee (and any additional fee) is not paid in due time, the application shall be deemed to be withdrawn. Although the applicant must be informed of the loss of rights (R 69(1) EPC 1973, see now R 112(1)) the withdrawal takes place at that point in time as a matter of law without any decision of the Office. As explained in G 1/90 [6], in such a case the loss of rights occurs on expiry of the time limit that has not been observed. See also G 4/98 [3.3].

[12] Prima facie, therefore, the A 64 rights under the grandparent application were no longer subsisting when the time for payment of renewal fee expired, which was before the date when parent application was filed.

The effect of the possibility (and the fact) of the filing

of a request to grant re-establishment of rights.

[13] If the Board were to accept the appellant’s arguments, which are based on an analogy with the situation of “final refusal” of an application, it would follow that an application would remain pending after it had been deemed to be withdrawn for as long as the period for making a request to grant re-establishment of rights continued to run. Further, if and when such a request was made, the application would remain pending at least until the date when the request for re-establishment was finally determined.

[14] By way, first, of a general remark, the wording in A 67(4) appears to the Board to have been chosen with care, particular the positioning of the word “finally”. In the case of a refusal of an application, the filing of an appeal will have the effect of suspending the effect of the order refusing the application (A 106(1)). It is logical therefore to speak of the “final” refusal of an application in this context, since the effect of the refusal of the application by the ED is suspended in the event of an appeal. In such a case the suspensive effect of an appeal is ended in the event of a decision dismissing the appeal, from which point the appealed decision retrospectively takes full effect. At the point of dismissal of the appeal, the application can be said to be finally refused and the decision of ED is made final.

[15] On the other hand, in a case where an application is deemed to be withdrawn under A 86(3) EPC 1973 for non-payment of a renewal fee it does not appear to the Board to be logical to speak of the “final” deemed withdrawal of the application. As already noted, the point in time when the application is deemed to be withdrawn is the point when the due time for payment of the renewal fee expires; the loss of rights occurs on the expiry of the time limit that has not been observed and, as such, is final in itself.

[16] The question is then whether, nevertheless, there are any provisions of the EPC which have the effect that the filing of a request for re-establishment of rights provisionally revives a deemed withdrawn application. In other words, does the application thereupon become pending once again? As to this, the filing of a request for re-establishment does not have any suspensive effect equivalent to the suspensive effect under A 106(1) of the filing of an appeal against refusal of an application for a grant. Not only is there no provision in the EPC providing for such equivalent effect but also the nature of an order granting a request for re-establishment is inconsistent with it. The effect of re-establishment is to put the applicant back in the position which he would have been in had the omitted act been performed as it should have been and thus, in accordance with wording of A 122(1), to re-establish the rights which have been lost. The act belatedly performed (for example, as here, the payment of the renewal fee) is then deemed retroactively to have been performed in time so that the application which was deemed to have been withdrawn is deemed not to have been withdrawn (see Singer/Stauder on the European Patent Convention, 3rd (English) edition, Commentary on A 122 at para. 144). This is now stated expressly in A 122(3):

“If the request is granted, the legal consequences of the failure to observe the time limit shall be deemed not to have ensued.”

Although this provision was not in force at the relevant time, the travaux préparatoires to the EPC 2000 give no indication that any change in the law was intended, something which the Board considers would almost be bound to have been the case if this had been the intention. The Board considers this provision to be an accurate statement of the previous position. The effect of filing a request for re-establishment is thus merely to make a reversal of the deemed withdrawal possible. The effect of an unsuccessful request for re-establishment is that the application stays deemed withdrawn.

[17] In G 1/09 the EBA, when dealing with the issue of when an application should be considered to be (finally) refused, referred to and relied on the jurisprudence of Contracting States, pursuant to which

“decisions do not become final until the expiry of the respective period for seeking ordinary means of legal redress.” (See point [4.2.2]).

In effect, the appellant argues that the right to seek re-establishment is a right of redress, so that while the period for seeking such redress against the deemed withdrawal of the application was still running, the deemed withdrawal was not a final withdrawal.

The Board considers that this is not a correct analysis.

First, the argument overlooks the distinction, already discussed, between a refusal, which requires a decision by the Office which is then challengeable by way of an appeal, and a deemed withdrawal, which takes place automatically by operation of law. The above statements by the EBA in G 1/09 were made in the express context of a decision by a department of first instance refusing an application: see point [4.2.2].

Second, the Board considers that the concept of redress is appropriate only in the context of correcting a wrong. Thus while it is appropriate to speak of seeking redress against an allegedly wrong decision of the Office refusing an application, it is not appropriate to speak of seeking redress against the deemed withdrawal of an application. A person requesting re-establishment of rights does not seek correction of a wrong, i.e. allege that the deemed withdrawal was wrong as a matter of law. Rather he requests that he should be excused the consequences of the withdrawal in the particular circumstances of the case. In contrast, the procedure under R 69 EPC 1973 (now R 112) by which a person can challenge a notice of loss of rights (see point 22, below) is a process for seeking ordinary means of legal redress against an alleged wrong of the Office. This conclusion appears to be fully be consistent with the position under French, German and Swiss national law, as summarised in D1, points 4.1 to 4.3.

NB: D1 is an article by N. Bouche et al, “Divisionals and Deemed Withdrawal. A Way out of the Mist?” published in “epi Information” 2/2011, p. 61.

D1 is a follow-up article to D2, an article by D. Visser and M. Blaseby, “Divisionals –  Peering into the Mist” published in “epi Information”, issue 1/2011, p. 32.

[18] The Board also considers that the appellant is wrong in the inference which is sought to be drawn from Consultative Document CA/127/01. This document was drawn up for the Administrative Council when deciding on the amendment of R 25 EPC 1973 in 2001. The relevant passage at point 6 states in full:

“Grant proceedings are pending until the date that the European Patent Bulletin mentions the grant (cf. J 7/96), or until the date that an application is finally refused or (deemed) withdrawn.”

The appellant argues that therefore one can legitimately speak of an application being “finally (deemed) withdrawn.” However, even if the wording in CA/127/01 in this respect might be ambiguous, this part of the document was not specifically addressed to the question of when a deemed withdrawal of an application takes place but was concerned with the pending status of an application in the case of grant (see G 1/09 [4.2.5]).

In any event, the wording of A 67(4) is quite unambiguous in this respect. From the travaux préparatoires containing the successive drafts of what became A 67 it can be seen that the distinction between a (deemed) withdrawal and a final refusal was consistently made. It follows from what is said in points [14] and [15] above, that the Board also considers that such a distinction was made for good reason. The Board would add that in the Notice published by the Office explaining inter alia the changes subsequently made to R 25(1) EPC 1973 (OJ EPO 2002, 112), it was stated that

“An application is pending up to (but not including) the date that... the application is refused, withdrawn or deemed withdrawn; ...”.

[19] The conclusion which the Board has reached also appears to be fully consistent with the opinion of the EBA in G 4/98, where the Board decided inter alia that the deemed withdrawal of a designation of Contracting States takes effect upon expiry of the time limit set out in the relevant articles and rules, and not upon expiry of a grace period. In other words, the existence of a grace period does not defer the effect of the loss of rights to the end of the grace period. The Board said (see point [7.2]):

“The question therefore is whether the deemed withdrawal takes effect upon expiry of the regular time limits or upon expiry of the grace period pursuant to R 85a … R 85a does not prolong the normal time limits, but contains what its name says, namely a grace period, a possibility to remedy an otherwise potentially fatal non-observation of a time limit. The conclusion that the relevant date is not the expiry of the grace period, but the expiry of the normal period was reached in J 4/86 concerning the failure to file a request for examination of a European patent application. The well-reasoned decision is fully convincing and since there are no reasons to distinguish the case at hand from the situation underlying J 4/86, there is nothing more to add. The practice of the EPO (Guidelines for Examination in the EPO, A-III, 12.5, 2nd paragraph) is confirmed.”

[20] The Board therefore considers that the appellant is incorrect in saying that the question is: when was the grandparent application “finally withdrawn”? In doing so, the appellant tries to equate the factual situation of the present case with the factual situation before the EBA in G 1/09 and ignores the fact that here the application was deemed to be withdrawn, not refused.

[21] The Board thus concludes that the mere existence of the right to file a request for re-establishment of rights in a deemed withdrawn application does not mean that the application is still pending while the period for filing such a request is running. For the same reasons, the Board concludes that the fact that a request for re-establishment of rights is actually filed cannot thereupon make the application once again become pending.

The effect of the right of an applicant to challenge the notice of loss of rights.

[22] Although this was not something argued for by the appellant, the Board considers that the above conclusions are not altered by taking into account the procedure by which an applicant can challenge a notice of loss of rights by way of requesting an (appealable) decision (R 69 EPC 1973, now R 112). If the decision in effect confirms the loss of rights, the loss of rights will still have occurred when the relevant time limit expired. There is no mechanism by which the application can have become pending again in the interim period and then become no longer pending. If the Office agrees with the applicant, then the effect of the procedure is that the Office acknowledges that no loss of rights ever occurred; the application will have been pending throughout.

Further processing

[23] The Board is not concerned with the possible effect on the pendency of an application of a request for further processing under A 121. These provisions of the EPC 2000 do not apply to the grandparent application (see point [3], above).

Did the appellant enjoy other substantive rights in the grandparent application

which were (still) subsisting when the parent application was filed?

[24] As to whether the appellant enjoyed any other substantive rights after the grandparent application was deemed to be withdrawn on the expiry of relevant time limit, the appellant argues that (a) the right of the inventor under A 60 and (b) the right to have a request under A 122 for re-establishment of rights considered are both substantive rights within the meaning of G 1/09 which were still subsisting under the grandparent application when the parent application was filed. The Board will consider these in turn together with a further possible candidate for a substantive right, namely the right to file a divisional application itself.

The A 60 right

[25] The substantive right which the appellant relies on is said to be the right under A 60 to a patent, which right belongs to the inventor (or his employer or successor in title) and which, by virtue of A 60(3), the applicant is deemed to be entitled to exercise. The Board will refer to this as the A 60 right.

[26] As the Board understands it, the right which the appellant relies on is in effect, and speaking broadly, the right of an applicant to have its application for the grant of a patent examined in accordance with the EPC and, subject to the application meeting the requirements of the EPC, to have a patent granted.

[27] The Board inclines to the view that A 60 does not confer a substantive right per se, but rather a procedural right, which, once having been exercised, may lead to the conferring of proprietary rights under A 64. This appears to follow from the wording of A 60, which, according to the headline of Chapter II of the EPC, is concerned with who is entitled (or deemed to be entitled) to apply for and obtain a European patent. See also the statement by the EBA in G 1/09 [3.2.1] that:

“... in proceedings before the EPO a European patent application also involves procedural rights which the applicant is entitled to exercise (A 60(3) EPC 1973).” (emphasis added).

[28] The Board acknowledges, however, that it is not always easy to say precisely what constitutes a procedural right and what constitutes a substantive right. As the Legal Board pointed out in J 18/04, procedural rights touch upon substantive rights and drawing a clear separation between the two concepts may be difficult.

[29] In addition, as already noted […], the EBA in G 1/09 said that a patent application is an object of property conferring on the proprietor of the application, inter alia, the provisional A 64 rights. By the use of the words “inter alia”, the EBA appears to have been careful not to say that the substantive rights conferred on such proprietor were restricted to the provisional A 64 rights, although the Board did not say what such other rights might be. In the light of this the Board will assume in the appellant’s favour, but without deciding, that a patent application as an object of property does confer other substantive rights on the inventor, these being rights which the applicant is deemed to be entitled to exercise by virtue of A 60(3). The Board will further assume in the appellant’s favour, but again without deciding, that one such right is the A 60 right which the appellant relies on.

[30] The question is then whether this right was still subsisting when the parent application was filed. In the Board’s view the answer to this question is no. The short reason is that in G 1/09 [4.2.3] the EBA said that A 67(4)

“... is a self-contained provision indicating the point in time at which substantive rights conferred by a European patent application and therefore its pending status must end.” (emphasis added by the Board).

Although this statement was made in the context of the discussion of the continuing subsistence of the A 64 rights, it is perfectly general in its terms. More significantly, if there were in fact other substantive rights which continued to exist beyond this time, it would mean that the application would remain pending while these other rights remained subsisting despite the ending of the A 64 rights. But this would be inconsistent with the EBA’s statement that A 67(4) indicates the point in time at which the pending status of a European patent application must end.

[31] However, the Board will again assume (in the appellant’s favour) that the only substantive rights that the EBA was talking about here were the provisional A 64 rights. See, for example, the unambiguous references to this right in point [4.2.1]. In the appellant’s favour it can also be said that the Board did not expressly consider whether there might be other substantive rights and, further, did not need to consider the point. It was sufficient to have enabled the EBA to reach the conclusion which it did for it to have restricted its consideration to the A 64 rights. This is because the Board found such rights still to be subsisting in the case in question and so on this basis the Board could answer the question referred to it positively. The Board thus did not need to consider the position of other possible rights.

[32] So far as concerns the A 60 right, it is true that there is no provision in the EPC equivalent to A 67(4) setting out expressly when and in what circumstances the A 60 right ceases to exist. However, this is presumably because such a provision is unnecessary. In the case of the A 64 rights, A 67(1) confers only provisional protection. The legislator therefore apparently considered it necessary to spell out what would happen to such provisional protection in the event that no patent was granted on the application, since otherwise the position would (at least arguably) have been uncertain. A 60, on the other hand, does not provisionally confer rights. The A 60 right exists unconditionally as from the moment when the application is filed. As to when such right ceases to exist, the position appears to the Board to be clear: the right ceases to exist if and when the application is finally refused, or is withdrawn or deemed to be withdrawn, as the case may be. At that point the applicant no longer has a right to have his application examined or to have a patent granted. Nor does the possibility of an application being made for re-establishment or the fact of such an application alter this conclusion. The reasoning is the same as in the case of the A 64 rights, dealt with in points [16] to [21], above. The statement by the EBA in G 1/09 that A 67(4) “... is a self-contained provision indicating the point in time at which substantive rights conferred by a European patent application and therefore its pending status must end” appears therefore to be fully applicable.

The right to request re-establishment as a substantive right

[33] The right to have a (final) decision on the request for re-establishment of rights in the grandparent application was clearly still subsisting when the parent application was filed. The Board does not accept, however, that this right was a substantive right as this expression is used by EBA in G 1/09. In this respect the present Board has already referred to the distinction drawn by the EBA in G 1/09 between substantive and procedural rights, and to the EBA’s statement that the fact that there may be pending proceedings in the application does not necessarily mean that the application is pending.

[34] Although drawing a clear separation between procedural rights and substantive rights may be difficult, the right which the appellant relies on is in the Board’s view a purely procedural and not a substantive right in the sense meant by the EBA. This is confirmed by the decision in J 10/93, where the Legal Board was concerned with the transfer of an application after the application had been deemed to be withdrawn. The Board said:

 “[3] First, it is to be taken into consideration that deemed withdrawal of a patent application does not result in a complete and immediate loss of all the applicant’s rights.

Although it is true that the grant procedure as such is terminated by a communication noting the deemed withdrawal (see G 1/90 [5-6]), there still remains a bundle of procedural rights, as e.g. the applicant’s right to apply for a decision under R 69(2) (followed by the possibility to file an appeal having suspensive effect) and his right to avail himself of any of the legal remedies provided for in A 121, A 122, R 85a or R 85b, as the case may be. Thus, following deemed withdrawal, there is a period of time during which the applicant is entitled to make use of his procedural rights referred to above with the aim of having his patent application restored.” (Emphasis added by the Board).

[35] The point was affirmed in J 16/05, where the Board said about a similar point (point 2.1):

“Also, the fact that the application was declared deemed to be withdrawn does not prevent the Board from considering the effect of the transfer. As long as procedural rights remain outstanding, which the applicant is entitled to make use of, a successor to the applicant is entitled to have a transfer registered (see J 10/93 [3]).”

[36] The Board therefore rejects this argument of the appellant.

The right to file a divisional application as a substantive right

[37] Although the appellant did not rely on such a right, the EBA in G 1/09 [3.2.3] referred to the right to file a divisional application relating to an earlier application as being a substantive right arising under the earlier application. The argument that the continued existence of such a right means that the earlier application will still be pending is nevertheless obviously circular in the present context.

[38] The circle can be broken, however, by taking into account the EBA’s qualification to this statement, namely that the right only existed “if the subject matter of the earlier application is “still present” at the time the divisional application is filed”, quoting G 1/05 [3.2.3]. The requirement that the subject matter be “still present” was equated in the next paragraph of the EBA’s reasons with the requirement that, for an application to be pending, substantive rights deriving therefrom must (still) be in existence. The present Board concludes that the right to file a divisional application therefore depends on some other substantive right under the earlier application (still) being in existence at the date of filing of the divisional application. So far as concerns the grandparent application, this condition, for the reasons already given, was not satisfied.

Referral of a question to the EBA

[39] In support of the request for the referral of a question to the EBA, the appellant cited the two articles D1 and D2, and said that they demonstrate that the position is uncertain. This is enough, it was argued, to mean that the question is an important one for the purposes of A 112.

[40] The authors of D2 argue (see page 34, point 3) that although the reasoning in G 1/09 implies that in the case of a deemed withdrawal the pending status ends at the expiry of the non-observed time limit, this is in conflict with the principle endorsed by the EBA of “pendency until expiry of the remedial period” (the authors’ words). Alternatively, the authors argue that because of the similarity between a refusal and a deemed withdrawal it is reasonable to apply to the case of deemed withdrawal the principle endorsed by the EBA that a decision does not become final until the expiry of the period for seeking ordinary means of redress. In D1 and also in Visser, The Annotated EPC, 9th edition (2011), para. 2.1.3 (the author being one of the authors of D1 and D2) it is suggested that it is arguable that an application is still pending in the period during which a request for re-establishment can be filed. In D1, the authors also suggest a way of resolving what they see as the uncertainties arising out of G 1/09.

[41] While the Board treats with due respect the views of academics and practitioners, the Board has been able to reach a conclusion in this case, including the above points discussed in D1 and D2. The existence of doubts expressed in such articles is not in itself enough to make the question, even assuming that it is important, one which should be referred to the EBA. So far as the Board is aware, there are no other decisions of the boards of appeal in which a different conclusion has been reached.

Conclusion

[42] For the above reasons the appeal must be dismissed and the request for referral of a question to the EBA is refused.

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T 1185/09 – Reduction To Practice

The opponent filed an appeal against the decision of the OD that maintained the opposed patent on the basis of the first auxiliary request.

Claim 1 of this request reads as follows:

1. A method for controlling glyphosate-susceptible weeds and a glyphosate-tolerant first plant species growing in a crop of a glyphosate-tolerant second plant species, comprising: first applying a non-glyphosate herbicide to the crop of the glyphosate-tolerant second plant species, the non-glyphosate herbicide being toxic to the first plant species and non-toxic to the second plant species, at a rate of application sufficient to control the first plant species, wherein the non-glyphosate herbicide is selected from the group consisting of quizalofop, clethodim, sethoxydim, fluazifop, imazamox and fenoxaprop; and, second applying a glyphosate herbicide to the crop of the glyphosate-tolerant second plant species at a rate of application sufficient to control the glyphosate-susceptible weeds, wherein the first applying and the second applying steps can be performed in either order or simultaneously. 

According to the opponent, document D6 explicitly disclosed a method for controlling a glyphosate-tolerant first plant species (the volunteer Roundup ReadyTM corn) growing in a crop of a glyphosate-tolerant second plant species (the Roundup ReadyTM soybean) comprising the application of a non-glyphosate herbicide (fluazifop-p, clethodim, quizalofopethyl, sethoxydim). The elements of the claimed method not explicitly taught in this document were the control of glyphosate-susceptible weeds (growing in the Roundup ReadyTM soybean crop) via the application of glyphosate herbicide. It was however axiomatic that glyphosate (RoundupTM) would be applied to the Roundup ReadyTM soybean explicitly mentioned in document D6 in order to control glyphosate-susceptible weeds for the simple reason that this is the very reason why Roundup ReadyTM crops were developed. This element was one implicit feature of document D6. 

The patent proprietor pointed out that the sequential or simultaneous application of a glyphosate herbicide and one of the non-glyphosate herbicides listed in claim 1 in order to efficiently control glyphosate-susceptible weeds and volunteer glyphosate-tolerant corn in a glyphosate-tolerant soybean crop was not disclosed in document D6. Since Roundup ReadyTM corn was deregulated on November 1997 and not available before the 1998 growing season, volunteer corn plants which are the progeny of a crop of corn grown the previous season in the same field could not have occurred in a crop of a glyphosate-resistant plant until 1999 after the priority date of the patent in suit as shown by document D21.

The Board found claim 1 to lack novelty:

[2.1] The last sentence of paragraph D on page 50 of document D6 reads as follows:

“Even in the case of a rotation involving Roundup ready soybeans, it should be considered that a) no-till - cultivation which is used on 35% of the soybean acreage, reduces dramatically the occurrence of the volunteers and b) control of Roundup Ready corn volunteers will remain possible with an application of grass-killer herbicides such as fluazifop-p, clethodim, quizalofop-ethyl, sethoxydim, currently used in soybean crops for volunteer corn control.”

The use of RoundupTM (glyphosate) on Roundup ReadyTM soybeans to control the Roundup ReadyTM corn volunteers with application of clethodim and sethoxydim is, therefore, disclosed.

Furthermore, the process of claim 1 of the patent in suit mentions that not only glyphosate-tolerant plant species are controlled but also glyphosate-susceptible weeds. Although the passage cited above in point [2.1] does not refer to the control of weeds, Roundup (glyphosate herbicide) has been developed in order to spare the crop and to kill weeds. This point is confirmed by the disclosure of document D6 (see page 49, two first lines of the third paragraph), which mentions that weeds are not tolerant to glyphosate and up to now no resistance to glyphosate has been observed for weeds. Therefore, the treatment of Roundup ReadyTM soybeans with a glyphosate herbicide will automatically control the glyphosate-susceptible weeds.

[2.2] The respondent’s argument based on the deregulation of Roundup ReadyTM corn in November 1997 […] did not convince the board.  

[2.2.1] Whether the disclosure of document D6 has been applied in a field before the priority date of the patent in suit is irrelevant for assessing novelty, since the mere disclosure of a teaching, disregarding whether this teaching has actually been reduced into practice, is enough to make it available to the public as required by A 54.

That document D6 was available to the public at the priority date of the patent in suit is confirmed by document D7. This point was never disputed by the respondent and the board does not see any reason to contest this point.

[2.3] The respondent also argued that the sequential or the simultaneous application was not mentioned in document D6.

[2.3.1] However, document D6 recites that the grass-killer herbicides listed (see point [2.1]) are applied. Since, Roundup (glyphosate herbicide) is also applied to the plants, it must thus be inferred therefrom that the application of the said glyphosate herbicide is performed either before or after or at the same time as the application of the grass-killer herbicide. Hence, the method of applying the herbicides mentioned in claim 1 cannot distinguish the claimed process from the disclosure of document D6, since it includes all the possible methods of applying the two herbicides.

[2.4] Thus, claim 1 of the main request lacks novelty (A 54). 

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T 1289/09 – Only One? Not Necessarily

This decision contains a useful reminder concerning the closest prior art:

[4.5.4] The argument that for an invention there exists only one closest prior art document and that another prior art document cannot be used for attacking inventive step of the process claim 1, cannot be accepted in particular in view of the established case law, see e.g. T 967/97 (see Case Law of the Boards of Appeal of the European Patent Office, 6th edition, 2010, chapters I.D.2, and I.D.3.1 to I.D.3.5). As shown above, the cited documents D2 and D3 represent feasible starting points for attacking inventive step of the subject-matter of the product claim and the process claim respectively.

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J 4/10 – Back And Forth

The application under consideration was filed as an international application on April 10, 2002, by Korea Microbiological Laboratories (“KML”), which later became “Komipharm”. The international application mentioned this applicant for all designated states except for the USA, and Messrs Sang Bong Lee and Yong Jin Yang as applicants for the USA only.

In the Power of Attorney dated May 7, 2002, for the representation before all competent authorities KML and Messrs Lee and Yang were indicated as applicants. The written authorisation for the common representative was signed by both Mr Lee and Mr Yang; the latter also signed on behalf of KML in his capacity as President.

With letter dated November 11, 2004, the representative submitted to the EPO two Forms PCT/IB/306 from the International Bureau (hereinafter “IB”) dated 9 November 2004, one of them giving notice of a change regarding the applicant by the IB pursuant to Rule 92bis.1 PCT. According to this notification the two inventors and applicants for the US, Mr Lee and Mr Yang, were now also recorded as applicants for all designated states.

In a letter dated November 27, 2008 a representative appointed by Mr Lee requested the EPO to “update” the EPR entry by adding Messrs Lee and Yang as co-applicants. A copy of the relevant bibliographic data on file at the IB indicating Komipharm, Mr Lee and Mr Yang as applicants, as well as a copy of the Form PCT/IB/306 already submitted to the EPO were attached.

The EPO then notified Komipharm, also having appointed a new representative, of the corrected entries concerning the applicant now including Mr Lee and Mr Yang as co-applicants.

In a letter dated December 3, 2008, Komipharm asserted that a transfer of rights in this patent application had never taken place and requested to revert to entering Komipharm as sole applicant.

The representative of Mr Lee contended that the international patent application was filed mistakenly in the name Komipharm as the sole applicant. He submitted a copy of a contract between the three co-applicants dated May 16, 2005, as well as a translation of the contract as proof of the co-ownership of the two newly added co-applicants.

The Legal Division informed Mr Lee’s representative that the documents submitted as proof for the co-ownership of Mr Lee had not been duly signed by Komipharm.

In his answer, the representative informed the EPO that the contract was stamped by the parties to the contract and that the seal rather than the signature was generally used for formal legal documents in Korea.

By decision of the Legal Division dated 11 August 2009 the request of Komipharm to reverse the entry into the EPR was rejected.

Komipharm filed an appeal against this decision.

In the course of the proceedings before the Board the parties also filed evidence related to a law suit before Korean jurisdictions.

Here is what the Legal Board had to say on this topic:

[4] With its main request the appellant seeks in essence that the entry of Mr Lee and Mr Yang into the European Patent Register (EPR) as co-applicants be reversed. This request is allowable if the registration of Mr Lee and Mr Yang as co-applicants in the EPR as conveyed in the communication of the Legal Division dated 28 November 2008 was contrary to law (points [4.1-6] below), or, if after the entry in the EPR and during the European/Regional phase of the patent application a legal basis for the correction of that entry became apparent (point [5] below).

[4.1] The registration in the EPR of the change concerning the applicants was based on a copy of the Form PCT/IB/306 from the IB dated 9 November 2004, giving notice of the recording of a change concerning the applicant by the IB pursuant to Rule 92bis.1 PCT, whereby Mr Lee and Mr Yang were now recorded as inventors/applicants for all designated states. It was also backed up by a copy of the relevant bibliographic data on file at the IB of the international patent application at issue indicating Komipharm, Mr Lee and Mr Yang as applicants. Both copies were filed with the letter dated 27 November 2008 of the representative of Mr Lee requesting the respective “update” of the EPR.

[4.2] Pursuant to Article 39(1)(b) PCT, A 153 EPC, R 159(1) EPC the present international patent application entered the European phase on 10 November 2004, i.e. 31 months from its international filing date of 10 April 2002. R 159 EPC applies instead of R 107 EPC 1973 according to Article 7 of the Revision Act of 29 November 2000 (OJ EPO 2001, Special Edition No. 4, 50), Article 1(6) of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Revision Act of 29 November 2000 (OJ EPO 2007, Special Edition No. 1, 197) and Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the EPC 2000 (OJ EPO 2007, Special Edition No. 1, 89).

[4.3] The recording of Mr Lee and Mr Yang as co-applicants by the IB as notified and evidenced by the Form PCT/IB/306 dated 9 November 2004 as well as by the copy of the relevant bibliographic data on file at the IB had therefore still been performed during the international phase of the PCT application and hence before the international application entered the European phase on 10 November 2004.

[4.4] No other information can be obtained when looking at the EPO-Form 1200 “Entry into the European phase (EPO as designated or elected Office)”, signed by the then common representative of Komipharm, Mr Lee and Mr Yang and received by the EPO on 8 October 2004. This Form displays under “1. Applicant: Indications concerning the applicant(s) are contained in the international publication or recorded by the International Bureau after the International publication.” The International Publication took place on 23 October 2003. In the International Publication only KML (predecessor to Komipharm) was indicated as applicant. However, at the time of entry into the European phase on 10 November 2004 Mr Lee and Mr Yang were already recorded as co-applicants as shown by the above-mentioned IB-Form PCT/IB/306 dated 9 November 2004 and by the copy of the relevant bibliographic data on file at the IB. This situation did not change by the 28 November 2008, when the EPO performed and communicated the correction of the applicants as recording Mr Lee and Mr Yang as co-applicants in the EPR.

[4.5] The requirements set out in Rule 92bis.1(a) PCT, the provision governing the recording of a change of i.a. the applicant, have obviously been met. The recording of the change of applicants on 9 November 2004 was requested also on behalf of the registered applicant Komipharm, i.e. of its predecessor Korea Microbiological Laboratories, Ltd., since the request was filed at the IB by the then common representative on record of Korea Microbiological Laboratories, Ltd., Mr Lee and Mr Yang. This prerequisite being met Rule 92bis.1 (a) PCT does not require proof of entitlement regarding the change of applicants in the form of submitting documents.

[4.6] Considering these facts and evidence and in the absence of any clear indication giving rise to considerable doubts that Mr Lee and Mr Yang, from a legal point of view, should not be registered as co-applicants, it was reasonable for the Legal Division to rely on the correctness of the IB Register and the bibliographic data at the IB as submitted by Mr Lee’s representative with the letter dated 27 November 2008. Therefore the correction of the EPR on 28 November 2008 is not to be impugned on that account.

[5] Pursuant to Article 27(2)(ii) PCT, Rule 51bis.1(a)(ii) PCT once the processing of the international application in the national/regional phase has started the designated office may require assignments and additional documents relating to the entitlement to apply for or be granted a patent, provided that the national law provides for a respective legal basis. With regard to the European phase of an international application and the EPO as designated office as in the case at issue R 20 EPC 1973, R 22 EPC respectively, constitute the pertinent legal provisions thereby implementing A 71 and 72 EPC 1973, A 71 and 72 EPC respectively. In the present case R 20 EPC 1973 rather than R 22 EPC applies according to Article 7 of the Revision Act of 29 November 2000 (OJ EPO 2001, Special Edition No. 4, 50), Article 1(1) of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Revision Act of 29 November 2000 (OJ EPO 2007, Special Edition No. 1, 197) and Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the EPC 2000 (OJ EPO 2007, Special Edition No. 1, 89), albeit these Rules as well as A 71 and 72 EPC are almost identical as regards the substance.

Contract dated 16 May 2005

[5.1] After Komipharm had objected to the entry of Mr Lee and Mr Yang as co-applicants in the EPR arguing that there was no legal basis for the registering of either of the additional parties as co-applicants Mr Lee submitted with letter dated 19 December 2008 a copy and a translation of a contract dated 16 May 2005 between Komipharm, Mr Lee and Mr Yang as evidence of the co-ownership of the two newly added co-applicants.

[5.2] There is still reasonable doubt whether the seal, which according to Mr Lee’s submission is generally used rather than the signature for formal legal documents in Korea, and whether the filing of a translation of the notarization of the stamps by a public notary law firm as part of the contract are sufficient to the requirements of A 72 EPC 1973 (assignments in writing and signature of the parties) at all. However, this does not need to be decided by the Board in the present case, since the contract dated 16 May 2005 cannot be regarded as adequate proof of the entitlement of Mr Lee and Mr Yang to be registered as co-applicants of the patent application at issue by virtue of their original status nor by transfer of rights. On the contrary and thereby for the moment leaving out of consideration the fact that the Seoul High Court Civil Court held with judgement of 30 June 2011 that the agreement of 16 May 2005 was null and void […] this document apart from the reasons given in that judgement raises such serious doubts as to the entitlement of Mr Lee and Mr Yang to be recorded as co-applicants that the entry in the EPR should have been reversed.

[5.3] First of all the contract of 16 May 2005 cannot per se serve as evidence of the request for registration as co-applicants directed to the IB in November 2004, since it was apparently concluded only six month later without any discernible retroactive effect.

[5.4] Neither can the contract substantially be regarded as a legally valid basis for a subsequent transfer of rights to Mr Lee and Mr Yang nor as an entitlement to be registered as co-applicants of the patent application at issue. R 20 EPC 1973 requires that the documents produced as evidence of a transfer of rights must directly verify the transfer which already took place (J 38/92 and J 39/92 [2.3-4]). Documents only establishing the obligation to assign rights but not constituting the assignment itself do not comply with Rule 20 EPC 1973 (J 12/00 [2,14]).

Regarding the contract of 16 May 2005 as filed by Mr Lee’s letter dated 19 December 2008 the respective chapter “C. (Co-ownership …) 2.” (No. 2 of annexes Catalog of applied patent indicating the PCT application at issue) at most constitutes a legal obligation to transfer rights concerning the PCT application where, as in the case under consideration, the application was filed only by one of the contracting parties. A direct transfer of rights from Komipharm to Mr Lee and Mr Yang as required by Rule 20 EPC 1973 cannot be inferred from this passage of the contract.

Korean Judgements

[5.5] Considering the comments in Mr Lee’s letter dated 13 June 2011 on the inconsistencies and contradictions between the submissions of the parties and the judgements of the Seoul Central District Court of 20 May 2010 with regard to the Co-Ownership Agreement as set out in the Board’s communication dated 21 April 2011 the Board has no occasion to change its opinion. However, this issue finally is quite immaterial for the present decision of the Board for the reasons given below (points [5.6, 5.8]).

[5.6] The letter dated 13 June 2011 was filed by Mr Lee himself rather than by his professional representative. As correctly argued by the appellant in its letter dated 1 August 2011 according to A 133(2) EPC a natural or legal person without a residence or principal place of business within the territory of one of the contracting states must act through a professional representative in all proceedings established by this Convention with the exception of filing the European patent application. Mr Lee’s address is in Korea, thus not within the territory of one of the contracting states. Therefore, the requests and arguments contained in Mr Lee’s the letter of 13 June 2011 would have had to be submitted by the professional representative. As these submissions were made neither by Mr Lee’s representative nor endorsed by him, the Board following the jurisprudence of the Boards of Appeal cannot take them into consideration (see T 213/89 [2]; T 717/04 [1]).

[5.7] The same legal consequence applies with regard to the contention of Mr Lee in his letter of 13 June 2011 that the agreement of 16 May 2005 was submitted “as an evidence of co-applicant” and not “as an evidence of transfer of patent rights” and that a transfer of rights had never happened. For the sake of argument only the Board points out that if the agreement of 16 May 2005 was submitted “as an evidence of co-applicant” and a transfer of rights had never happened this allegation as far as proceedings before the EPO are concerned could only be relevant with respect to a procedure pursuant to A 61 EPC, R 14 EPC. However, entitlement procedures according to A 61 EPC, R 14 EPC have not yet been initiated with regard to the patent application at issue.

[5.8] Finally the appellant has put forward another serious reason why the agreement of 16 May 2005 cannot be regarded as appropriate and sufficient proof of a legally valid transfer of rights in terms of the patent application underlying the present appeal proceedings and thus of an entitlement of Mr Lee and Mr Yang to be registered as co-applicants. With letter dated 1 August 2011 the appellant filed a certified translation of the judgement of the Seoul High Court Civil Court of 30 June 2011 which is a judgement on the appeals from the judgements of the Seoul Central District Court of 20 May 2010 […]. This appeal judgement materially altered the first instance rulings, particularly in holding that the agreement of 16 May 2005 was null and void due to the fact that the Joint Ownership Agreement was not approved by the board of directors. The Seoul High Court Civil Court further stated that the claims which are based on the effectiveness of the Joint Ownership Agreement are groundless.

[5.9] Consequently, this agreement which was the only document submitted that, by itself, met the requirements of Article 27(2)(ii) PCT and Rule 20 EPC 1973 and which also formed the main legal basis of the judgements of the Seoul Central District Court of 20 May 2010, can no longer be regarded as evidence in favour of Mr Lee and Mr Yang for any rights to the present patent application nor as entitlement to be recorded as co-applicant in the EPR.

[6] For the time being the EPO was correct in recording Mr Lee and Mr Yang as co-applicants on 28 November 2008 relying on the documents issued and provided by the IB and available at that time.

However, the documents, i.e. the agreement of 16 May 2005 and the judgements of the Seoul Central District Court and the Seoul High Court Civil Court filed subsequently during the regional phase before the EPO according to Article 27(2)(ii) PCT, R 20 EPC 1973 do not provide evidence that a transfer of rights in favour of Mr Lee and Mr Yang actually occurred nor that they were co-owners of the present patent application. This applies even more considering that the Seoul High Court Civil Court as the final instance held that the agreement of 16 May 2005 is null and void and of no effectiveness. Therefore the recording of Mr Lee and Mr Yang as co-applicants in the course of the proceedings before the EPO has proved to be unsustainable. Consequently the request of the appellant to reverse the entry in the EPR of Mr Lee and Mr Yang as co-applicants and to revert to Komipharm as sole applicant is allowable. […]

The case is remitted to the […] Legal Division with the order to delete the entry of Mr Lee and Mr Yang as co-applicants from the EPR.

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J 21/10 – A Closed File

This appeal was against the refusal of a request for re-establishment by the Examining Division (ED).

On August 30, 2008, the ED had sent a communication pursuant to R 71(3) inviting the applicant to pay the grant fee and to file the translations of the claims. As the applicant did not react, the ED, on March 16, 2009, sent a communication stating that the application was deemed to be withdrawn.

On January 29, 2010, the representative of the applicant requested re-establishment into the time limit under R 71(3) and completed the omitted acts. The formalities agent called him and explained that re-establishment was excluded because further processing was available. On February 10, 2010, the representative then requested further processing. This request was refused.

The applicant then filed an appeal.

The applicant explained that there had been an error by an experienced employee of its representative. She had received the file because another patent attorney working for the applicant had requested not to receive any reminders for annuities payments any more. Because of another letter contained in the file, the employee had drawn the erroneous conclusion that this other law firm would take over the representation  and had closed the file without consulting the representative. As a matter of fact, she had acted as if the attorney had already checked the file, as usual.

The applicant went on to explain that communications relating to closed files were only added to the file wrapper, without further inspection. They were not shown to the representative in charge of the file, nor were they transmitted to the applicant, because it was assumed that the client did not wish to pursue the proceedings; once an applicant had decided to let rights go abandoned, it did not wish to receive further communications. Why exactly the file had been closed was not questioned when communications were received because the attorney had examined this matter when closing the file. Only letters sent by clients were transmitted to the attorney in charge.

Because of the erroneous indication on the file wrapper (that the file was closed), it was believed that nothing had to be done. The communications under R 71(3) and the notification of loss of rights had simply been filed and had not been transmitted to the representative. It was only after receipt of the letter of the applicant that the error was discovered.

As you might have guessed, the Board did not allow the request. Here are the reasons:

*** Translation of the German original ***

[1] The appeal is directed at the re-establishment of the legal situation that would have occurred if the time limit for further processing of the European patent application […], which had been triggered by the communication pursuant to R 112(1) of March 16, 2009, had been met. The basis for this is the request for re-establishment of January 29, 2010, which had been amended, together with the submission of February 10, 2010, in that re-establishment into the time limit for requesting further processing was requested rather than re-establishment into the time limit pursuant to R 71(3) (for which re-establishment is not available). On the very same day, the omitted act was carried out by paying the fee for further processing. The Board approves the formalities officer who has interpreted  and treated the submission of January 29, 2010, together with the letter dated February 10, 2010, as a request for re-establishment into the time limit for requesting further processing.

[2] According to R 136(3) all re-establishment of rights shall be ruled out in respect of any period for which further processing under A 121 is available and in respect of the period for requesting re-establishment of rights. Conversely, re-establishment is available for time limits that are excluded from further processing, unless re-establishment into this time limit is explicitly excluded. As, pursuant to A 121(4), inter alia, the time limit for requesting further processing is excluded from further processing, it follows e contrario from R 136(3) that re-establishment into the time limit for requesting further processing is admissible. The travaux préparatoires to the revision of the EPC confirm this interpretation. As can be seen from the basic proposition for a revision of the EPC of October 13, 2000 (MR/2/00, Number 6, A 122), the lawmaker wanted to keep the possibility of re-establishment into the time limit for further processing, which had been acknowledged by the case law (J 12/92 [3.2.2]; J 29/94 [3], J 902/87 [2.2-4]). Therefore, the request for re-establishment of the appellant concerns a time limit for which this legal remedy is available. As a consequence, the Board has not challenged the admissibility of the request for re-establishment of January 29, 2010, together with the letter of February 10, 2010, from this point of view.

[3] However, it had to be examined whether the time limit for filing the request for re-establishment into the time limit for requesting further processing, i.e. within two months of the removal of the cause of non-compliance (R 136(1)) had been complied with.

[4] The removal of the cause of non-compliance is a fact that has to be determined taking into account the circumstances of the particular case (J 27/90 [2.4]). In the present case, the appellant was of the opinion that the cause of non-compliance consisted in the erroneous conviction that nothing had to be done for patent application 02 797 893.1. The reason was that an employee of the law firm (Kanzlei) of the representative had marked as completed (Erledigungsvermerk) and brought to the room in which completed files were stored.

[5] According to the established case law of the Boards of appeal, when a time limit has been missed because of an error regarding facts, the cause of non-compliance is removed on the day on which the person in charge of the patent application (i.e. the proprietor of the right or its authorised representative) should have noted the error. As a rule, this is the day on which he/she receives a communication pursuant to R 112(1) because – provided there are no exceptional circumstances – one may expect that as a consequence of this communication, the person in charge is aware of the fact that the time limit has been missed and has to notice the error. However, this does not exclude that other events may lead to the discovery of the error and trigger the time limit for requesting re-establishment. In individual cases, it has to be examined whether one has to assume a removal of the cause of non-compliance because the responsible person has not discovered (erkannt) the error, as a consequence of a lack of due care for which he/she is to be held responsible, but would necessarily have discovered it if he/she had taken all due care (J 27/90 [2.4]).

[6] In the present case it is decisive for the question whether the time limit for requesting re-establishment into the time limit for further processing, i.e. within two months of the removal of the cause of non-compliance (R 136(1), first sentence), has been complied with, whether the representative would necessarily have discovered the error if he had taken all due care required by the circumstances. It may be left open whether all due care has been taken regarding the closure (Schließung) of the file and whether the way in which the employee of the law firm acted may not be attributed to the representative because it was a single error of a well-trained and appropriately supervised employee, because this question concerns the allowability of the request for re-establishment, which did not have to be dealt with in view of the outcome of the proceedings.

                                                                                                                                                   

[7] The appellant points out that the erroneous closure of the file did not have to be noticed, neither when the notification of loss of rights of March 16, 2009, was received, nor when the communication pursuant to R 71(3) of September 29, 2008 [was received]. These communications had not received any attention because of the erroneous marking that the file was completed. In compliance with the processes implemented in the law firm, as soon as these communications had been received, they were identified, by the employees responsible for the incoming letters, as belonging to a file that was completed and, as a consequence, deposited in the archived file wrapper without having been presented to a patent attorney. This way of proceeding was usual in law firms. It was not necessary to present official communications related to closed files because it could be expected that the client was not interested in maintaining the rights any more. In particular, this was the case when there were written instructions on behalf of the client according to which the client did not wish to maintain the rights. In such a situation, the fact that an attorney noticed the official notification would not make any difference in view of the closure of the file and the order of the client. The same was true when the attorney decided to close the file because he had not received requested instructions of the client in spite of repeated requests. Also, when there was a change of representative, an attorney gave the clearance for the administrative completion of the file only when the process of transmission was completely terminated. As the completion (Erledigung) of a file always had to be agreed upon beforehand by the attorney in charge, the representative could rely on the fact that when a file was marked as completed, no further examination by a patent attorney was required. Official communications concerning closed files were not transmitted to the clients either because the latter did not wish [to receive such letters] and many law firms handled this situation in the same way.

[8] The arguments of the appellant are not persuasive. The Board is of the opinion that the duty of due care required of a patent attorney is not satisfied by an organisation of procedures where official communications regarding closed files, which are received at a later stage by registered mail are filed in the file wrapper without any examination as to their contents and are not transferred to the client either. This also holds true when the representative has fulfilled his duty of ascertaining the client’s will before the file is closed. Although in particular cases official notifications of loss of rights that are received after the closure of a file may correspond to legal consequences desired by the client, it is not acceptable to generalise this and to base the internal organisation of the work processes on it such that the contents of official communications is not even considered any more. As a matter of fact, the organisation [of processes] based on [such a view] cannot do justice to the great variety of cases and in fact hinders errors that might be committed during the closure of the file from being discovered.

[9] This is also true for the case – which has been expressly referred to by the appellant but which does not correspond to the present case – where the representative has received the order to let the right go abandoned by non-payment of the renewal fees. If, for instance, a communication pursuant to R 71(3) is received afterwards, it is not acceptable to assume without any verification that the will of the client to abandon the right, which is expressed in its earlier instruction, has remained unchanged. It cannot be excluded in such a case that the applicant had committed an error or that it has made up its mind and, for example, has given instructions to pay the renewal fees. This is true in particular when the payment of the renewal fees is made by a third company and not by the representative. If there are internal instructions in the law firm not to present an official communication pursuant to R 71(3) [which has been received] after the file has been closed, to the representative and not to transmit it to the client either, then it is not possible to verify the intention of the client. The withholding of official communications deprives the client of the possibility to investigate a possible error, to become aware of it and to act accordingly in order to avoid a loss of rights. Moreover, it is hindered from reconsidering the instructions it may have given, for example in view of the reference to the legal remedy of further processing. The same reasoning applies for official communications concerning a loss of rights, to which the appellant mostly referred. The instruction not to examine official communications after a file had been closed and to withhold them deprives the representative of all means of control that would allow to discover without undue effort a possible discrepancy that occurred when the file was closed.

[10] As far as the facts are concerned, it has to be noted that according to the submissions of the appellant the fact that the file of European patent application 02 797 893.1 was closed was not due to an instruction not to pay the renewal fee. Rather, the file was marked as completed in view of a change of representative. As explained by the representative of the appellant, in such cases the law firm awaits the publication (Anzeige) of the change of representation before the file is closed under the supervision of a patent attorney. Later on, however, such a file is treated in the very same way as files that have been closed for a different reason. In this case also the employee who is responsible for incoming letters files the official communication in the file wrapper in the archive without previously presenting it to the representative. This way of organising internal work processes is also to be considered as a fault on behalf of the representative in the context of a transfer of representation. First, in the case of a change of representation, which, in view of an orderly treatment, necessarily leads to a situation of overlapping responsibilities, it is not appropriate to delimit the individual responsibilities [of each of the representatives] according to formal aspects such as the access to the publication of the transfer (see T 338/98 [8]). Secondly, official communications that are received afterwards necessarily have to raise suspicions because they suggest that errors have been committed in the treatment of the transfer of representation. In the present case, the representative would have found surprising the communication pursuant to R 71(3), which arrived about 15 months after the file had been closed, and the notification of loss of rights of March 16, 2009, which was received another 6 months later, if he had become aware of their existence. As far as the communication pursuant to R 71(3) was concerned, there was an obvious discrepancy with respect to the fact that the file had been marked as completed: that an application that has been found to be allowable is not to be pursued should not have been presumed without verification. Moreover, the presumption of a change of representative could not have explained the receipt of the communication either, and this also applies to the notification of loss of rights. All in all, these communications should have triggered a verification of the legal situation. Because of the instruction not to transmit official communication concerning closed files to the client, the representative deprived the appellant or its patent attorney who allegedly had taken over representation, respectively, of the information on the on-going proceedings contained in these communications and also deprived them of the opportunity of becoming aware of an oversight or a misunderstanding.

[11] For the above reasons the Board comes to the conclusion that the representative, had he taken all due care, would have discovered the error when he received the communication pursuant to R 71(3) of September 29, 2008. Therefore, it is this moment that is relevant for the removal for the cause of non-compliance and the start of the time limit for filing a request pursuant to R 136(1), first sentence.

[12] However, it has to be noted in the present case that what was requested is re-establishment into the time limit for requesting further processing. According to R 135(1), further processing under A 121(1) shall be requested by payment of the prescribed fee within two months of the communication concerning either the failure to observe a time limit or a loss of rights. In the present case what is relevant for the time limit for filing a request for further processing is the notification of the loss or rights, which was posted on March 16, 2009. Therefore, it is obvious that the time limit for requesting further processing ended after the moment of removal of the cause of non-compliance, because the representative should have become aware of the error already when receiving the official communication of September 29, 2008 […]. It is a fact that the error continued to exist after that, but the representative was not prevented – within the legal meaning of A 122 – from requesting further processing in due time any more. The appellant has not pointed out any further cause of non-compliance hindering it from filing a request for further processing in due time.

[13] The existence of an obstacle that is causally related to the failure to meet a time limit is a procedural requirement or a requirement for admissibility (Verfahrens- bzw. Sachurteilsvoraussetzung) and has to be checked when the admissibility of the re-establishment is to be examined. It cannot make any difference for such an attribution (Zuordnung) whether in a particular case the reason for there not being any obstacle hindering [a party] from meeting a time limit within the meaning of A 122 at the moment when the missed time limit has expired is that the invoked circumstances did in fact not make it impossible to carry out the missed procedural actions in due time, for instance when a party knowingly let a time limit expire (T 413/91 [4]) or because one has to conclude, for legal reasons, that there was no obstacle, as in the present case, where an error because of which a procedural action that had to be made within a time limit was not performed should have been discovered if all due care had been taken. The fact that this [aspect] is part of the procedural requirements does not mean that considerations of due care are not appropriate because such considerations are inherent to the examination of the procedural requirement of whether the time limit for requesting re-establishment into the time limit for further processing, i.e. within two months of the removal of the cause of non-compliance (R 136(1), first sentence) was met when the party invokes an error as the cause of non-compliance. If the cause of non-compliance [by the requesting party] in its request for re-establishment, which consists in an error, is eliminated as a consequence of a violation of the duty of due care that has to be attributed to the responsible person, then this elimination leads to the request for re-establishment being inadmissible. For this reason alone the request for re-establishment cannot be allowed. There is no need for further justifications. […]

The appeal is dismissed.

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