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 2210/10 – Swedish Post

The opponent filed an appeal against the decision to maintain the patent in amended form.

The decision was posted on August 10, 2010 with an advice of delivery. On the address label the addressee was mentioned in the following way : Name of the representative, name of its office, address.

According to the advice of delivery received at the EPO on August 19, the decision was received at the representative’s office on August 17. The advice of delivery had been signed by an employee of the this office.

The acknowledgement of receipt (EPO Form 2936) was received at the EPO on 3 September 2010. It bears the signature of the representative and the date of 3 September 2010.

The opponent filed a notice of appeal on 3 November 2010 and a statement setting out the grounds of appeal on 3 January 2011.

The Board informed the appellant that it was to be expected that the appeal would be rejected as inadmissible pursuant to A 108, first sentence, in conjunction with R 101(1).

The representative further referred to two articles of the Swedish Code of Judicial Procedure Chapter 33 which read as follows in their English translation:

“If service is to be done to a single person, the document is handed over to him. If there is a substitute for him and if this person is authorized to represent him in the proceedings of the case the document is handed over to him.

If a single person is sought for service on his place for employment but is not to be met there during his normal working time, the document may be handed over to the employer of the sought person. By employer is meant a person in an executive position or in a position comparable with this or the manager of the human resource administrative department on the workplace of the person sought”.

He argued that because on the address label of the mail containing the decision the name of the representative appeared in the first line and the name of the representative’s office only in the second line, the mail had to be considered as addressed to the representative in person and not to the representative’s office. Therefore the employee having accepted the mail acted in breach of its authorisation to do so, since the employee was only authorised to accept mail for the representative’s office. Likewise the Swedish post office should not have handed out the decision to the said employee because under Swedish law such mail should be handed out to the person named on the mail only, or to a person authorised to accept mail in the name of this very person. Hence, the decision had to be considered as delivered to a non-authorised person. The date of notification to be taken as the starting day for the calculation of the time limit had therefore to be the date on which the representative became aware of the decision upon returning from holiday. This was 3 September 2011 as indicated on form 2936 sent back to the office on that very day.

You might have guessed that the Board did not endorse these arguments. Here are the reasons why:

[1] In the case under consideration the decision of the Opposition Division was notified by registered mail with an advice of delivery pursuant to R 126(1) on 10 August 2010. As a representative was designated, the decision was sent to him (R 130(1)) and, according to the advice of delivery, received at his office on 17 August 2010.

Undisputedly the decision was accepted there by an employee of the representative who was authorised to accept all mail delivered to the representative’s office.

Thus, the decision was notified within ten days following its posting, so that the fiction of R 126(2) applies for the calculation of the starting day of the time limit and the decision is deemed to have been notified on 20 August 2010.

Hence, the time limit for filing a notice of appeal ended on Wednesday 20 October 2010 and the time limit for filing a statement setting out the grounds of appeal ended on Monday 20 December 2010, respectively.

The appellant, however, filed a notice of appeal on 3 November 2010 and a statement setting out the grounds of appeal on 3 January 2011, respectively. Both dates are late, i.e. after expiry of the corresponding time limits.

[2] The appellant submitted that because the name of the representative appeared first on the address label of the mail, the decision could only be considered notified when the representative himself took knowledge of the decision.

The Board cannot accept this argument. Pursuant to R 130 the decision was addressed to the representative at his office. For organisational reasons, it is clear that in the representative’s office, one or several employees are entitled to accept mail addressed to the representatives working there. The employee who took over the impugned decision had an authorisation to do so in the name of the representative’s office. This is not disputed by the appellant. What happened there is no longer as much the responsibility of the EPO, but rather that of the representative (see T 743/05 [1.6] ; T 1535/10 [1.5.2]).

In addition, unless otherwise provided for, if an employee has an authorisation to accept over mail for the representative’s office this means that the employee has a right to take in mail for any one of the representatives working there, at least as long as the representative’s office name is on the address label. Any other interpretation would not make any sense. As a matter of fact in any of a granting, opposition or appeal procedure, when a representative is designated, this is in general a single natural person (representative) of a bigger law firm with a certain number of representatives. If the representative in the present case were right in his assumption, this would mean that the mail sent by the EPO would never be notified until the particular representative was informed of it. This would lead to inextricable difficulties for determining the date of notification, and the representative could pick and choose at will the day on which it would like the notification to have taken place.

[3] The appellant further submitted that in Sweden, where notification by post is concerned, it makes a difference whether on the address label the name of the representative is mentioned first and the name of the representative’s office second, or vice-versa. In the first case, the mail must be delivered to the very person named and in the second case it can be delivered to its office. In the present case this would mean that the decision was delivered to a person not authorised to accept it.

Pursuant to R 126(2) last part of the only sentence, “in the event of any dispute, it shall be incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be.”

In the opinion of the Board, this, however, cannot mean that it is the duty of the EPO to start enquiries as soon as a party, against the evidence on file, considers that the mail has not been properly notified.

The EPO, and the Boards of appeal in particular, cannot be expected to undertake exhaustive investigations to establish on their own the date of notification in the absence of serious doubts. This would de facto amount to allowing any party to request the EPO to prove that notification has duly been effected whenever the party feels it advantageous to do so. This cannot be the aim of this rule.

In the present case, the Board considers that no serious doubts exist. Once again, the advice of delivery has been returned to the EPO in due time, the date of reception of the mail is duly indicated (17 August 2010) on the advice of delivery and the employee who accepted the mail was indisputably authorised to accept mail for the representative’s office.

In such a case, if the representative still considers that notification has not been correctly effected it is up to him to bring convincing evidence as to the contrary.

But the appellant did not file any convincing evidence to back up its allegations. In its letter of 22 March 2011, it mentioned two articles of the “Swedish Code of Judicial Procedure Chapter 33”, which according to it would require that “If service is to be done to a single person, the document is handed over to him.”.

In the absence of any argument in this respect from the appellant’s side, the Board fails to see why the Swedish Code of Judicial Procedure would have any relevance when it comes to deciding to whom a registered letter of an administrative body should be delivered by the postal services.

It is further to be noted that case T 743/05 also concerned a Swedish representative, that the name of the representative and the representative’s office name and address were in the same format as in the present case, and that this issue did not play any role. This casts further doubts as to the relevance of the representative’s argument.

Moreover, if the two articles of the Swedish Code of Judicial Procedure cited by the appellant were applicable, they do not make any reference to a difference of treatment between pieces of mail having either the name of the person or the name of the person’s place of employment cited first on the address label. In other words even if they were applicable to registered letters of an administrative body, the cited articles fail to deal with the present situation.

Hence, in the present case, on the basis of the filed evidence, the Board cannot see any difference, when it comes to notification, between an address label with either the name of the representative or the name of his office in the first position, as in both cases the name of the representative’s office is on the label.

[4] The appellant further submitted that the date of notification to be considered should be the date indicated by him on the EPO Form 2936, namely the 3 September 2011.

This form was introduced by the EPO in order to facilitate the establishment of the date of notification in cases in which the advice of delivery is either not returned to the EPO or is returned but without being completed at the receiving end (see Notice of the European Patent Office dated 10 June 2010 in Official Journal EPO 7/2010, page 377).

In the present case the advice of delivery was duly completed and returned to the EPO, so that the date on Form 2936 is of no importance.

[5] Hence, pursuant to R 101(1) in combination with A 106 to A 108, the appeal must be considered inadmissible.

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

The file wrapper can be found here.

T 529/09 – Counter-Evidence Needed

When an Opposition Division (OD) decides to maintain an opposed patent in amended form, it invites the proprietor to pay the corresponding fees and to file translations of the claims as amended within a period of three months (R 82(2)). If the proprietor does not react, there is another communication in which the EPO points out the failure to observe the time limit and the possibility to perform the required acts within two months, provided that a surcharge is paid (R 82(3)). This communication is sent by registered letter. If the patent proprietor asserts that it has not received the communication, the EPO has to provide evidence that the delivery has indeed taken place. If the EPO is capable of doing so, is there something the proprietor can still do if it really has not received the letter? This is the situation addressed in the present decision, which gives a nice summary of the appropriate case law.

[4] A communication pursuant to R 82(3) was sent out on 8 September 2008 by registered letter. The letter was addressed to the proprietor’s representative. According to R 126(2) a registered letter is deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee.

However, “delivered to the addressee” does not mean that the notification in question has to be actually brought to the attention of the professional representative in person. It suffices that the registered letter is received by a person authorized to take delivery, e.g. an employee of the representative’s office (see T 743/05 [1.6]).

[5] In the present case, the Deutsche Post has confirmed that, following an investigation by the foreign mail operator, the letter was delivered on 12 September 2008 to an authorized recipient.

After having been informed of this result of the EPO inquiry by a communication of the board, which included a copy of the confirmation letter, the appellant did not submit any further arguments or evidence in order to demonstrate that the Deutsche Post’s confirmation failed to establish that the registered letter reached its destination.

In these circumstances, the evidence on file has to be regarded as sufficiently reliable and complete for proving the proper delivery of the letter.

[6] The board is aware of the decisions of the Legal Board of Appeal J 9/05 and J 18/05 […] where a similarly worded confirmation letter by the Deutsche Post was held not to be sufficient to prove the receipt of an EPO notification.

However, in those cases the appellant had filed a considerable amount of counter-evidence and pointed out specific reasons why the letter might not have been received by the representative’s office. Thus, there is a significant difference to the present case.

[7] The board therefore considers it to be established that the communication pursuant to R 82(3) was actually delivered to the appellant’s representative on 12 September 2008. In view of the legal fiction contained in R 126(2), this communication is deemed to be delivered to the addressee on the tenth day following its posting (which occurred on 8 September 2008), i.e. on the 18 September 2008. Since the appellant did not perform the acts mentioned in the communication within two months of the notification, it missed the time limit provided for in R 82(3), first sentence.

It was thus procedurally correct for the OD to revoke the patent in accordance with R 82(3), second sentence.

If you wish to download the whole decision, you may click here.

NB: This decision has already been reported on Le blog du droit européen des brevets.

T 1854/08 - Notifications by E-mail and Other Procedural Shortcomings

I owe the knowledge of this decision to Laurent Teyssèdre, who has discussed it on his blog (in French).

After having been summoned to oral proceedings (OPs), the applicant filed a new main request and first and second auxiliary requests. In his letter, he requested consequently that a patent be granted on the basis of one of those requests. [III]

On 27 November 2007, the Examinig Division (ED) sent an e-mail to the applicant with the following content: “Dear Mr. White, the ED has discussed the three new requests filed with letter of Nov.5. (I.) These requests are not admitted into the proceedings, pursuant to R 86(3), because they introduce substantial obscurities (A 84). […] (IV.) If no new request is filed which is admissible under R 86(3), then the OPs will be based on the request on which the summons to OPs was based.” [IV]

The applicant did not attend the OPs. At the OPs, the application was refused on the basis of the claims which had been objected to in an annex to the summons to OPs. [V]

[…] In deciding on the basis of the set of claims filed [before the summons to OPs], the ED decided on the basis of a set of claims which was no longer agreed by the applicant because new requests had been filed with letter of 5 November 2007. From this letter, it could be clearly and unambiguously derived that the new main and auxiliary requests were meant to replace the claims filed before. This follows from the fact that the applicant requested in his letter that a patent be granted on the basis of one of the newly filed requests. Hence, deciding on the basis of the old set of claims contravenes directly A 113(2), where it is stated that the EPO shall examine, and decide upon, the EP application only in the text submitted to it, or agreed, by the applicant. [2.1]

By an e-mail of 27 November 2007, the applicant was informed that the three newly filed requests were not admitted into the proceedings, because they introduced substantial obscurities. The applicant was not given any opportunity to present his comments to overcome the negative position expressed in the e-mail. Contrary to that, he had to gather from the e-mail that it was no longer possible to convince the ED. This follows from the fact that the refusal to admit the newly filed request was not presented as a provisional opinion of the division to prepare a discussion in the forthcoming OPs but as a decision which could not be overturned. In the e-mail, it is clearly expressed that “if no new request is filed which is admissible under R 86(3), then the OPs will be based on the request on which the summons to OPs was based”, i.e., that the requests filed on 5 November 2007 were no longer under consideration. This contravenes A 113 (1) where is laid down that the decisions of the EPO may only be based on grounds on which the parties concerned have had an opportunity to present their comments. [2]

As contravening A 113(1) and (2) constitutes a substantive procedural violation, the Board remits the case to the department of first instance for further prosecution (Article 11 RPBA). [3]

Moreover, it is questionable whether an e-mail can constitute a communication under A 96(2) EPC 1973 to file observations within a period to be fixed by the ED. However, as the case has to be remitted for the above mentioned reasons alone, this point has not to be decided in the present case. [4] 

I like the understatement: “It is questionable ...”

To read the whole decision, click here.