T 0629/15 Re-establishment of rights - payment of renewal fee
In this case the board of appeal has to deal with a common situation wherein a renewal fee has been missed and responsibility for payment was lying with the US attorney and a fee payment agency. In such a situation, when does the 2 month period for requesting re-establishment start?
The European patent attorney is of the opinion that the period starts when he is instructed to affect the payment. The board reviews the case law and concludes that if the loss of rights communication is received earlier, then this communication triggers the period. The request for reestablishment is now inadmissible for being filed too late.
Summary of Facts and Submissions
I. The appeal lies from the decision of the Examining
Division, announced on 10 November 2014, rejecting the applicant's request of
26 February 2013 for re-establishment of rights into the time limit for payment
of the 5th year renewal fee with additional fee. The Examining Division also
stated that the patent application was deemed to be withdrawn as of 1 November
2012. The Examining Division held that the cause of non-compliance was removed
not only once the then European representative had been informed by the US
applicant's US representative on 8 January 2013 of the erroneousness of the
non-payment of the 5th year renewal fee, but when the European representative
had received the communication of loss of rights pursuant to Rule 112(1) EPC of
10 December 2012 on 11 December 2012. Despite the fact that the US applicant
used a US representative as well as a service firm (Lumen Patent Firm) for the
payment of renewal fees, the European representative remained responsible for
the application. The European representative's awareness of the lack of payment
of the renewal fee was therefore to be considered as sufficient to remove the
cause of non-compliance. Hence, the time limit for filing the request for
re-establishment expired on 11 February 2013, so that the request filed on 26
February 2013 was filed after the expiry of the deadline and was to be found
inadmissible. The Examining Division referred to a number of decisions of the
Boards of Appeal to support its findings.
II. The appellant filed a Notice of Appeal on 9 January
2015. With the statement setting out the grounds of appeal filed on 6 March
2015 the appellant requests:
(1) as the main request that the applicant's rights in
relation to the time limit for payment of the fifth year renewal fee with additional
fee be re-established and that the application be remitted to the Examining
Division for completion of substantive examination thereof,
(2) as a first auxiliary request that the Board of Appeal
finds the request for re-establishment to be admissible and remits the
application to the Examining Division for consideration of allowability of the
request for re-establishment,
(3) as a second Auxiliary Request that oral proceedings be
held if the Board is unable to grant either of the above requests without them.
III. The appellant's arguments as submitted with the
statement of grounds of appeal can be summarized as follows:
For a professional representative to know that the erroneous
non-payment of a fee has occurred, he must be aware not only that the fee has
not been paid, but also that it should have been paid. If a professional
representative has been instructed to do something and inadvertently fails to
do so, then he only needs to become aware that the thing was not done to know
that something is amiss. But that was not the case here.
On receipt of the Noting of Loss of Rights communication,
the European representative became aware that the renewal fee had not been
paid. He reported the communication promptly on 20 December 2012. The evidence
showed that it was not until the telephone conversation of 8 January 2013 (with
the US representative) that he became aware of the circumstance that it should
have been paid that allowed him to conclude that something was amiss.
Noting of Loss of Rights communications were an everyday
occurrence for professional representatives and the vast majority of them did
not relate to any error. Thus a professional representative could not rush to
take remedial action each time a Noting of Loss of Rights communication is
received, but must first investigate whether the rights lost have been
intentionally given up. Such an investigation could not begin until the fact
that the non-payment was unintentional has been established.
IV. The appellant further submitted that it was unclear
whether the appealed decision also addresses the allowability of the request
for re-establishment. If it did, then a serious procedural violation had
occurred, since the representative had not been given the opportunity at the
oral proceedings before the Examining Division to address the allowability of
the request for re-establishment. In that event, the refund of the appeal fee
is requested. Furthermore, if the Board cannot decide that re-establishment is
allowable, the application should be remitted to the Examining Division for
consideration of allowability of the request.
V. With a communication dated 2 December 2015, received by
the European representative of the appellant on 8 December 2015, and annexed to
the summons to oral proceedings to take place on 19 February 2016 the Board
questioned the admissibility of the request for re-establishment on the
following grounds:
"In addition to the decisions cited by the Examining
Division in the decision under appeal and commented on by the appellant in its
statement of grounds of appeal the Board refers to some further, partly more
recent decisions of the Boards of Appeal (5.1.-5.7 below). These decisions
concern cases and circumstances similar and comparable to the facts of the
underlying appeal case, i.e. cases where renewal fees had not been paid in
time, a communication of loss of rights was issued and the applicant was an
US-based enterprise represented by both a US representative and an European
representative, and where a service firm had been charged with the payment of
fees with respect to proceedings before the EPO.
In decision J 27/90 (OJ EPO 1993, 422), referred to and
commented on by both the Examining Division and the appellant, the board noted
that even if renewal fees are paid by someone else (e.g. a US attorney, a
service company or even by the applicant himself), the appointed European
professional representative remains responsible for the proceedings before the
EPO and has to take the necessary steps to ensure payment, if intended. This
includes a reliable monitoring system and reminders to the applicant. This
decision has been confirmed by several decisions of the Boards of Appeal
concerning comparable facts and circumstances (e.g. J 1/07 of 25 July 2007; J
4/07 of 7 July 2008, J 12/10 of 16 June 2011; J 5/13 of 17 January 2014). The
Boards of Appeal further stated that, in cases like these, the European
professional representative continued to bear a secondary responsibility to
advise the appellant properly if either the appellant addressed them or if they
became aware of any problem that might affect the appellant's position in
respect of the legal status of the patent application and, in particular, the
payment of the renewal fee (J 1/07, point 4.4 of the reasons; J 5/13, point
3.3.2 of the reasons). The Board thereby fully agrees with the appellant that
if, as in the present case, the European representative's authorization is
silent concerning the payment of renewal fees and he has not received any funds
for this purpose, he cannot be expected to pay the fee by advancing money on
behalf of the appellant out of his own pocket (cf. J 16/93 of 20 June 1995,
point 4.3.3 of the Reasons; J 19/04 of 14 July 2005, point 10 of the Reasons).
According to the case law of the Boards of Appeal the
removal of the cause of non-compliance is a matter of fact which has to be
determined in the individual circumstances of each case (J 07/82, OJ EPO 1982,
391). In the case of an error of facts the removal occurs on the date on which
any person responsible for a patent application, i.e., the European
professional representative, should have discovered the error made. If a communication
according Rule 112(1) EPC has been duly served, it may, in the absence of
circumstances to the contrary, be assumed that the removal was effected by this
communication.
The appellant has not put forward any convincing argument
which could lead to the conclusion that there were circumstances to the
contrary, with the consequence that it can be assumed that the removal was only
effected when the European representative was informed by the applicant's US
representative on 8 January 2013 of the erroneousness of the non-payment of the
5th renewal fee. Taking into account the facts underlying the case at issue,
there is no reason why the Board should take the view that the European
representative could not have discovered that the non-payment was unintentional
immediately after receipt of the communication of Loss of Rights on 11 December
2012.
The appellant has not provided any arguments, let alone
evidence, that the European representative as responsible person had monitored
the time limit for the payment of the renewal fee and that he had sent the US
applicant or its national representatives reminders or warning letters
regarding the impending expiration of that time limit that remained unanswered.
If he had done so, one might consider that the mere receipt of a communication
of Loss of Rights could be expected by the representative, since after such
reminders being left unanswered the representative could assume that no further
actions should be taken and the renewal fee should not be paid. It could then
probably be concluded that, based on such facts, the cause for non-payment may
not yet have been removed by the receipt of a communication of Loss of Rights
(see J 19/04 of 14 July 2005, point 5 of the reasons). Apparently, the facts
underlying J 19/04 are decisively different from those of the case at issue.
In the absence of any information to the contrary, upon
receipt of the communication of Loss of Rights on 11 December 2012 the European
representative could and should have established whether something had gone
wrong and whether payment of the renewal fee had been unintentionally missed.
If, as follows from his submissions, he did not positively know that the
appellant did not intend to pay the renewal fee, it was his duty to immediately
inform the US patent attorney upon receipt of the Noting of Loss of Rights so
as to ascertain whether non-payment had occurred inadvertently, or whether the
appellant actually intended to let the application lapse (see J 12/10 of 16
June 2011, point 3 of the reasons).
It may be true, as the appellant submits, that Noting of
Loss of Rights communications are an everyday occurrence for a professional
representative and that the vast majority of them do not relate to any error
(4.3 above). It may also be accepted that a professional representative cannot
rush to take remedial action each time a Noting of Loss of Rights communication
is received, but must first investigate whether the rights lost have been
intentionally given up. The Board can however not agree with the appellant's
allegation that such an investigation cannot begin until the fact that the
non-payment was unintentional has been established.
The purpose of the two-month period laid down in Rule 136(1)
EPC is to enable parties to carry out the necessary investigations and
consultations, as well as to prepare the documentation for submission of a
request under Article 122(1) EPC (J 17/89 of 9 January 1990, point 3 of the
reasons). Thus, any investigation into whether the payment of the renewal fee
had been missed unintentionally or deliberately has to start immediately once
the Noting of Loss of Rights communication has been received. If it emerges
from that investigation that the time limit has been missed unintentionally
then a timely request under Article 122(1), Rule 136(1) EPC has to be filed
with the EPO. As explained above, taking into consideration the pertinent case
law of the Boards of Appeal this two month time limit normally starts upon
receipt of the Noting of Loss of Rights communication. The European
representative should therefore without delay have sought confirmation of the
unintentional omission to pay the renewal fee, with indication of the time
limit for requesting re-establishment.
The European representative did however not seek such
confirmation, but merely forwarded the Noting of Loss of Rights communication
by regular mail nine days after its receipt to the US representative, leaving
it up to the latter to draw its own conclusions. In such a situation there are
no circumstances to the contrary allowing to assume a date of removal of the
cause of non compliance later than the date on which the European
representative actually received the Loss of Rights communication ( J 12/10 of
16 June 2011, point 4 of the reasons).
Furthermore, the Board notes that the factual situation
underlying the present appeal case at issue did not prevent the European
representative from complying with a two-month time limit ending on 11 February
2013. Even if he only learned during the telephone conversation of 8 January
2013 with the US representative that the non-payment of the renewal fee was
unintentional, there was still more than one month left.
Contrary to the appellant's position (statement of grounds
of appeal, point 21), decision J 24/97 does not support the present request for
re-establishment. In that decision, the Board considered the removal of the
cause of non-compliance was when the professional representative
"eventually received the instructions to pay the renewal fee", rather
then when he received the Noting of Loss of Rights communication. However, that
"receipt of instructions" occurred before the receipt of the Noting
of Loss of Rights communication. Therefore, it cannot be concluded that the
Board in J 24/97 would have arrived at the same decision if, as in the present
case, that "receipt of instructions" occurred after the receipt of
the Noting of Loss of Rights communication, and hence the latter probably could
have effected the removal of the cause of non-compliance.
At present, the different arguments submitted by the
appellant fail to convince the Board that the decision under appeal was
mistaken and has to be set aside. In the Board's preliminary view, the
rejection of the request for re-establishment was correct and the appeal has to
be dismissed.
In the Board's understanding, the decision under appeal was
based solely on the lack of admissibility of the request for re-establishment
(point 26 of the Examining Division's decision of 10 November 2014). The same
is true for this communication of the Board. Consequently, at present, any
requests by the appellant relating to the allowability of the request for
re-establishment are moot."
VI. With letter dated 19 January 2016 the appellant
submitted only the following response to the Board's communication:
"We write to inform you that no representative of the
appellant will attend the oral proceedings that are scheduled for 19 February
2016.
We maintain the requests that have been made in the written
proceedings and invite the Board to take a decision based on the submissions
made in writing."
VII. Oral proceedings before the Board were held on 19
February 2016 in the absence of the appellant.
At the end of the oral proceedings the Board announced its
decision.
Reasons for the Decision
1. In its communication accompanying the summons for oral
proceedings the Board, taking account of the impugned decision and the
submissions of the appellant, raised objections against the admissibility of
the request for re-establishment of rights into the time limit for payment of
the 5th year renewal fee with additional fee.
2. This communication explained why, in the Board's opinion,
the request for re-establishment of rights lacked admissibility according to
Rule 136(1) EPC (see point V. above).
3. The appellant did not reply in substance to these
objections (see point VI. above). It indicated that it would not attend the
oral proceedings.
There has been no attempt by the appellant to refute or
overcome the objections raised in the above communication. The Board has
reviewed the factual and legal situation and sees no reason to depart from its
preliminary opinion as expressed therein. Finally, in addition to the grounds
as set out in the communication dated 2 December 2015 the Board points out that
the present case also differs from those cases where the European
representative had expressly been instructed not to monitor renewal fees (see T
942/12 of 17 November 2015, point 3.4 of the reasons).
4. Although the appellant did not attend the oral
proceedings, the principle of the right to be heard pursuant to Article 113(1)
EPC is observed since it only affords the opportunity to be heard and, by
absenting itself from the oral proceedings, a party gives up that opportunity
(see the explanatory note on Article 15(3) RPBA cited in T 1704/06, point 7.3
of the reasons; see also the Case Law of the Boards of Appeal, 7**(th) Edition
2013, IV.E.4.2.3 c)).
5. Taking account of the preceding observations, the Board
concludes that the request for re-establishment of rights into the time limit
for payment of the 5th year renewal fee with additional fee is inadmissible,
since it has not been filed within two months of the removal of the cause of
non-compliance with that time limit (Rule 136(1) EPC) and that for these
reasons the rejection of the request by the Examining Division was correct.
Order
For these reasons it is decided that:
The appeal is dismissed.
This decision T 629/15 (pdf has European Case Law Identifier: ECLI:EP:BA:2016:T062915.20160219. The file wrapper can be found here. Photo "Clock Tower" by NathanMac87 obtained via Flickr under CC BY 2.0 license (no changes made).
This decision T 629/15 (pdf has European Case Law Identifier: ECLI:EP:BA:2016:T062915.20160219. The file wrapper can be found here. Photo "Clock Tower" by NathanMac87 obtained via Flickr under CC BY 2.0 license (no changes made).
That a representative is not obliged to pay a fee for a foreign applicant out of his own pocket is an established practice supported by case law, and it is good so.
ReplyDeleteHowever, accepting that the time limit for filing the request for reestablishment starts with the moment the European representative is instructed to effect the missing payment, would leave the start of the 2 months period in the hand of the party filing such a request. This is against any legal certainty.
The reason given by the European representative for not dealing the notification of loss of rights immediately, boils down to excess work pressure. A very compelling reason to say the least.....
That the Board could not accept such views goes without saying. The decision is thus understandable and fully justified.
It is amazing to see how far the creativity of some representatives go....
Every applicant deserves a creative representative. The decision is up to the board.
DeleteQuite right. If a client asks you to take case, you do the best you can.
DeleteDoing "the best you can" even at the risk of looking ridiculous, and ending with the Board telling directly and unambiguously the representative that he did not do his job properly?
DeleteSee communication from the Board V., 5th and 4th § from the bottom: forwarding the notification of loss of rights by regular mail and the factual situation being such that it still left the representative one month to act.....
I am inclined to think that in spite of all creativity this was not the best way to help a client.
In the eyes of the Board, the European representative mucked it up, no more no less. Trying to compensate its own failure by creativity is not the best way to act....
It reminds me of the representative telling a Board that the time limit for replying to a communication was not the moment when it entered the firm, but when he got it on his desk.
I do not think that this should be the proper level for a "qualified" representative.
Of course, also for saving one's own *ss, creativity may be required. But one should distinguish between whether a representative understands how the system works, and the arguments he puts forward to save a case. The first thing cannot be judged based on the latter. In that sense, every applicant also deserves a representative willing to look foolish. Though I am getting to feel a bit foolish myself, having to explain this.
DeleteThe interests of the client prevail over those of yourself or the EPO. Of course one makes sure that the client knows what the risks are, and what the likelihood of prevailing is. If the client then still wants you to take the case, you do the best you can. Even if you look foolish in the process.
ReplyDeleteFor sure, when it boils down to risk loosing the client, then anything under the sun should attempted....
ReplyDeleteI do agree that there is a difference between understanding the system and arguments put forward in a case, but it leaves a little taste.