Tuesday, 6 December 2016

J 7/15 - Re-establishment for outside payment firm

The applicant uses an outside outside payment firm for paying the renewal fees, as well as an unrelated outside attorney for substantive patent work. The board is not unable to establish exactly why the renewal fees were not paid in time, but finds it sufficient that a historically reliable payment firm was used. 

Reasons for the Decision
Admissibility of the appeal
1. The appeal satisfies the requirements of Articles 106 to 108 and Rule 99 EPC and is therefore admissible.
Admissibility of the request for re-establishment of rights
2. Under Rule 136(1) EPC, a request for re-establishment of rights under Article 122 EPC be filed in writing within two months of the removal of the cause of non-compliance with the time limit, the non-observance of which led to the loss of rights. Moreover, the request must be filed at the latest within one year of the expiry of that time limit. Under Rule 136(2) EPC the request must state the grounds on which it is based and the omitted act must be completed within the relevant period for filing the request.
3. In the present case the loss of rights occurred as a result of the Appellant's failure to pay the renewal fee for the fifth year and the additional fee by 31 July 2014. The removal of the cause of non-compliance with the time limit occurred at the earliest when the Appellant received the notification from Patrafee AB of 18 August 2014 that Patrafee AB had removed the case from its system as no response had been received to the reminder of 2 April 2014. The request for re-establishment of rights was filed on 13 October 2014, i.e. within two months of the removal of the cause of non-compliance and within one year of the expiry of the unobserved time limit. On the same day the fee for re-establishment was paid and the omitted act was completed, inasmuch as both the renewal fee for the fifth year and the additional fee were paid. Thus, the requirements of Rule 136(1) and (2) EPC are met and the request for re-establishment of rights is admissible.
Allowability of the request for re-establishment of rights
4. According to Article 122(1) EPC, an applicant for a European patent whose application is deemed to have been withdrawn as a direct consequence of his non-observance of a time limit vis-à-vis the EPO can have his rights re-established, if he was unable to observe the time limit in spite of all care required by the circumstances having been taken.
5. All due care required by the circumstances means appropriate conduct by the Appellant and its representatives. In this respect it is necessary to assess how a competent party or representative would reasonably have acted (T 1289/10, Reasons, point 3.1, T 2017/12, Reasons, point 1.3.1). Under the established case law of the Boards of Appeal, an isolated mistake within a normally satisfactory system is excusable. The fact that a system has operated efficiently for many years may be evidence of the fact that a satisfactory system was in operation (see J 31/90, J 32/90, T 309/88 and T 30/90).
6. A significant factor in the present case - and a factor that distinguishes it from other cases in which re-establishment was requested after the non-payment of fees - is that Appellant's representative was not in charge of paying the fees. That task was to be performed by Patrafee AB acting on instructions from Mr Åslund alone. It was indicated during the oral proceedings that the representative forwarded the reminders sent by the EPO to his client and therefore fulfilled his duty (J 16/93).
7. The Appellant points out that the method that it used for paying renewal fees proved reliable for over 15 years. At the oral proceedings Mr Åslund informed the Board that he has used the services of Patrafee AB since 1994 and always found that firm reliable. As a result he has come to trust them and believed that he could safely assume that if he sent them instructions to make a payment those instructions would be executed and the payment would be made on time. Furthermore, he expected Patrafee AB to warn him if instructions had not been received in time, as he had a good personal relationship with the firm and they would always receive instructions from him, even if it had been decided to abandon an application. Concerning the fact that he did not notice not to have received the invoice corresponding to the renewal fees, as relied upon in the contested decision, he explained that the invoice was usually sent later on so that it was not a relevant factor in the present situation.
8. The Board notes that Mr Åslund took certain steps to check whether his instructions to pay the renewal fee had been executed. First, he telephoned Patrafee AB soon after posting those instructions. Second, he contacted Patrafee AB by email on 8 July 2014, i.e. before the end of the grace period, expressly enquiring whether any payments fell due in the near future and requesting a reply "snabbast möjligt" (as soon as possible). Patrafee AB replied by email on the same day, referring only to renewal fees that fell due at the end of October 2014.
9. It is not entirely clear to the Board what circumstances led to the non-payment of the renewal fee. It is possible that the payment instructions which Mr Åslund sent to Patrafee AB on 3 April 2014 went astray. It is equally plausible, as Mr Åslund suggests, that the normally reliable service that he had come to take for granted, after many years of successful collaboration with Patrafee AB, was quite unexpectedly denied him in the present case as a result of internal reorganization and staff changes following a takeover in 2014, of which he was unaware at the time. Furthermore, there may have been misunderstandings in the communication between Mr Åslund and Patrafee AB with respect to the applications concerned and/or the legal entities on whose behalf he was enquiring.
10. The obligation to exercise due care must be considered in the light of the situation as it stood before the time limit expired. At that time Mr Åslund was not aware of changes at Patrafee AB and could reasonably have expected Patrafee AB to have informed him if any instructions had not been properly received for renewal fees that were due in the short term. As noted above, it is impossible to determine with any degree of certitude what caused the non-payment of the renewal fee. In the circumstances it is appropriate to give the benefit of the doubt to the appellant (cf. T 529/09). The Board notes, moreover, that re-establishment of rights has been granted in Germany, Denmark, Sweden and the United Kingdom.
11. The Board considers therefore that the Appellant has shown that all due care required by the circumstances was taken. It follows that the application for re-establishment of rights under Article 122(1) EPC must be granted and the decision under appeal must be set aside.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The request for re-establishment of rights into the time limit for paying the renewal fee for the fifth year and the additional fee is granted.
3. The case is remitted to the department of first instance for further prosecution.
This decision J 0007/15 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:J000715.20161012. The file wrapper can be found here. Photo by PeteLinforth obtained via Pixabay under a CC0 license (no changes made).


  1. There is a similar decision with the same context/applicant, J 8/15.
    Those two decisions should not be interpreted as lowering the requirements for re-establishment when using a separate agency for paying the fees.
    Eventually, the benefit of the doubt was given to the applicant as there seem to have been a "turbulent" phase at the agency, whereby the applicant was left unaware of what was going on at the agency.
    For once as well, a BA takes directly and unambiguously into account what has happened not in other courts, but in other patent offices with respect to re-establishment of patents from the same applicant/proprietor and the same fee payment agency.
    May be the fee payment agency will have lost a client.....

    1. Don't get me wrong, I think this decision is a good thing. Payment firms are a reality of patent life. You do your best to manage risks but sometimes bad luck strikes. It is for those cases that reestablishment is there to save you.