T 0198/16 - Yea or Nay to Intention to Pay?
Is the mere intention of an appellant to pay the appeal fee, as expressed by reference to EPO Form 1010 ("Payment of fees and expenses") in the Notice of Appeal, enough to authorise the EPO to debit appellant's deposit account (holding sufficient funds), when said Form 1010 has erroneously not been sent together with the Notice?
In this examination appeal, the Board held - deviating from T 1265/10 - that regardless of whether or not the EPO would have access to sufficient the funds of the party intending to pay, such an intention can never be considered equivalent to an order.
Referring to R 18/13, the Board further found that - different from a mistake made by an assistant - the mistake made by the representative to not explicitly instruct his assistant to pay the appeal fee and to not properly review the electronic receipt is a mistake that cannot be excused. Accordingly, the request for re-establishment of rights was refused.
As a result, the appeal was deemed not to have been filed.
Catchword:
1. The intention to
authorise debiting of the deposit account does NOT already allow the EPO to act
on such authorisation and carry out such intent where the EPO, under the
deposit account system, already holds such money in trust (deviation in particular
from T 1265/10, at point 15), (see point 3.4.3 of the quotation from the
summons under point 1 of the Reasons).
2. A representative must
give express and clear instructions to an assistant to the effect that the
appeal fee has to be paid. It is not enough to rely on the assistant's deducing
the duty to file the payment form from the notice of appeal, which includes the
sentence: "The appeal fee is paid via the enclosed EPO form 1010."
Summary
of Facts and Submissions
I. The appeal is against the
decision of the examining division of 19 October 2015 refusing European patent
application No. 07004013.4 (publication number EP 1 887 800 A2). The present
decision is in relation to a communication of 19 April 2016 from the registrar
of the board noting a loss of rights pursuant to Rule 112(1) EPC for failure to
pay the appeal fee. The appellant requested that the board issue a
communication under Rule 112(2) EPC stating that the appeal fee had been paid
in time (main request), or that a certain question be referred to the Enlarged
Board of Appeal (first auxiliary request), or that the appellant have its right
to pay the appeal fee within the prescribed time limit re-established under
Article 122(1) EPC (second auxiliary request).
II. A notice of appeal
dated 24 December 2015 was filed on that date via EPO Online Filing, using Form
1038E, together with a statement of the grounds of appeal dated 22 December
2015. The one-page notice of appeal included inter alia the following text
portions (emphasis in the original):
We hereby lodge an appeal under Article 108 EPC against the decision of the Opposition Division / Examining Division, dated 19.10.2015 , refusing European patent application No. 1887800, Multimedia playback control apparatus ...The appeal is lodged against the decision in its entirety. The appeal fee is paid via the enclosed EPO form 1010.
However, contrary to what
the letter said, EPO Form 1010 was not transmitted together with the notice of
appeal (and the statement of grounds).
III. With a communication
of 19 April 2016 sent to the applicant on Form 3019 the registrar of the board
noted a loss of rights pursuant to Rule 112(1) EPC. In the communication it was
said that the appeal fee had not been paid. Pursuant to Article 108, second sentence,
EPC, the appeal was accordingly deemed not to have been filed.
IV. On 2 May 2016 the
appellant requested a decision pursuant to Rule 112(2) EPC. It argued that,
under the pertinent case law of the boards of appeal and the Arrangements for
deposit accounts, as amended with effect from 1 April 2014 (hereinafter
referred to as ADA 2014), the appeal fee had been paid on 24 December 2015,
since the EPO had clearly been authorised to debit it from an identifiable
deposit account. With Form 1010 filled in and attached to the letter of 2 May
2016, the formality required by ADA 2014 had also been completed. As a
consequence, the finding of non-payment of the appeal fee was incorrect.
Therefore, it was requested that a decision be taken that the payment of the fee
for appeal had been validly made within the time limit of filing an appeal
pursuant to Article 108 EPC and that the appeal could go forward.
V. In a letter of 21 June
2016, the applicant requested re-establishment of rights and paid the
corresponding fee on the same day. It also filed supporting documents for the
request. The request was made as a precaution should the board, for whatever
reason, consider that the appeal fee was deemed not to have been paid. The
applicant argued that re-establishment of rights should be granted since the
time limit for payment of the appeal fee had been missed "as a result of
an isolated human error by a reliable, experienced employee [i.e. formalities
officer] working within a normally satisfactory system" (see fifth bullet
point on page 5).
More specifically, the
formalities officer had filed both the notice of appeal (dated 24 December
2015) and the statement of grounds of appeal (dated 22 December 2015) on 24
December 2015. The representative had finalised those documents on 22 December
2015 before leaving on vacation. Since only one formalities officer was present
in the Eindhoven office of the association of representatives on Christmas Eve,
it had been agreed verbally between that officer and the representative that the
latter would check the filed documents during the interval between Christmas
and New Year. In case of an error, there would still be time to correct it,
since the deadline was 4 January 2016. (See page 5, second bullet point.)
On 28 December 2015 the
representative reviewed the "acknowledgement of receipt" document as
received from the EPO. "From the information on this document the
[representative] ... concludes that all documents, including the form 1010,
were filed ..." (see page 5, fourth bullet point).
On 28 December 2015, the
representative also checked the generated invoice. That invoice included an
item relating to the fee for filing the appeal. The representative at that
point did not realise that the fact that the fee had been correctly invoiced to
the client did not conclusively prove that the fee had also been paid to the
EPO.
Not until the receipt of
the notice of loss of rights on 21 April 2016 did the representative become
aware of the non-payment of the appeal fee (see page 6, second bullet point).
VI. On 23 June 2016 the
applicant requested oral proceedings as a precaution in case the board
"contemplates a decision that not meets the applicant's request...".
VII. In a communication
of 11 September 2017 annexed to the summons to oral proceedings scheduled for
19 December 2017 (hereinafter referred to as "the annex"), the board
expressed its provisional opinion that payment had not been made upon receipt
on 24 December 2015 of the notice of appeal which mentioned that the appeal fee
had been paid via enclosed Form 1010. It did not follow the pertinent case law
under which payment on that date would have been accepted. Nor had payment been
received subsequently before lapse of the time limit on 4 January 2016. As a
consequence, the board would likely confirm the finding of loss of rights noted
in the registrar's communication of 19 April 2016 in a decision. The appeal
would accordingly be deemed not to have been filed. This was subject to the
merits of the request for re-establishment of rights.
As to that request, the
board provisionally considered that the cause of non-compliance with the period
for paying the appeal fee, taking into account that due care was a permanent
obligation, had been removed upon expiry of the appeal period (on 4 January
2016) and not the much later date of receipt of the loss-of-rights
communication (dated 19 April 2016). The representative had not exercised due
care because, when reviewing the EPO's acknowledgement of receipt on 28
December 2015, he ought to have noticed that payment Form 1010 had not been
mentioned. Consequently, the request for re-establishment was deemed not to
have been filed. In the alternative, the request was unfounded on its merits
for lack of exercise of due care for not properly reviewing the receipt and
also for failure to instruct the assistant to make payment in an admissible way
within the framework of the filing of the notice of appeal.
VIII. In a submission in
reply of 17 November 2017, the representative maintained that the appeal fee
had been validly paid because the notice of appeal contained a clear order for
such payment. Should the board continue not to follow the pertinent case law,
then a specific question should be referred to the Enlarged Board of Appeal. As
to re-establishment of rights, the date when the cause of non-compliance with
the period for paying the appeal fee had been removed was the receipt of the
loss-of-rights communication, and not the date when the appeal period expired.
IX. The board held oral
proceedings on 19 December 2017.
The appellant requested
that the board issue a communication under Rule 112(2) EPC stating that the
appeal fee had been paid in time (main request), or
that a question be
referred to the Enlarged Board of Appeal, namely:
Is an intention to authorize a debit account sufficient to allow the Office to act on an authorization and carry out such intent, in a situation where the debit account, the fee that is due and the account holder are clearly identifiable, and where the debit account holds sufficient funds? (first auxiliary request),
or that the appellant have its right to pay the appeal fee within the prescribed time limit re-established under Article 122(1) EPC (second auxiliary request).
At the end of the oral
proceedings, the chairman announced that a decision would be issued in writing.
Reasons
for the Decision
1. Main request for a
communication confirming timely payment of the appeal fee
As to this point, the
appellant's submissions made in the reply to the annex and during the oral proceedings
did not make the board deviate from its preliminary opinion as comprehensively
expressed in the annex, section C. Legal assessment, point 3, up to the side
note in point 3.4.3 starting with the clause "As an aside ...", with
the exception of two paragraphs of the quoted section of point 3.4.1 that are
struck through. The corresponding text is set forth verbatim below. (As for the
two struck-through paragraphs, see the explanation following the quotation.)
[beginning of quotation]
"3. Whether the appeal is deemed not to have been filed for
failure to pay the appeal fee within the time limit for filing an appeal
3.1 The issue
The notice of appeal
against the decision of the examining division of 19 October 2015 was received
on 24 December 2015 and, therefore, within the two-month appeal period set out
in Article 108, first sentence, EPC, which expired on 4 January 2016 (see Rules
126(2) and 134(1) EPC). Pursuant to Article 108, second sentence, EPC, however,
'Notice of appeal shall not be deemed to have been filed until the fee for
appeal has been paid'.
The question is whether,
in the circumstances of the present case, the sentence 'The appeal fee is paid
via the enclosed EPO form 1010' (the form had not been enclosed) in the notice
of appeal must be considered to constitute a valid order for payment of the
appeal fee by debit from a deposit account with the EPO. If so, the appeal fee
would have been paid on 24 December 2015, and the appeal would be deemed to
have been filed on that day (subject to the account containing sufficient
funds). Otherwise, in the absence of any payment received within the time limit
that expired on 4 January 2016, the appeal would be deemed not to have been
filed, as indicated in the Registry's communication of 19 April 2016.
3.2 The legal provisions
governing deposit accounts for paying fees
Under Article 5(1) of the
Rules relating to Fees ('RFees'), the fees due to the Office shall be paid by
payment or transfer to a bank account held by the Office. The President of the
EPO may allow other methods, as follows from Articles 5(2) and 7(2) RFees.
Under these provisions, the EPO made available deposit accounts for paying
fees, expenses and prices to be levied by the Office.
- The ADA 2015
Pursuant to the Decision
of the President of 12 February 2015 the currently valid Arrangements for
deposit accounts (ADA 2015) (see supplementary publication - OJ EPO 3/2015)
entered into force on 1 April 2015. They supersede the ADA 2014 dated 1 April
2014 - and relied on by the applicant (supplementary publication - OJ EPO
4/2014). The following provisions pertinent to the present case have been
extracted from the ADA 2015 (emphases added if not indicated otherwise;
footnotes omitted):
6.2 Debiting occurs only on the basis of a debit order signed by the account holder.
This may be
- a debit order for
individual fees, or
- an automatic debit order filed under the automatic debiting procedure for a specific European or international patent application and authorising the debiting of fees automatically as the proceedings progress,
- an automatic debit order filed under the automatic debiting procedure for a specific European or international patent application and authorising the debiting of fees automatically as the proceedings progress,
and may be filed
- via EPO Online Filing
or the EPO's Case Management System (new online filing, CMS), using EPO Forms
1001E and 1200E
- on paper, by fax or via web-form filing, using EPO Forms 1001 and 1200
- via EPO Online Filing, PCT-SAFE, CMS or ePCT, using the PCT Fee Calculation Sheet annexed to Form PCT/RO/101 (PCT Request) or Form PCT/IPEA/401
- via Online Fee Payment in Online services, in which case authorisation by smart card takes the place of a signature
- via EPO Online Filing and CMS, using Form 1038E
- on paper, by fax or via web-form filing, using EPO Form 1010, Form PCT/RO/101 (PCT Request) or Form PCT/IPEA/401 for each individual application concerned.
- on paper, by fax or via web-form filing, using EPO Forms 1001 and 1200
- via EPO Online Filing, PCT-SAFE, CMS or ePCT, using the PCT Fee Calculation Sheet annexed to Form PCT/RO/101 (PCT Request) or Form PCT/IPEA/401
- via Online Fee Payment in Online services, in which case authorisation by smart card takes the place of a signature
- via EPO Online Filing and CMS, using Form 1038E
- on paper, by fax or via web-form filing, using EPO Form 1010, Form PCT/RO/101 (PCT Request) or Form PCT/IPEA/401 for each individual application concerned.
For debit orders filed on
paper, use of the PCT/EPO standard forms is mandatory [emphasis in the original].
…
6.3 The debit order must
be clear, unambiguous and unconditional. It must contain the particulars necessary to identify the purpose of the payment, including the amount of each fee or expense
concerned, and must indicate the number
of the account which is to be debited. Provided there are sufficient funds in the deposit account
on the date of receipt of the debit order by the EPO, that date will be
considered as the date on which the payment is made.
What is important for the
present case is that, under the ADA 2015, for (non-automatic) debiting of the
deposit account a signed debit order is required. It may, among other options,
be filed
- via EPO Online Filing, using Form 1038E (letter accompanying
subsequently filed items) or
- on paper, by fax or via web-form filing, using EPO Form 1010
For debit orders filed on paper, use of the PCT/EPO standard forms is mandatory.
- on paper, by fax or via web-form filing, using EPO Form 1010
For debit orders filed on paper, use of the PCT/EPO standard forms is mandatory.
- The ADA 2014
It is the ADA 2014 on
which the applicant relies.
The Notice from the EPO dated 11 February 2014 concerning revision of
the ADA and their annexes summarises
the main changes to the ADA in the version that entered into force on 1 April
2014 (and was superseded by the version valid since 1 April 2015, i.e. the ADA
2015).
Under point 6.2 of the
ADA 2014 the debit order might be filed, inter alia,
- by means of Online Fee
Payment via Online services, in which case authorisation by smart card takes
the place of a signature,
- by means of EPO Online Filing using EPO Form 1038E (letter accompanying subsequently filed items),
- on paper, in which case the use of EPO Form 1010 or PCT Form PCT/RO/101 or IPEA/401 is mandatory,
- by fax, in which case the use of EPO Form 1010 or PCT Form PCT/RO/101 or IPEA/401 is mandatory, and the forms should be sent to the EPO's central fax number in Munich ...,
- by means of EPO Online Filing using EPO Form 1038E (letter accompanying subsequently filed items),
- on paper, in which case the use of EPO Form 1010 or PCT Form PCT/RO/101 or IPEA/401 is mandatory,
- by fax, in which case the use of EPO Form 1010 or PCT Form PCT/RO/101 or IPEA/401 is mandatory, and the forms should be sent to the EPO's central fax number in Munich ...,
6.3 The debit order must
be clear, unambiguous and unconditional. It must contain the particulars
necessary to identify the purpose of the payment, including the amount of each fee or expense
concerned, and must indicate the number of the account which is to be debited. Paper debit orders must be filed using
the PCT/EPO standard forms (see point
6.2 above). Provided there are sufficient
funds in the deposit account on the date of receipt of the debit order by
the EPO, that date will be considered as the date on which the payment is made.
[Emphases added, footnote omitted.]
[Emphases added, footnote omitted.]
The Notice of 11 February 2014 sets forth (under point I, sub-heading
'Debiting the account'), inter alia, that
the use of EPO Form 1010 ... for filing debit orders will become mandatory on 1 April 2014. …
Failure to use the above forms will delay processing
considerably, although payers will keep
the original submission date as payment date. In such cases, however, for
processing purposes, from 1 April 2014 onwards debit orders are to be resubmitted using the standard forms.
[Emphases added.]
3.3 The case law of the
boards of appeal relating to payment by debit from a deposit account
The following overview is
based on the publication 'Case Law of the EPO Boards of Appeal', 8th edition,
2016, point III.Q.2.2, pp. 793-794.
According to T 17/83 (OJ
1984, 306) a timely filed statement
that a debit order for payment of a
fee had been issued was itself considered such a debit order in
the absence of any record of the original.
In T 1265/10 Section X of
the notice of opposition (EPO Form 2300) was crossed to indicate enclosure of a
fee payment voucher (EPO Form 1010), which enclosure, however, was not found at
the EPO. The board held that this was a declaration
of the intention to pay the opposition fee.
A debit order had to be unambiguously recognisable and show a clear
and unambiguous intention to make a particular payment (T 170/83, OJ 1984,
605; T 152/82, OJ 1984, 301; T 152/85, OJ 1987, 191).
As stated in T 170/83, an
authorisation to be derived from the
circumstances required that the authorising
person (account holder) was known
and clearly identifiable, and that certain fees due to the EPO for a known procedure were meant to be paid by the withdrawal from such account (and not in any
other way). Following T 806/99, which was based on almost identical facts,
the board found these conditions to be fulfilled here. This was sufficient for
payment of the fee. The board deciding case T 806/99 (at point 4)
considered the fact that
the representative regularly paid via
the debit account, that other forms of payment such as payment per cheque
could be excluded due to the fact that point IX of the opposition form did not
list that a cheque had been enclosed, that by the rather detailed opposition statement it could be excluded that the opposition was not meant seriously, and that thereby it could be clearly established
that the representative had intended to pay the opposition fee by the EPO
debiting his account for the correct amount. [Emphasis added.]
3.4 Applying the legal
provisions relating to payment by debit from a deposit account
3.4.1 Valid order for
payment (points 6.2 and 6.3, first sentence, ADA 2015) in the light of the case
law
It was said in the notice
of appeal that 'The appeal fee is paid via the enclosed EPO form 1010'. EPO
Form 1010 was not enclosed. Given that the notice of appeal was filed via EPO
Online Filing, using Form 1038E (letter accompanying subsequently filed items),
that form would have had to be used as well for filing the debit order for the
appeal fee, and not Form 1010.
Favourably for the
applicant, however, the board will consider an erroneous use of Form 1010 as a
formality that would have had the mere consequence that the respective fee
would have been debited manually and the payer would have kept the original
submission date as payment date. This seems to be the practice of the EPO.
Under this assumption and
under the conditions of the case law mentioned above, set out thoroughly in T
1265/10, it would then be possible to find that an order for payment of the
appeal fee was validly given in the notice of appeal (subject to that notice
having been validly signed; see above, at point C2):
- The authorising person
(account holder) is known and clearly identifiable: it is the applicant filing
an appeal.
- The appeal fee was meant to be paid by the withdrawal from the applicant's debit account, and not by bank transfer, the only other mode of payment provided for in Form 1010. This follows from the wording of the sentence that the appeal fee 'is paid via the enclosed EPO form 1010'. Payment by bank transfer would require an additional act, i.e. that very transfer.
- The representative asserts it regularly paid via the debit account: in any case it follows from the file in the present case that the fees due for the application in issue were paid that way.
- By the rather detailed statement of grounds of appeal filed together with the notice of appeal it can be excluded that the appeal was not meant seriously.
- The appeal fee was meant to be paid by the withdrawal from the applicant's debit account, and not by bank transfer, the only other mode of payment provided for in Form 1010. This follows from the wording of the sentence that the appeal fee 'is paid via the enclosed EPO form 1010'. Payment by bank transfer would require an additional act, i.e. that very transfer.
- The representative asserts it regularly paid via the debit account: in any case it follows from the file in the present case that the fees due for the application in issue were paid that way.
- By the rather detailed statement of grounds of appeal filed together with the notice of appeal it can be excluded that the appeal was not meant seriously.
3.4.2 Date when payment
would have taken effect
Pursuant to point 6.3,
second sentence, ADA 2015 quoted above, 'Provided there are sufficient funds in the deposit account
on the date of receipt of the debit order by the EPO, that date will be
considered as the date on which the payment is made' (emphasis added).
According to information received from the EPO's Treasury & Accounting
Department, on 24 December 2015, i.e. the date of receipt of the notice of
appeal, the deposit account had a balance sufficient to cover the appeal fee of
¤ 1,860 (the increase of the fee to ¤ 1,880, valid as from 1 January 2016,
would not have been relevant). That date therefore would be the date of payment
under the case law referenced above.
3.4.3 Whether the
case-law is convincing
Equalling the intention
to pay to a payment is detached from the reality of business transactions and
is therefore unacceptable. The long standing case law of the boards of appeal
on this matter can therefore not be followed. This position is explained in
greater detail below.
In T 1265/10 the board held
(at point 15):
The Board would also like to highlight that the issue is not whether the opponent intended to pay. An intention to pay is certainly not enough in order to actually effect payment. For example, it would not have been enough to indicate in the notice of opposition that payment would be made by cheque, and no corresponding cheque had been enclosed. But the statement "we want to pay" is different in its legal significance from the statement "we want to authorise the EPO to withdraw the fees for a determined purpose from our account" in that the intention to authorise already allows the Office to act on such authorisation and carry out such intent where the EPO under the deposit account system already holds such money in trust.
The board agrees that
- 'An intention to pay is
certainly not enough in order to actually effect payment'
but fully disagrees with
the statement according to which
- 'the intention to
authorise already allows the Office to act on such authorisation and carry out
such intent where the EPO under the deposit account system already holds such
money in trust'.
An intention to make a payment remains a (mere) intention and not a
payment, no matter whether or not the EPO has access to sufficient funds of the
person or entity intending to pay which would, as a matter of fact, make it
possible for the EPO to avail itself of those funds. The reason is that the EPO
is simply not entitled to do so under its own rules.
Pursuant to point 6.2 of
the ADA 2015, quoted above,
Debiting occurs only on
the basis of a debit order signed by the account holder.
Point 6.3 of the ADA 2015
reads:
The debit order must be clear, unambiguous and unconditional. It must
contain the particulars necessary to identify the purpose of the payment, including
the amount of each fee or expense concerned, and must indicate the number of
the account which is to be debited. Provided there are sufficient funds in the
deposit account on the date of receipt of the debit order by the EPO, that date
will be considered as the date on which the payment is made. [Emphasis added.]
The requirements for a
valid debit order laid down in points 6.2 and 6.3 are clearly not met by any
'circumstantial authorisation ... based on an appraisal of the circumstances',
as accepted in T 170/83 (at point 6, quoted in the applicant's letter of 2 May
2016, at page 2), which was cited and followed in T 1265/10.
The sentence in the
notice of appeal of 24 December 2014 reading:
'The appeal fee is paid
via the enclosed EPO form 1010' obviously is not a 'clear, unambiguous and
unconditional' debit order under point 6.3 of the ADA 2015, but a mere
statement that such a debit order is supposed to be given, and thus payment
made, by means of a different document, i.e. Form 1010. This document not
having been attached to the notice of appeal, no debit order and thus no
payment has been made by means of the notice of appeal alone."
[end of quotation]
Regarding the two
struck-through paragraphs, the board is no longer of the view that the
reference to Form 1010 in the notice of appeal might be considered as having an
impact on the application of the boards' case law on this matter; the
corresponding paragraphs under point 3.4.1 have therefore been struck through.
In the annex, the board had in any case, favourably for the appellant, already
based its assessment on the absence of such impact.
The only point that the
board wishes to add relates to the discussion at the oral proceedings regarding
an amendment of ADA 2014 that continued to subsist in ADA 2015, i.e. point 6.3,
especially the first sentence, which is identical in both versions. It reads:
"The debit order must be clear, unambiguous and unconditional". The
appellant was of the opinion that the ADA 2015 criteria were similar to those
established in T 1265/10, which had thus entered ADA 2015 and which had not
been present in ADA 2002 (at point 6.3).
The board confirms that
the above sentence was not present in point 6.3 of ADA 2002 (Arrangements for
deposit accounts and their annexes (valid as at 1 March 2002), Supplement to OJ
EPO No. 2/2002) corresponding to point 6.3 of ADA 2015 (and ADA 2014).
The board however sees no
reason to make a further inquiry into this point, simply because the sentence
that "the debit order must be
clear, unambiguous and unconditional" (emphasis added), in the board's
view, cannot be considered as an endorsement by the EPO of the critical
sentence in T 1265/10, point 15 (quoted above, at point 3.4.3) that "the intention to authorise already allows
the Office to act on such authorisation and carry out such intent where the EPO
under the deposit account system already holds such money in trust"
(emphasis added). The decisive issue is whether such an intention can be considered to be tantamount to an order, a view that the board rejected
above (point 3.4.3).
2. First auxiliary
request: referral of a question to the Enlarged Board
In the oral proceedings
the appellant requested, as a first auxiliary request, that the following
question be referred to the Enlarged Board of Appeal:
Is an intention to
authorize a debit account sufficient to allow the Office to act on an
authorization and carry out such intent, in a situation where the debit
account, the fee that is due and the account holder are clearly identifiable,
and where the debit account holds sufficient funds?
According to Article
112(1)(a) EPC, a board of appeal shall refer a question to the Enlarged Board
of Appeal if it considers that a decision is required to ensure uniform
application of the law or if a point of law of fundamental importance arises.
In the present case the
board does not consider that, for the purposes of deciding on the present case,
a decision is required on the above question either to ensure uniform
application of the law or because a point of law of fundamental importance has
arisen.
Moreover a question
involving an important point of law need not be referred to the Enlarged Board
of Appeal if the board of appeal hearing the case considers itself able to
answer it beyond doubt; see J 5/81 (OJ EPO 1982, 155, headnote 2). As the board
considers this to be the case, an answer by the Enlarged Board of Appeal to the
appellant's question is not required. The board explained extensively in the
part of the annex that is reproduced under point 1 above why an intention to
authorise in the meaning of the question is not sufficient.
At the same time, the
board thus gave reasons within the meaning of Article 20(1), first sentence,
RPBA for the deviation from the approach followed in the mentioned earlier
decisions of other boards. The board is convinced that its interpretation of
the relevant provisions of ADA 2015 is compulsory. (Those provisions are based
on Article 5(2) and 7(2) of the Rules relating to Fees, which in turn were
adopted with regard, in particular, to Article 33(2)(d) EPC.) As a consequence,
the board sees no reason to refer the question to the Enlarged Board of Appeal
to ensure uniform application of the law.
3. Second auxiliary
request: re-establishment of rights
Pursuant to Article 122(1)
EPC,
an applicant for ... a
European patent who, in spite of all due care required by the circumstances
having been taken, was unable to observe a time limit vis-Ã -vis the European
Patent Office shall have his rights re-established upon request if the
non-observance of this time limit has the direct consequence of causing ... the
loss of any other right or means of redress.
The request for
re-establishment of rights of an applicant with a professional representative
acting on its behalf is only allowable if both the applicant itself and its
representative have met the necessary standard of care (see T 1962/08, Reasons
5.1).
Whether or not these
conditions, together with the concomitant requirements of the Implementing
Regulations, are met and the request for re-establishment is to be granted (cf.
Article 122(2) EPC) is discussed below.
3.1 Whether
re-establishment of rights is applicable
3.1.1 Loss of rights or
means of redress
The two-month time limit
for filing an appeal (Article 108, first sentence, EPC) against the decision of
the examining division of 19 October 2015 expired on 4 January 2016 (Rules
126(2), 131(1), (2) and (4) and 134(1) EPC). The appeal fee not having been
paid on or before that date, the appeal would be deemed not filed within the
appeal time limit (Article 108, second sentence, EPC), unless the request for
re-establishment of rights was granted. The above criterion is therefore met.
3.1.2 Inability to
observe a time limit vis-Ã -vis the EPO
The board affirms its
preliminary findings made in the annex (see point 3.3.1, page 19):
According to T 413/91 (at
point 4), the word "unable" implies an objective fact or obstacle
preventing the required action. Such an obstacle could, for example, consist in
a wrong date inadvertently being entered in a monitoring system or an outside
agency influencing the observance of the time limit (for example a delay in
delivery service).
In the present case, the
representative, on 28 December 2015, upon reading the "document
acknowledgment of receipt" as received from the EPO and his firm's
invoice, did not notice that receipt of Form 1010 was not acknowledged by the
EPO. The representative was not alerted either to this fact before expiry of
the time limit for paying the appeal fee on 4 January 2016. The representative
in particular has not submitted that, before expiry of that time limit, he read
Form 1038E filed by his assistant on 24 December 2015 which did not mention
Form 1010 in the table of documents filed. As a consequence of his unawareness of
the error which occurred upon filing the notice of appeal, he was unable to
observe that time limit.
3.1.3 Re-establishment
not ruled out by Rule 136(3) EPC
Rule 136(3) EPC reads as
follows:
Re-establishment of
rights shall be ruled out in respect of any period for which further processing
under Article 121 is available and in respect of the period for requesting
re-establishment of rights.
Re-establishment of
rights is not ruled out by Rule 136(3) EPC, because further processing under
Article 121 EPC is not available in respect of the time limits mentioned in
Article 108 EPC; see Article 121(4) EPC. Those time limits include the
two-month period for filing an appeal laid down in its first sentence, which,
according to its second sentence, is complied with only upon payment of the
corresponding fee.
3.2 Whether the request
for re-establishment is admissible
Rule 136 EPC, in
pertinent part, reads as follows:
(1) Any request for
re-establishment of rights under Article 122, paragraph 1, shall be filed in
writing within two months of the removal of the cause of non-compliance with
the period, but at the latest within one year of expiry of the unobserved time
limit. ... The request for re-establishment of rights shall not be deemed to
have been filed until the prescribed fee has been paid.
(2) The request shall
state the grounds on which it is based and shall set out the facts on which it
relies. The omitted act shall be completed within the relevant period for
filing the request according to paragraph 1.
3.2.1 Rule 136(1) EPC:
two months from removal of the cause of non-compliance
The request was filed,
and the fee paid, on 21 June 2016. According to the representatives'
submissions, the date when the representative learnt of the failure to pay the
appeal fee was the date of receipt of the notice of loss of rights, i.e. 21
April 2016. If that day of receipt was to be considered as having removed the
cause of non-compliance with the period for filing an appeal under Article
106(1) EPC, then the request for re-establishment of rights would have been
filed within the prescribed two-month period, and also within one year of
expiry of the appeal time limit of 4 January 2016. The requirements of Rule
136(1) EPC would then have been met.
(a) The annex
In the annex (see point
3.3.2, pages 20 to 21) the board however arrived at a different provisional
conclusion. It is set out below in so far as it is still pertinent:
In its decision in T
315/90 (at point 6, affirmed by T 1465/08, point 2.1), the board held that the date
of the removal was the date at which the appellants should have discovered the
committed error if they had taken all due care, due care being a permanent
obligation. In that case, the date of removal was not necessarily the date of
receipt of the communication notifying a loss of rights. More generally,
holding that due care was an obligation extending over the whole of the
proceedings, the case law of the boards of appeal recognises that the cause of
non-compliance may be removed already at the point in time when a
representative taking all due care would have become aware that the time limit
had been missed, even though in reality he or she had become aware thereof at a
later stage only (cf. T 1561/05, point 2.1.3, and the cases cited there; see
also T 1486/11).
In the present case, the
representative was unable to observe the deadline for paying the appeal fee,
which expired on 4 January 2016. As set out above [see text portion quoted
under point 3.1.2], non-compliance with that period was the consequence of the
fact that he did not realise from his reading of the "document
acknowledgment of receipt" as received from the EPO and his firm's
invoice, that receipt of Form 1010 was not acknowledged by the EPO. The
representative has not submitted that, before expiry of the time limit, he had
read Form 1038E filed by his assistant on 24 December 2015 which did not
mention Form 1010 in the table of documents filed.
Applying the due-care
requirement in the present context, a diligent representative, in the board's
view, ought to have
- checked Form 1038E
filed by the formalities officer on 24 December 2015 ...,
- noticed that the EPO
had not confirmed receipt of Form 1010 and, consequently, that, despite the
indication of the payment in the firm's invoice, such payment had not been
made, taking into account that use of Form 1010 was the intended way of payment
(independent of whether or not it was the proper way).
This oversight of the
representative cannot be excused, even if it should have been isolated. Different
from an isolated mistake that an assistant may make, such a mistake is not
excusable in a representative. See R 18/13, at point 19.
As a consequence, the
date when the cause of non-compliance with the time limit for paying the appeal
fee was removed was not the date of receipt of the notice of loss of rights,
i.e. 21 April 2016, but 4 January 2016, when the time limit expired. The date
28 December 2015 on which the representative should have discovered omission of
the payment cannot yet be considered to be the relevant date as it was still
within the time limit for payment. It follows that the request for restoration
filed on 21 June 2016 does not meet the two-month time limit. Since the
corresponding fee was also paid on 21 June 2016, the request is deemed not to
have been filed.
(b) The appellant's
reaction
In its reply to the annex
of 17 November 2017 (page 5, first two paragraphs), the appellant, on the basis
of a reproduction and annotation of parts of the EPO publication "Case Law
of the Boards of Appeal of the EPO" (Case Law) (III.E.4.1.1a, first three
paragraphs), objected to the board's provisional view. While acknowledging that
the date of removal was not necessarily the date of receipt of the
communication notifying a loss of rights, the appellant insisted that under
several decisions by the boards cited there "the time period for
reestablishment only started to run from a date where somebody noticed that
something was amiss" (see second paragraph in fine). In the oral
proceedings of 19 December 2017 the appellant clarified its view by citing the
two further cases, T 1486/11 and T 315/90.
In T 1486/11 the appeal
fee had been paid out of time, i.e. together with the filing of the grounds of
appeal. The board considered that the date of late payment had triggered the
two-month time limit for the request for re-establishment, not the day on which
the representative had personally taken note of the loss-of-rights
communication or the date when the communication had arrived at his office,
i.e. more than two months later. The board reasoned: "Had all due care
been exercised, this payment could not have been made without its belatedness
being noticed" (see point 1.6 in fine). Similarly, according to the
appellant, in T 315/90, there had been positive proof that something was wrong.
The attorney signed "the statement of grounds prepared by his external
collaborator without consulting the file, which would have enabled him to
notice that the time limit for filing this statement had not been observed"
(see point 9).
In the present case,
however, the problem related to the assistant carrying out the representative's
instructions and the representative detecting mistakes made by the assistant in
carrying out these instructions. Clear evidence was needed to show that
somebody had been aware that something was amiss with Form 1010. However,
nobody was aware that anything was wrong until April 2016 (i.e. when the
loss-of-rights communication was received); the representative had failed to
see that Form 1010 was not mentioned in the EPO's acknowledgement of receipt.
In addition, arguing that
on 28 December 2015 the representative could have and should have seen it would
create a perverse incentive: had the representative not looked at the
acknowledgement of receipt, then there would have been no problem. This could
not be the intention of the Convention; rather, it would be contrary to its
spirit.
(c) The board's position
The board considers the
essential criterion relied on by the appellant in this context to be irrelevant,
i.e. whether in all the cases cited "the time period for re-establishment
only started to run from a date when somebody noticed that something was
amiss". The reason is that, in the board's understanding, the case law is
based on the general principle that due care is a permanent obligation (see the
extract from the annex at point 3.2.1(a) above). That is why, according to the
established case law, the date of the removal is supposed to be the date at
which the appellant's representative should
have discovered the committed error if he had taken all due care, and not a
later date when he did in fact detect the error.
For different reasons,
however, the board does accept the appellant's view that the date when the
representative did in fact learn of the omitted time limit for paying the
appeal fee, i.e. the date of receipt on 21 April 2016 of the loss-of-rights
communication, is decisive. This is because the board has doubts as to the
soundness of the above way of applying the "permanent-obligation" principle
in the case law to the removal of the cause of non-compliance with a period.
Due care may be a
permanent obligation for a party and its representative.
But, first, the letter of
the law, i.e. Article 122(1) and Rule 136(1) EPC (formerly combined in Article
122(1) EPC 1973), does not suggest that "due care" mentioned in the
former provision only should be an unwritten further criterion of the latter.
Second, as to the view of
a perverse incentive (see point 3.2.1(b) in
fine) in the sense that had the representative not looked at the EPO's
receipt, then there would have been no problem, shows that mingling "due
care" with "removal" would entail the need for applying the case
law on "due care" to the "removal" criterion. In the
present case it would need to be examined whether there was a need for a second
person to check compliance and if so, whether in the case of an assistant as
second person an error could be excused, but not if the second person was a
representative.
Third, if "due
care" is applied in determining the date of the removal, because it is a
"permanent obligation", the question would arise as to why "due
care" should not also be assessed in determining whether or not there was
an inability to observe a time limit. This would run counter to the passage
from T 413/91 (point 4) reading: "Only when such a fact made the party
unable to observe the time limit would the circumstances of the case be
examined as to the second condition 'in spite of all due care'." Applying
the due-care criterion in this context would however even be in line with an
unbiased reading of Article 122(1) EPC according to which "an applicant
... who, in spite of all due care ... having been taken, was unable to observe
a time limit ...". In the present case, for example, one might well argue
that, despite his unawareness of the error of not having submitted Form 1010
(see above, point 3.1.2), the representative was not unable to observe the time
limit for paying the appeal fee. It might be reasoned that due care would have
required that, on 28 December 2015, he had recognised that Form 1010 had not
been sent and, given that the time limit for payment only expired on 4 January
2016, he was not unable to pay. As a consequence, re-establishment of rights
would not be an applicable remedy in the present case.
The above shows that the
current practice of applying the due-care requirement in the context of removal
of the cause of non-compliance with a period within the meaning of Rule 136(1)
EPC, may well be seen as extending the meaning of the due-care requirement in a
way that enlarges the scope of the essentially substantive criterion by adding
to it the function of an extraordinary preliminary admissibility/ applicability
hurdle. This approach to the "removal" criterion, which cannot be
based on the letter of the law, is therefore doubtful.
In the present case the
board leaves the question as to the approach to be followed open due to the
following considerations.
In general, the reason
why an omission should have been discovered before receipt of the
loss-of-rights communication, removing the cause of non-compliance with the
period, is different from the reason why the omission to comply with the period
could or could not have been avoided. Examples are provided by the cases discussed
above: in T 1486/11 the belatedness of the fee payment should have been noticed
upon payment of the fee together with the filing of the grounds of appeal, and
not more than two months later upon receipt of the Rule 112(1) communication.
Similarly, in T 315/90 the attorney should have noticed the error upon signing
the statement of grounds had he consulted the file. In both cases the lack of
due care led the board to find the removal to run from the respective dates,
and in both cases the lack of due care in noticing the omission was different
from the due-care issue surrounding the missing of the respective underlying
time limit, i.e. belated fee payment and belated filing of the notice of appeal
respectively.
In the present case,
however, the due care to be exercised according to the case law in connection
with the "removal" criterion is identical with one due-care aspect
underlying the missed time limit, i.e. the payment of the appeal fee. For the
question is whether the representative should have detected the non-filing of
Form 1010 before expiry of the time limit for payment of the appeal fee: if he
should have discovered it, then the re-establishment time limit would start
(deferred to the end of the period for filing the notice of appeal, i.e. from
28 December 2015 to 4 January 2016) and, for the same reason, in the subsequent
substantive analysis, due care in complying with the time limit would also have
to be denied.
The board leaves the
question open because the outcome may differ in only one respect: if the
removal took place on 4 January, then the request for re-establishment may be
deemed not to have been filed triggering the reimbursement of the
re-establishment fee. In the analogous situation of the fee for petition for
review paid outside the period under Article 112a(4), third sentence, EPC, the
Enlarged Board decided that the petition for review was deemed not to have been
filed and, in the absence of a legal basis for paying the fee involved, ordered
its reimbursement (see R 4/15). Conversely, if the request for re-establishment
is considered to have been filed in good time, then it will have to be rejected
on its merits (subject to compliance with the other admissibility
requirements), and the re-establishment fee will not be reimbursed. The
appellant having expressly preferred the latter approach (see point VIII above)
cannot be disadvantaged if the board follows it and, in that case, the fee is
not reimbursed.
3.2.2 Rule 136(2) EPC
The request of 21 June
2016 stated the grounds and facts for re-establishment and was accompanied by
evidence. The omitted act, i.e. the payment of the appeal fee had already been
completed on 2 May 2016 and made again, together with the filing of the request
for re-establishment.
3.2.3 Conclusion
In the light of the
foregoing, the request for re-establishment of rights is admissible.
3.3 Whether the request
for re-establishment is allowable
Pursuant to Article
122(1) EPC, the request will be allowed if the applicant and its
representative, in spite of all due care required by the circumstances having
been taken, were unable to observe the appeal time limit.
3.3.1 The principles
enunciated in the case law
(In general, see Case
Law, III.E.5.)
For cases where the cause
of non-compliance with a time limit involves some error in the carrying out of
the party's intention to comply with the time limit, the case law has
established the criterion that due care is considered to have been taken if
non-compliance with the time limit results either from exceptional circumstances
or from an isolated mistake within a normally satisfactory monitoring system
(Case Law, III.E.5.2).
It is well established
that a professional representative may entrust routine tasks such as noting
time limits to an assistant, provided that (i) a suitable person is chosen for
that purpose, (ii) he or she is given proper instructions and (iii) the
representative exercises reasonable supervision over the work of the assistant
(see T 2336/10, Reasons 15, quoting from J 5/80, OJ EPO 1981, 343, paragraph
7).
An isolated mistake by an
assistant that happens in a normally satisfactory system is excusable. The
appellant or his representative must plausibly show that a normally effective
system for monitoring time limits prescribed by the EPC was established at the
relevant time in the office in question (Case Law, III.E.5.4, first paragraph).
In a large firm where a
large number of dates have to be monitored at any given time, it is normally to
be expected that at least one effective cross-check is built into the system.
The cross-check must be independent of the person responsible for monitoring
time limits (Case Law, III.E.5.4.4, first paragraph).
As to the processing of
outbound mail, due care will be considered to have been taken if non-compliance
with the time limit results from an isolated mistake (by an assistant) within a
normally satisfactory system of processing outbound mail. Irrespective of
whether or not a large firm is concerned, the duty of at least one effective
cross-check built into that system is dispensed with in this situation. The
reason is that, different from the monitoring of time limits, the risk of an
error in the processing of outbound mail is low because such processing
generally involves the execution of straightforward steps (see T 836/09, point
5.2, third paragraph).
Different from an
isolated mistake made by an assistant, a mistake made by a representative,
whether isolated or not, is not excusable. See R 18/13, point 19.
3.3.2 Applying the
case-law principles to the case at hand
(a) Clear instructions
required
The board considers, in
line with previous case law, that "filing an admissible appeal is not a routine task, but rather a
complicated task which needs clear instructions from the professional
representative to his assistant." See T 1764/08, point 18 (emphasis
added).
In the present case this
means that the representative would have had to instruct the assistant to not
only file the letter constituting the notice of appeal, which the
representative created and forwarded to her. The representative would also have
had to instruct her, expressly and clearly, and in addition to the forwarding
of the notice of appeal, to pay the appeal fee.
In the oral proceedings,
a representative of the appellant commented on the impact of the line in the
letter, "The appeal fee is paid via the enclosed EPO form 1010". He
stated that this was a sufficient instruction to the assistant who was supposed
to read the letter and take the steps required by its contents.
The board disagrees holding
that it is not enough to rely on the assistant's deducing the duty to file the
payment form from the contents of the letter.
While the steps for
paying the appeal fee in the appropriate manner may be considered to be a
routine task (comparable in complexity to, for instance, generating a standard
notice of appeal to be completed by the representative), it would have been the
responsibility of the representative to give express and clear instructions to
the effect that the appeal fee had to be paid.
Failure to give such
instructions constitutes in itself a lack of due care on the part of the
representative; such lack of due care is attributed to the applicant.
(b) Not checking the
receipt an "isolated mistake"?
It is therefore only for
the sake of completeness that the board also addresses the due-care issue
already referred to in the context of removal of the cause of non-compliance
with the time limit for paying the appeal fee. The situation to be assessed is
the following: the assistant failed to pay the appeal fee by filing Form 1010
together with the notice of appeal on 24 December 2015, and the representative
failed to recognise this omission upon checking the EPO's acknowledgement of
receipt of filed documents on 28 December 2015.
- Comparison with the
confusion of the outbox
In the oral proceedings
the appellant's representatives advanced the argument that this situation was
comparable to the one underlying case T 836/09 where the assistant who had put
a document in the wrong outbox of the patent law firm (German Patent and
Trademark Office (DPMA) instead of EPO) was excused.
This argument cannot be
accepted. First, putting a document in an outbox is a straightforward routine
task on the lowest level requiring very little thought. Conversely, while paying
the appeal fee may also be a routine task, it is placed on a higher level as it
requires training on the formal rules of payment and complying with those
rules. Second, it was agreed between the representative and his assistant that
the former would check the latter's work in the period between Christmas and
New Year, given the latter's heavy workload on 24 December 2015. From this very
fact it must be deduced that the representative in charge himself did not liken
the task of filing an appeal, including paying the appeal fee, to putting a
letter into an outbox either.
- Excusable mistake in
the framework of a co-operation agreement?
At the outset it should
be noted that the need for a double-check of the assistant's work by the
representative in the special circumstances described above arose from their
agreement. It is therefore immaterial that, in the absence of such special
circumstances, a double-check, unlike in the case of monitoring time limits,
might not have been required by the EPO's case law (cf. T 1355/09, point 1).
And, due alone to this
need-inspired agreement, the alleged perverse incentive for a representative
not to be involved in checking acknowledgements of receipt in order to avoid
making per se inexcusable mistakes (see under "removal" above,
3.2.1(b) in fine, third paragraph) is obviously beside the point.
In the framework of
giving effect to the above agreement, the representative did make a mistake,
and this mistake cannot be excused. Different from an isolated mistake made by
an assistant, a mistake made by a representative, whether isolated or not, is
not excusable. See R 18/13, point 19. The Enlarged Board of Appeal, in that
decision, based its finding on the legislative history of the EPC (see the
discussion at point 21).
In this context it must
be stressed that the point raised in the oral proceedings that the attorney
doing the check thought more of the substantive part (than of formalities such
as payment) is of no assistance to the representative who did not spot that Form
1010 was missing. On the contrary, the representative having agreed to check
the assistant's work had to check it thoroughly. It is contradictory to claim
on the one hand there was a perverse incentive not to check the acknowledgement
of receipt if the representative "replacing" an assistant was held to
a strict standard of responsibility, and at the same time ask for understanding
of the fact that he was more occupied with substance than with formalities, the
latter being the "replaced" assistant's task. Furthermore, the
representative, being supposed to instruct assistants in their tasks, is not
only supposed to know these tasks, but also to attribute them the proper
importance when "replacing" an assistant.
For the sake of
completeness, it should be added that it is immaterial for the above analysis
that the representative checked the invoice to the client and spotted an item
relating to the appeal fee (see point V, second to last paragraph). This
invoice can obviously not prove payment having been made to the EPO.
4. Overall result
The appellant, through
its representatives, did not pay the appeal fee within the appeal time limit,
and the request for re-establishment of its right to pay the appeal fee within
the prescribed time limit is admissible but not well founded. As payment of the
appeal fee was received on 2 May 2016 and again, together with the request for
re-establishment, on 21 June 2016, i.e. outside of the appeal time limit of 4
January 2016, the notice of appeal, which is deemed to have been filed on the
payment date as well (Article 108, second sentence, EPC), was also filed out of
time. As a consequence, the board considers that the appeal is deemed not to
have been filed.
Order
For these reasons it is decided that:
1. The request to issue a
communication under Rule 112(2) EPC stating that the appeal fee has been paid
in time is refused.
2. The request for
referral to the Enlarged Board of Appeal is refused.
3. The request for
re-establishment of rights is refused.
4. The appeal is deemed not
to have been filed.
5. The appeal fee is
reimbursed.
With the current ADA (Supplement 5 to OJ 2017), no paper debit orders are allowed at all anymore. Wonder to how many lost appeals that will lead...
ReplyDeleteIndeed. From the latest of the ADA (https://www.epo.org/law-practice/legal-texts/official-journal/2017/etc/se5/2017-se5.pdf): "Debit orders submitted in any other way (e.g. using EPO Form 1010 or any other form of written submission; see also point I.1.4) or using a different format (e.g. Form 1010 filed in PDF via CMS, web-form filing, online filing or ePCT) are invalid and will not be carried out. The EPO will inform the party to the proceedings accordingly, as a courtesy service (see point 5.1.3 ADA)."
ReplyDelete