The representative did not respond to an invitation to correct errors under R.58 and argues not having received the invitation, having been on holiday and an unauthorized person having collected the letter. The Board comments on that the way of collecting letters was prone to errors, but does not pursue that line. The Board goes for the standard line of reasoning, since the EPO cannot prove that the letter was received by the right person, the letter was not notified.
Summary of Facts
and Submissions
I. European patent application
XXXXXXXX.X was filed on 19 December 2012. On 4 March 2013 the Receiving Section
issued a communication pursuant to Rule 58 EPC in which a period of two months
for correcting certain deficiencies was set. This communication was sent by
registered letter. On 15 November 2013 a decision refusing the European patent
application pursuant to Article 90(5) EPC was issued by the Receiving Section,
the applicant not having corrected the deficiencies within the set time limit.
II. By letter of 22 November 2013, the applicant's representative submitted that
she had not received the communication dated 4 March 2013 and asked for the
sending of a copy of the communication in order to be able to reply, to
file an appeal and to lodge a complaint with the postal authorities.
III. Notice of appeal was filed on 4
December 2013. The appeal fee was paid on the same day. The appellant requested
that the decision of 15 November 2013 refusing the application be set aside. A
response to the communication of 4 March 2013 was submitted in a letter filed
on the same day.
IV. With
the notice of appeal the appellant also submitted the grounds of appeal. The
appellant reiterated that the communication of 4 March 2013 had not been handed
over by the postal authorities to the representative, who was the only person
authorised to receive the letter. Moreover, the letter could not have been
received by the representative since she had been away from her place of
residence from the period of 10 March 2013 to 21 March 2013. The representative
had only become aware of the letter of 4 March 2013 after having received the
decision of 15 November 2013. The representative had then started a search. The
certified letter had been collected from the Post Office on 15 March 2013 by Ms
M, a person authorised by the representative to collect only her private
correspondence, and the letter had then been left among that person's
correspondence. Ms M did not hand the letter over to the representative until
27 November 2013. Copies of the boarding cards and of the representative's
passport showing the dates of border crossing as well as a declaration by Ms M
were filed as evidence.
V. By letter of 19 January 2014, the
appellant furthermore filed a request for re-establishment of rights and paid
the corresponding fee.
VI. The appellant's arguments can be
summarised as follows:
- The letter dated 4 March 2013 was
handed over by the postal authorities to an unauthorised person. The
appellant's representative could therefore not meet the required deadline.
- Pursuant to the applicable law on mail
delivery in Poland, mail has to be collected in a post office within 14 days
from the date of notification of an advice note. The advice note stamp is dated
11 March 2013, so the final date for mail collection was 25 March 2013. Since
the representative had already returned to her place of residence on 21 March 2013,
she could have personally collected the letter within the period. A copy of the advice note stamp of 11 March
2013 and of the EPO's envelope with a handwritten date of 15 March 2013 and the
polish word "odebrane" (received) written below was enclosed.
VII. By letter of 3 February 2014, the
appellant's representative reiterated her arguments.
VIII. On 8 April 2014 the Registrar of the Legal Board started
enquiries with Deutsche Post about the delivery of the communication of 4 March
2013 and in particular about the authorisation of the recipient. However, no
information could be obtained since the six-month period during which a search
by the Deutsche Post may be initiated had already expired.
IX. On 4 July 2014 the Legal Board
issued a communication asking for further clarification of the facts, evidence
and procedural requests submitted by the appellant.
X. In a reply dated 7 August 2014 the
appellant maintained that the authorisation given to Ms M was limited to the
collection of private correspondence since, not being a patent attorney, Ms M
could not deputise in business matters. A copy of the authorisation given to Ms
M (and its translation into English) was filed. According to this authorisation
Ms M was authorised to receive inter alia "all registered mail, parcels
and orders, including bank orders, except for the postal matters sent by the
Courts of Law, the Police, Prosecutor's Office, Patent Offices, OHIM -
Alicante, WIPO - Geneva as well as State Treasury Office". A further
statement by Ms M ("Explanation concerning the inadequate reception of
correspondence") was submitted.
With a separate letter dated 7 August
2014 the appellant withdrew the request for re-establishment of rights.
Reasons for the
Decision
1. The appeal satisfies the requirements
of Articles 106 to 108 and Rule 99 EPC and is therefore admissible.
2. The main issue raised by the appeal
is that of the proof of receipt of a communication from the European Patent
Office with regard to the requirements specified in Rule 126(2) EPC.
3. According to Rule 126(2) EPC the communication is deemed to have been
delivered to the addressee on the tenth day following its posting, unless the
letter failed to reach the addressee or reached her or him at a later date. In
the event of any dispute, it is incumbent on the European Patent Office to
establish that the letter reached its destination or to establish the date on
which the letter was delivered to the addressee. Thus in a situation where the
representative submits that he has not received a communication, the European
Patent Office bears the burden of proof.
4. In the present case the Receiving
Section's communication in which a period of two months was set for correcting
certain deficiencies bears the date of 4 March 2013. This communication was
sent by registered letter. However, no
evidence of delivery from the postal authorities is available. The Board's
attempt to start a postal investigation by the Deutsche Post failed since the
period on which such a search would have been possible had already expired when
the notice of appeal was filed.
The only evidence on which the Board may rely has been
provided by the appellant. By letter of 19 January 2014, the appellant
submitted a copy of a European Patent Office envelope bearing on one side an advice
note stamp dated 11 March 2013 and on the other side the handwritten date of 15
March 2013 and the word "received" in Polish written below.
The envelope does not indicate to whom it was
delivered, nor was the signature of the person who received the letter
provided. On that basis the appellant did not dispute that the letter has been
handed out on 15 March 2013, but did dispute that the communication had reached
its addressee. In this respect, declarations by Ms M have been submitted
according to which the communication was handed over to her by the postal
authorities on 15 March 2013 and was not transmitted to the representative
until 27 November 2013. Ms M has further acknowledged that the receipt of the
letter exceeded the limits of her authorisation.
5. This evidence supports the
appellant's submissions according to which the letter was received on 15 March
2013 by a person who was not authorised to collect business mail during her
absence but only private post.
This is in particular confirmed by the
authorisation filed with the letter dated 7 August 2014. Although this
authorisation generally allows the collection of "all registered
mail", it contains an explicit list of several exceptions. These
exceptions comprise the collection of mail items which typically relate to the
business of a professional representative. The collection of letters from
patent offices, such as the communication from the EPO at issue, was
specifically excluded from the authorisation given.
In the Board's opinion the restriction of an
authorisation to collect only some post received at the correspondence address
may increase the risk of errors in the handling of the post. It seems that such an error occurred when Ms M
collected the communication from the EPO. At least it has been made plausible
that the postal authorities erroneously delivered the letter to an unauthorised
person in view of an authorisation which seemed to allow the collection of
"all registered mail".
The appellant also brought evidence as
to the absence of its representative from her place of business from 10 to 21
March 2013, which leads to the conclusion that the representative could not
have received the contested letter before that latter date.
As regards the date at which Ms M
transmitted the letter to the addressee, the European Patent Office can only
rely on the affidavit written by Ms M herself.
6.
In cases where the European Patent Office bears the burden of proof, the
applicant has to be given the benefit of the doubt. If doubts remain about what
really happened, this cannot be to the detriment of the applicant. This applies
all the more in a situation like the present one where the refusal of the
application is the immediate consequence for the applicant (see J 9/05, reasons
7 and 8).
7. Therefore, the Board concludes that it has not been
sufficiently proven that the communication of 4 March 2013 was received by the
representative prior to 27 November 2013. It follows that the decision of 15
November 2013 incorrectly assumed that the appellant had not complied with the
time limit set in the communication. Therefore, the decision has to be set
aside.
8. Reimbursement of the appeal fee has
not been explicitly requested. Nevertheless, as the Board allows the appeal, it
should also consider ex officio whether this fee should be reimbursed under
Rule 103(1)(a) EPC. The issuing of the decision of 15 November 2013 to refuse
the application amounted to a substantial procedural violation, since the
appellant had no opportunity to present its comments before the refusal
decision was issued, which is an objective fact even if the Receiving Section
made no mistake. This violation of the appellant's right to be heard has been
the only cause for the need to file an appeal. Therefore, it is equitable to
reimburse the appeal fee.
9. The request for re-establishment of
rights has been withdrawn. Since the appellant did not fail to observe a time
limit vis-Ã -vis the European Patent Office the appellant did not need to be
re-established in its rights. Therefore, there was no basis for the request for
re-establishment and the fee for re-establishment of rights has to be
reimbursed as well.
Order
For these reasons it is decided that:
1. The decision under appeal is set
aside.
2. The case is remitted to the
department of first instance for further prosecution.
3. The appeal fee and the fee for
re-establishment of rights are to be reimbursed.
This decision has European Case Law Identifier: ECLI:EP:BA:2014:J000314.20140908. The whole decision can be found here. The photo by Alex Grech obtained from flickr.
