Friday, August 17, 2018 J 0016/17 A rose with no name does not smell as sweet

The appeal in this case was directed to a decision to refuse  a request for re-establishment of the missed period for paying a renewal fee with surcharge. While studying the facts of the case, the Board noted that the impugned decision did not state the name of the EPO employee responsible, but merely bore the seal of the "Examining Division". Although this deficiency was not raised by the appellant, the Board examined the facts of its own motion, because it deemed that inalienable rights constituting an embodiment of the rule of law are concerned.

Rule 113(1) EPC requires that communications from the EPO shall be signed by and state the name of the responsible employee. The signature may be replaced with a seal if the document has been produced using a computer and, if it has been automatically produced, R. 113(2) further defines that the employee's name need not be present. Since a decision to refuse a request for re-establishment must be a reasoned decision, it cannot be an "automatically produced" document. The Board held that the presence of the employee's name is an essential step in the decision-taking process and that the deficiency in this case constituted a substantial procedural violation. 

The procedural violation had no bearing on the substance of the decision, which concerned the inadmissibility of the request for re-establishment, and so to avoid further delays in proceedings, the Board took its own decision on the merits of the appeal. The decision to refuse re-establishment of rights was upheld on the basis that the appellant did not complete the omitted act (payment of renewal fee and surcharge) within 2 months' of removal of the cause of non-compliance.

Friday, March 30, 2018 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."

Tuesday, October 27, 2015 T 0970/12 - Yet another grant of re-establishment of right

This is another example where the Board of Appeal granted re-establishment of rights. Under very extraordinary circumstances and a combination of the Christmas and New years holidays, a sudden death of a close relative of the representative and the presence in the office of a trainee that did not know the correct procedures, the date for filing the Notice of Appeal was missed. The Board did not make much fuss and granted the re-establishment of rights.

Summary of Facts and Submissions

I. The present appeal lies from a decision of the examining division refusing European patent application No. 09166600.8, published as EP 2111855, under Article 97(2) EPC. The application was filed as a divisional application of European patent application No. 07007272.3, published as EP 1847256 (parent application).

Friday, October 23, 2015 T 1171/13: the assistant forgot to fax the statement of grounds of appeal

The Appellant (opponent) filed a request for re-establishment of rights because the assistant of the appellant's representative forgot to fax the statement of grounds of appeal on time while the representative had his holidays. The respondent (patent proprietor) argued that the system of the representative lacks cross-checks and, thus, that the system is not sufficient for showing all due care. The deadline/reminder for submitting the statement of the grounds of appeal was deleted after the representative indicated in the system that he had completed his tasks. The Board is of the opinion that, based on case law, the existing of such cross-checks is not relevant when the error only concerns forgetting to submit the statement to the EPO on time while the statement was ready on time. It seems that the system of registering deadlines and generating reminders is necessary to remind the representative to perform his task on time. On the contrary, it seems not to be necessary to use such a system for reminding the assistant to perform her task on time when it concerns an isolated mistake in a normally well-functioning system and when the assistant is well-trained, experienced, thoroughly component and well-instructed how to handle the letter drafted by the representative. I think that, for example, the Dutch Patent Office will require in such a case that the assistant also uses the system of generating reminders for submitting the letter on time.

Tuesday, January 20, 2015 T 997/10 - US attorneys in charge

European application 92908098 by Echelon Corporation was refused on 15 October 2009 in oral proceedings, and the written reasons were dispatched to the applicant on 6 November 2009.

Under the EPC, the time limit for filing an appeal expired on 18 January 2010 (16 January being a Saturday), and the time limit for filing the grounds of appeal expired on 16 March 2010.

On 29 March 2010, the applicant filed the notice of appeal and the grounds of appeal, together with a request for establishment of rights, while paying the required fees. 

In the case at issue, the case management was essentially handled by a U.S. firm of patent attorneys, while the European representative acted on instructions from the U.S. firm rather than directly from the patentee. This included the handling of time limits. As this case shows, unfamiliarity with computing time limits under the EPC is likely to be detrimental to demonstrating all due care.

Reasons for the Decision
 
1. Re-establishment of rights is foreseen in cases where missing a time limit would lead to a loss of rights (Art. 122 EPC). The request for re-establishment must be made within two months "of the removal of the cause of non-compliance", Rule 136(1) EPC, state the grounds on which it is based, and complete the omitted act, Rule 136(2) EPC. In the present case, the applicant has complied with all of the above. According to the appellant's submissions, the error was discovered on 28 January, and on 29 March (28 March being a Sunday), a reasoned request for re-establishment including a notice and grounds of appeal was filed, and the corresponding fees were paid.

2. The request for re-establishment of rights can only be granted if "all due care required under the circumstances" has been taken. According to decision J 3/88, once the files are effectively handled by someone other than the authorised representative, as is the case here, it is this person who is required to have taken all due care, including an appropriate selection and supervision of his assistant:

"3. As regards the requirement of "all due care" within the meaning of Article 122(1) EPC, the US patent attorney must be regarded as the agent of the Appellant. Thus, in order to comply with this requirement, it has to be established that the US patent attorney has taken the due care required of an applicant for or proprietor of a European patent by Article 122(1) EPC (cf. J 05/80; OJ EPO 1981, 343). This means among other things that, in case of culpable errors committed by the US patent attorney's assistants, the Appellant may only benefit from the provisions of Article 122 EPC if he is able to prove that these assistants were carefully selected and properly instructed in the tasks to be performed, and that a reasonable supervision of their activity has been exercised (cf. J 05/80, above)."

3. In the further submission of 8 November 2010, the Board was told that both of Mr Nicholson's assistants were certified paralegals in California, and have worked at the firm of Blakely, Sokoloff, Taylor and Zafman LLP for several years. The Board has not been told who these assistants actually were, or how and whether they have been continuously supervised.

4. An important issue for the Appellant's case of re-establishment of rights is the "fail-safe" system as described by Mr Nicholson. In effect, these are the docketing programme that gives out a soft deadline, and the assistant him or herself who writes the deadline on the file, alerts the attorney to the deadline and partakes in weekly docket meetings in which upcoming cases are discussed. In the case at issue, the assistant failed to perform his or her duties due to an illness in the week of 6 January 2010. The date of 6 January 2010 had found its way to the docketing programme as an alleged "soft" deadline and was ignored.

5. When looking at the facts of the case, the Board first of all has difficulties in identifying a proper fail-safe system that requires effective cross-checks. Decision J 9/86 dealt with a similar case where there was an inconsistency between data in the computer file and data in the manual entries. The Board in this case held as follows (point 9, paragraphs 3 to 6 of the Reasons):

"The Statement of Grounds sets out in detail the system used in the representative's office for recording a time limit in a manual diary, a computer file, and in the representative's personal reminder system. However, in spite of the existence of such a seemingly comprehensive entry and checking system, it appears that the failure to observe the time limit was caused primarily by a failure to enter the time limit in the computer file. The lack of data in the computer file for this case was then later accepted as correct, in preference to the manual diary entry of the time limit, which was therefore deleted.

Thus the system in the representative's office which was supposed to ensure that payments to the EPO were made in due time did not include any effective cross-check. A simple failure by one person to make an entry of the time limit into the computer file resulted in non-payment of the fees and failure to file translations of the claims within the time limit specified.

The question whether a particular system used in a particular office to ensure that acts such as the payment of fees are completed in due time satisfies the requirements of "all due care" in Article 122 EPC must depend upon the individual circumstances of each case. However, 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. For a cross-check to be effective, it is clearly essential that if the cross-check shows in a particular case an inconsistency between the data being checked and the data which is being used to cross-check, an investigation must then be carried out to ascertain which data is correct.

In the present case, although there was inconsistency between the data in the computer file and the data in the manual entry diary, it appears that the reason for the inconsistency was not investigated. Furthermore, it has not been established that the person who carried out the cross-check was under a duty to investigate an inconsistency in such circumstances. Therefore, on the information at present before the Board, the system in use in the representative's office could be open to criticism."

6. The Board regards it of particular importance in the case at issue that nowhere in Mr Nicholson's statement can the actual time limit for filing an appeal be found. As the decision under appeal dates from 6 November 2009, the time limit for filing the notice of appeal would have been 18 January taking into account the ten day rule of postal delivery (Rule 126(2) EPC) and the fact that 16 January was a Saturday (Rule 134(1) EPC). From Mr Nicholson's statement (and, curiously enough, also from Mr. Wombwell's letter of 29 March 2010 requesting re-establishment of rights), it would seem that 6 January 2010 was thought to be the time limit for filing an appeal, and that Mr Nicholson was (wrongly) told by an assistant "that 16 January 2010 or 6 February 2010 was the deadline for filing the appeal". The vagueness of this statement would already have been a good reason for further inquiries. Mr. Nicholson further mentions that an internal "soft" deadline was assumed to have been set for a date two weeks before the actual "hard" deadline". But neither is 6 January two weeks prior to 16 January, nor is 16 January two weeks prior to 6 February. In respect of the latter two dates, Mr. Nicholson states that "16 January 2010 was approximately two weeks prior to 6 February, [and] we assumed that 16 January was a "soft" deadline and that 6 February was the "hard" deadline". - Again, this statement is rather vague. 6 February was actually three weeks after 16 January. Further, it was a Saturday, and according to Rule 134(1) EPC, no "hard" deadlines fall on days when the Office is closed.

7. According to Mr Nicholson, 6 January 2010 was the due date for filing the notice of appeal. This, first of all, was an incorrect calculation. Next, and admitted by Mr. Nicholson, a mistake was made in noting the date to indicate 16 January as the "hard" deadline. In such case, the computer should presumably have given an alert two weeks prior to this date, and it is not clear from the facts why this was not the case. If, on the other hand, 6 January was the alert for a soft deadline, it is not entirely clear why this was ignored. Further, had Mr. Nicholson taken a look at the case on the alleged "soft" deadline of 16 January, he could still have managed to instruct Mr. Wombwell to file a notice of appeal on 18 January, which was the actual time limit. Finally, no explanation has been given how the date of 6 February 2010 was calculated. The note for this date presumably should have concerned the "grounds of appeal", and not the notice of appeal, giving further credence to the impression that the persons in charge of the file were unfamiliar with procedures and time limits before the EPO, since the actual "hard" deadline for filing the grounds of appeal would have been 16 March, one month and ten days later than the deadline noted. In sum, on the evidence presented, the Board is not convinced that "all due care" was given to calculating and meeting the time limit for filing a notice of appeal.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision has European Case Law Identifier ECLI:EP:BA:2010:T099710.20101207. The whole decision can be found here. The file wrapper can be found here. Photo from freedigitalphotos.net.

Tuesday, July 08, 2014 J 5/13: The database contained an outdated address

This appeal decision relates to re-establishment of rights in a case in which the 5th renewal fee was not paid. 

In short, the circumstances of the case are: An European Patent Attorney monitored on behalf of his client the deadlines for the payment of the renewal fees and he had the task to remind his client when a renewal fee was due. The EP attorney used regular mail to remind his client. Three "normal" reminders were sent to a business address stored in his database. When a fourth reminder was sent by registered mail to the same business address, the letter returned and the EP attorney discovered that the business address was probably outdated. Subsequently he used another address (private address of contact person) stored in the database to send a fifth reminder by registered mail. No response was received to the fifth reminder which resulted in the non-payment of the renewal fee. Later, when the loss of rights communication was received by the EP attorney, the private address of the contact person was used again to inform the client of the loss of rights - that time the letter was received by the client. It seems that the fifth reminder was lost somewhere in the postal system. The EP attorney received about a year earlier additional contact details of the client (e.g. an e-mail address and a phone number) but this data was stored in the database and was not used by the EP attorney.

The receiving section concluded that the EP attorney had not exercized all due care.


Citations from the decision:


[...]

Reasons for the Decision

[...]

3. Allowability of the request for re-establishment of rights

[...]

3.2 Regarding the appellant's responsibility, the board shares the opinion of the Receiving Section that the appellant, i.e. Mr Goldberg as the responsible person within the appellant's company, has exercised all due care.

3.2.1 According to the established case law of the boards of appeal, it has to be taken into consideration whether or not the applicant is familiar with the requirements of the EPC or is in possession of an established office organisation attuned to ensuring that procedural deadlines are met (cf. J 5/94 of 28 September 1994, Reasons 3.1; J 1/07 of 25 July 2007, Reasons 4.2).

3.2.2 As the Receiving Section correctly pointed out, Mr Goldberg had no such office organisation, he relied upon his US attorneys and - after they had resigned from representation - upon his European representative.
Mr Goldberg had no reason to doubt that the European representative had his necessary contact details. Additionally, he had provided his European representative with his name, his office telephone number, fax and cell phone numbers and his business email address. Particularly with regard to the renewal fee for the fifth year, which is the subject of this appeal, he could expect that his European representative would contact him by using the same communication means as he had in respect of the renewal fee for the fourth year. To put it another way, because of the experience of the year before, Mr Goldberg had no reason to believe that his representative would fail to contact him by using an outdated address.

3.2.3 Thus, based on the circumstances as they were at that time before the expiration of the time limit for payment of the renewal fee for the fifth year, the appellant exercised all due care to observe this time limit.

3.3 Regarding the European representative's responsibility, the board concludes that the representative too exercised all due care to meet the missed time limit.

3.3.1 If an applicant is represented by a professional representative, a request for re-establishment cannot be acceded to unless the representative himself can show that he has taken the due care required of an applicant or proprietor by Article 122(1) EPC (cf. J 5/80 of 7 July 1981, OJ EPO 1981, 343, Headnote I). The applicant has to accept the actions of his representative, including the actions of the attorney's assistants and employees, on his behalf (J 5/80, loc. cit., 346; J 1/07 of 25 July 2007, Reasons 4.3).

3.3.2 However, the extent of the duties of the representative depends on the agreement between the representative and his client. An appointed representative whose authorisation is silent concerning the payment of the renewal fees and who has not received any funds for this purpose is not expected to pay the fee by advancing money on behalf of the applicant out of his own pocket (J 16/93 of June 1995, Reasons 4.3.3; J 19/04 of 14 July 2005, Reasons 10; J 1/07 of 25 July 2007, Reasons 4.4).
Instead, he retains only a "secondary responsibility" (cf. J 1/07 loc. cit.) to advise the applicant properly either if the applicant addresses him or if he becomes aware of any problem that might affect the applicant's position in respect of the patent application. Thus his responsibility, above all, consists in finding out what his client really intends to do with respect to payment of the renewal fees (cf. J 16/93 loc. cit.). Since he remains responsible in the procedure before the EPO and thus has to take the necessary steps to ensure payment, this includes a reliable monitoring system and sufficient reminders to the applicant (J 11/06 of 18 April 2007, Reasons 8; J 1/07 of 25 July 2007, Reasons 4.3).
Accordingly, the scope of duties of a representative who retains only such a "secondary responsibility" to inform and advise his client with respect to the due date for renewal fees cannot be the same as it would be if he were responsible for the payment itself.

3.3.3 Without error of law, the Receiving Section found that the "PT-204-Annuités" system was in line with the requirements the EPC imposes on the due care of a representative not in charge of the payment of renewal fees. The board also agrees with the finding that the European representative applied this system correctly by sending the first three reminders dated 12 June, 9 September and 8 October 2008 by regular mail to the Silver Lane address.
Nor can there be any objection to the fact that the European representative sent the first three reminders by regular mail to the Silver Lane address. From the European representative's point of view, the Silver Lane address was still valid because this was the address which he had received from the US representatives when he was appointed in March 2006 and which was confirmed two years later when the US law firm informed him that it no longer represented the appellant.
The appellant convincingly argued in the hearing before the board that in 2008 the use of regular mail had been standard practice in the European representative's office. Emails or other means of sending letters (i.e. fax) had been used only at the explicit request of the client. Since no such request had been submitted by the appellant and because - up to the return of the fourth reminder - the European representative had no indication that there could be something wrong with the Silver Lane address, there was no reason not to use regular mail and the Silver Lane address.

3.3.4 The additionally sent fourth reminder, now issued by registered mail and once again addressed to the Silver Lane address, already went beyond the standard procedure laid down in the guidelines ("PT-204-Annuités") used in the representative's law firm. However, because of the special circumstances of the case - i.e. the fact that the fourth reminder was returned - at that point in time the European representative had some reason to assume that the first three reminders, sent to the same address, might have failed to reach the addressee, and accordingly was obliged to try another route to contact the client.

3.3.5 In this situation the crucial question is whether or not the European representative exercised all due care by sending the last (fifth) reminder to the private postal address of Mr Goldberg.
The Receiving Section was right to assume that the use of Mr Goldberg's business email address was a suitable way to get in contact with the appellant because Mr Goldberg himself had used this address in order to communicate with the European representative with respect to payment of the fourth renewal fee only a few months before. On the other hand it has to be taken into account that - according to the credible pleading of the appellant - in the bureau of the European representative, in 2008 the sending of emails had not been a regular means of communication, so that email addresses were not stored in his database. Furthermore, the European representative - at the time when he sent the fifth reminder - had no reason to believe that the postal address of Mr Goldberg - which was stored in his database and which actually worked a short time later when the European representative informed his client about the loss of rights - could be wrong.
Thus, with respect to the scope of the mandate of the European representative, which amounted to nothing more than monitoring the time limit and informing his client of the impending loss of rights, the board considers it to be sufficient that he relied on the postal addresses stored in his database instead of checking his file for any other contact details.
In this context, it has to be observed that monitoring the due date for renewal fees and duly informing the applicant is a mass business which nowadays can be - and in practice is - most reliably performed on a computerised basis. In a situation where the representative is not responsible for paying renewal fees and thus only has a secondary responsibility, he can perform this task on the basis of the database entries, unless special circumstances require additional measures. In the present case, special circumstances required the sending of an additional reminder. However, the circumstances did not require the file to be checked for other contact details, because the database contained an additional postal address under which the applicant could be contacted. The fact that the fifth reminder apparently got lost by mail cannot be blamed on the representative. As has been shown, the Stanley Drive address worked, since the loss-of-rights communication sent there was received by the appellant.
For that reason the board concludes that the European representative exercised all due care by relying on the address data stored in his electronic database.

3.4 Finally the board cannot find that the appellant's US representative, who was not in charge of payment of the renewal fee either, failed to exercise all due care. Although - according to Mr Goldberg's statement in his affidavit dated 12 April 2012 - the appellant vacated the Silver Lane address around June 2007 and despite the fact that the US representative still mentioned the Silver Lane address in his letter sent to his European colleagues informing them of his resignation from representation of the appellant in March 2008, the board has no cause to assume that the US representative had knowledge of the relocation of the appellant and thus gave incorrect information to his European colleagues.
Thus the board has no reason to assume that the US representative did not exercise all due care required by the circumstances.

4. Thus, the appellant's request for re-establishment is allowable. Accordingly, the appellant's auxiliary requests for remittal to the department of first instance and referral to the Enlarged Board of Appeal are redundant.


This decision has European Case Law Identifier: : ECLI:EP:BA:2014:J000513.20140117. The whole decision can be found here. The file wrapper can be found here.
Photo by Eirik Stavelin obtained from Flickr.