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, December 06, 2016 J 7/15 - Re-establishment for outside payment firm

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

Tuesday, December 29, 2015 J 0007/13 - Everything gets more expensive, including divisionals

You can't blame the applicant for trying, but of course the EPO charges the most recent fees for a divisional filing, not the fees that had to be paid at the filing date of the earlier application, as explained in detail by the Legal Board of Appeal in the current case. It is a matter of interpretation because the law lacks an explicit outline that a divisional might encounter higher filing and search fees. Although G 3/98 concerned Art 55 EPC, the Board in this case indicates that it should be viewed in a broader sense than only in relation to Art 55 EPC. Moreover, the filing fees serve the purpose of the filing requirements (submitted documents, etc.), not the substantive prior art issues that relate to the fictitious filing date from the earlier application (or even the priority filing).

Summary of Facts and Submissions

I. European patent application No. 11 004 301.5 was received at the EPO on 25 May 2011. It was filed as a divisional of European patent application No. 03 746 402.1 (the earlier/parent application), which had been filed on 3 April 2003.

II. Together with the application documents, the EPO received Form 1010 listing the fees to be debited in respect of the divisional application from the account of the applicant's representative. The amount of the search fee was given as 800 euro. An accompanying letter contained the explicit instruction that, if any of the amounts indicated in the form were wrong, the right amounts were to be debited from the account.

III. With a communication dated 20 July 2011 the applicant was informed that the correct amount of the search fee payable in the present case was 1105 euro, so that an additional 305 euro would be debited from the representative's account. It was further set a two-month time limit for filing reasoned objections to that finding.

IV. By fax dated 28 July 2011 the applicant did so, arguing that "since the filing date of the present application is 3 April 2003, the correct amount of the European search fee is 800 EURO" and requesting either a refund or an appealable decision.

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.

 
 

Friday, June 06, 2014 T 620/13 - Notice of appeal implicit or inferrable?

Photo by Pete as obtained from Flickr.

The present decision concerns the admissibility of an appeal against the decision of the Opposition Division.

According to R.99(1) EPC, the notice of appeal shall contain:
(a) the name and the address of the appellant (...);
(b) an indication of the decision impugned; and
(c) a request defining the subject of the appeal.

According to R. 101(1) EPC, if the appeal does not comply with (...) Rule 99 1(b) or (c), the Board of Appeal shall reject it as inadmissible, unless any deficiency has been remedied before the relevant period under Article 108 has expired.

R. 101(2) EPC provides a potential fail-safe, in that if the Board of Appeal notes that the appeal does not comply with Rule 99, paragraph 1(a) [emphasis added], it shall communicate this to the appellant and shall invite him to remedy the deficiencies noted within a period to be specified.

In the present case, the appellant attempted to file the notice of appeal using EPO's online filing software, which resulted in an attachment of a Spanish language printout of an online bank transfer order with the handwritten addition: "011 - Fee for appeal E08021319.2" and further the name of the patent proprietor, also legibly handwritten.

The Board rejected the appeal as inadmissible since the requirements of Rule 99(1)(b) and (c) EPC are not met, despite the appellant arguing that the appeal could not be rejected as inadmissible before the appellant was given a chance to correct the deficiencies under Rule 101(2) EPC, and (in a later communication) that the decision impugned had been implicitly identified and that the subject of the appeal could be be implied from the overall intention of the appellant.

Summary of Facts and Submissions

II. The representative of the opponent, now appellant, filed a document by means of the electronic filing facilities of the EPO on 13 February 2013. The transmission of the document resulted in the generation of another document by the EPO's online filing software, entitled "Letter accompanying subsequently filed items" in the electronic file (the "PHOENIX electronic file system") of the EPO and referred to hereafter as the Appeal Letter. Under the heading : "The document(s) listed below is (are) subsequently filed documents pertaining to the following application:" it indicated the application number and the applicant's reference identified in the appropriate boxes followed by a table listing attached files, fee payments and mode of payment as well as identifying any attachments. In the case at hand the attachment was identified as "Notice of Appeal" with the original file name recorded as "INGRESO TRANSFER E08021319.2 APPEAL.pdf", assigned the assigned file name "APPEAL.pdf". The attachment was a document in pdf format which, on the face of it, is a Spanish language printout of an online bank transfer order, for the amount of 1240 EUR, with the following handwritten addition: "011 - Fee for appeal E08021319.2" and further the name of the patent proprietor, also legibly handwritten. The generated Appeal Letter further referred to the appeal fee and its amount, as well as mode of payment by transfer to a Spanish bank account of the EPO. The Appeal Letter further included the name of the representative and his address, and data of the electronic signature of the representative.

The appeal fee was paid with an effective date of 13 February 2013.

III. The Registrar of the Board sent a standard communication (EPO Form 3204) to the appellant with a posting date of 15 March 2013, indicating the commencement of proceedings before the Board. This communication contained the following: "The letter dated 13.02.2013 filed by the opponent against the decision of the European Patent Office of 13.12.12 has been referred to Board of Appeal 3.2.04.".

IV. A statement of grounds of appeal dated 15 April 2013 were filed online on the same day, followed by a confirmation copy including copies of cited prior art and received on 22 April 2013. The patent proprietor, now respondent filed a substantive response to the issues raised in the grounds by letter dated 12 August 2013, also filed online.

V. A communication of the Board under Rule 100(2) EPC was issued on 27 September 2013. The Board pointed out that no document was apparent in the file which could be considered as a notice of appeal, and that the particulars of the appeal only became clear from the grounds of appeal. The document filed ostensibly as notice of appeal was in Spanish, without translation, so that it should be deemed not to have been filed. Prima facie it was also not a notice of appeal, but merely a copy of a transfer order. The fee payment could not substitute the notice of appeal, according to settled case law. Therefore, the appeal was expected to be rejected as inadmissible under Rule 101(1) EPC.

VI. The appellant responded to the communication of the Board by a telefax dated and received 4 December 2013, and requested a reconsideration of the finding that the appeal did not comply with Rule 101 EPC. According to the appellant, the Appeal Letter contained all necessary data, such as the representative and his address, patent number, the fact of the fee payment. This document was in English, and clearly expressed the dissatisfaction of the opponent with the appealed decision. The other document was a mere proof of the corresponding fee. The fee payment had to be understood as the intention to appeal the relevant decision under Article 108 and Rule 99(1) EPC. Secondly, the Registry had not complied with Rule 101(2) EPC, in that it did not call the attention of the appellant to the deficiencies in the appeal and did not set a time limit to correct the identified deficiencies. The appellant's attention was first drawn to the problem by the Communication of the Board, and as a reaction to this Communication the appellant submitted with the response a correct Notice of Appeal, pursuant to Rule 101(2) EPC. The appeal could not be rejected as inadmissible before the appellant was given a chance to correct the deficiencies under Rule 101(2) EPC. It was requested to continue the appeal proceedings. The response of the appellant contained in an Annex a Notice of Appeal, dated 4 December 2013 and written in English.

VII. A second communication of the Board under Rule 100(2) EPC was issued on 20 December 2013. The Board commented on the position of the Appellant that the Appeal Letter should be considered as the valid notice of appeal and it indicated that the appeal still appeared to be inadmissible essentially for the reasons set out in this decision, namely that the Appeal Letter does not meet the requirements of Rule 99(1)(b) and (c) EPC.

VIII. The appellant responded to the second communication of the Board by a telefax of 28 February 2014, and argued that the decision impugned must have been implicitly identified in the Appeal Letter as the Registrar was able to deduce from the Appeal Letter the necessary data, as attested by its communication of 15 March 2013 (see point III above). Case Law of the Boards of Appeal support that the subject of the appeal can also be implied from the overall intention of the appellant. Specific reference was made to several decisions of the Boards of Appeal.

Reasons for the Decision

Admissibility of the appeal

(...)

2. The purported notice of appeal - the Appeal Letter - was received in the EPO within the time limit for filing the notice of appeal, and the appeal fee was also paid in time. The fact that the Appeal Letter is a computer generated form is immaterial, as electronic filing is an admissible form of filing documents and the Board is satisfied that it has been signed with an enhanced electronic signature (Article 5(2) and 7(4) of the Decision of the President of the EPO dated 26 February 2009 concerning the electronic filing of documents, OJ EPO 2009, 182, for a more recent publication see: Supplementary publication to OJ EPO 1/2014, 98). As such, it must be taken to have been sent with the knowledge and approval of the party sending it. The crucial issue is whether the Appeal Letter complies with the requirements of Rule 99(1)(b) and (c) EPC for a notice of appeal. As indicated in the communication of the Board (see point VII above) the Appeal Letter does not include anything that the Board may recognize as an indication of the decision impugned or a request defining the subject of the appeal, and thus it does not meet the requirements of Rule 99(1)(b) and (c) EPC.

3. The Board holds that the clear wording of Rule 101(1) EPC leaves no choice but the rejection of the appeal as inadmissible if the requirements of Rule 99(1)(b) and (c) EPC are not met in due time, and the Board has no power to ignore these clear and unambiguous provisions of the EPC. It is also not possible to allow a correction of these formal errors in the notice of appeal by setting a time limit to the appellant once the two month time limit under Article 108 EPC for filing a notice of appeal has expired, as explained below.

4. As to the requirements of Rule 99(1)(b) EPC, the appellant argues that these were fulfilled by the Appeal Letter, as the impugned decision had obviously been properly identified as could be inferred from the Board's communication of 15 March 2013 (see point III above). As to the requirements of Rule 99(1)(c) EPC, the appellant argues that the subject of the appeal could be inferred from the overall circumstances and the apparent intention to appeal.

5. The Board does not accept these arguments. The question is not whether a department of the EPO, such as a Board of Appeal is able to deduce with a relatively high probability that a party intends to appeal a decision and which decision that might be. Rather, as a question of principle, the notice of appeal is a legal declaration or legal statement made by a party to a proceeding before the EPO, and as such it must contain an unambiguous, clear and most of all, explicit statement, which is recognisable as a legal statement, concerning both the identification of the impugned decision and the subject of the appeal (see also J 19/90 of 30 April 1992, point 2.1.3 of the Reasons).

6. As to the required indication of the impugned decision (Rule 99(1)(b) EPC), the Board does not find anything in the Appeal Letter itself which could be considered to be such an indication. It is immaterial that the Registrar was able to establish that a decision was being appealed and on the face of it was able to identify which decision that might be, so that she was also able to issue a communication on EPO Form 3204, informing the parties of the commencement of an appeal and the allocated appeal number. That is the sole, stated purpose of such a communication. In no way does such a communication reflect on whether or not an appeal has been validly filed, i.e. meets all formal requirements for admissibility, or whether or not the appeal is well founded, issues that are only considered and decided once the appeal procedure has commenced. In particular therefore the issuing of the communication on Form 3204 marking commencement of appeal proceedings neither establishes nor confirms that the Appeal Letter actually complied with Rule 99(1)(b) EPC, even if it refers to a (presumably impugned) decision. The Board adds that the date of the last decision is in fact filled in - on the basis of the application or publication number - automatically by the internal software used by the Registrars, among others for the preparation of Form 3204. The date can be overwritten if necessary. Presumably the decision was also "identified" in this manner, after the Registrar noted the appearance of the word "appeal" in the Appeal letter) and proceeded to prepare and send Form 3204.

7. Concerning the required request defining the subject of the appeal, the Board recognises that such a request may indeed be implicit as stated by the Appellant on page 3 of the letter of 28 February 2014 in reference to the "guidelines" in the Case Law of the Boards of Appeal of the EPO (CLBA), 6th Edition 2010. The Board takes this reference to be to Chapter VII.E.7.5.2 (b) of the 6th edition of the CLBA, in particular decision T 358/08, mentioned on page 852 last paragraph, see Catchword and point 5 of the Reasons. In light of the totality of this decision it is clear that T 358/08 was concerned with the question how the required "subject of the appeal" introduced in Rule 99(1)(c) EPC related to the "extent of the appeal" required by corresponding previous Rule 64(b) EPC 1973. Thus, according to the correct reading of that decision by the present Board, what may be "implicit" is that part of the request which indicates whether the decision is to be set aside in whole or only in part. Otherwise decision T 358/08 lends no authority to the argument that there need not be any request at all, a situation which did not occur in that case, see point III of the Summary of Facts and Submissions. Indeed, such an argument would imply that a document clearly identifiable as a Notice of Appeal could actually be dispensed with, which would rather erode the regulatory intent and purpose of Rule 99(1) EPC. Finally, all case law cited by the Appellant regarding implicit requests assumes that the impugned decision is identifiable in a notice of appeal.

(...)

11. To put it simply, if the Board were to accept that the totality of the circumstances on their own, i. e. in the absence of any explicit request or statement to appeal were sufficient, then it would also have to accept that a mere fee payment is also sufficient to find an appeal admissible, contrary to established case law (see CLBA 7th Edition 2013, Chapter IV.E.2.5.4). Obviously, in most cases the mere payment of the appeal fee and its stated purpose as an appeal fee would be perfectly suitable to derive therefrom an intention to appeal. Furthermore, as long as at least an application or publication number is indicated with the payment (as is customary), the presumed decision impugned could also be safely identified in the overwhelming majority of the cases. In this regard, the present Board follows decision J 19/90 (supra), which found that even if the overall content of some documents accompanying the payment include all necessary data and clearly indicate that the purpose of the payment is an appeal (in case J 19/90 the EPO Form 1010 recommended and provided by the EPO was examined in this regard), this cannot substitute a clear and explicit statement or request expressing the will to appeal, see point 2.2.2 of the Reasons.

12. The Board also has no authority to accept the Notice of Appeal subsequently filed 4 December 2013 (see point VI above), as if it had been filed in time. This latter would only have been possible following a request for re-establishment of rights as foreseen by Article 122 EPC.

(...)

14. In the light of the above the Board concludes that the requirements of Rule 99(1) (b) and (c) EPC are not met.

Order

For these reasons it is decided that:

The appeal is rejected as inadmissible.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T062013.20140522. The whole decision can be found here. The file wrapper can be found here.