T 0942/12 - Re-establishment granted

T 0942/12
For the decision, click here.



Key points

• A renewal fee was not paid. Re-establishement is granted in this case.
• The European patent attorney had express instructions to not monitor payment of the renewal fee. Accordingly, he had forwarded the reminder from the EPO only without further reminders.
" The Board therefore concludes that the duty of care of [the representative] involved the forwarding of the notice drawing attention to Article 86(2) EPC to GH, not however checking whether GH indeed received the notice and took the appropriate action."
• " If a European representative is expressly instructed that he is not required to monitor the payment of renewal fees, the duty of due care does not involve that he nevertheless does so. It cannot be expected that the European representative monitors renewal fee payments at his own expense (he will not be able to charge fees for actions he is to refrain from according to his instructions)." 

3.4 The monitoring of the case by the European representatives of the applicant

The renewal fee for the fifth year fell due by 31 July 2007 and was not paid. The notice drawing attention to Article 86(2) EPC dated 4 September 2007 was sent to the European representative of the applicant, [(PH) ]. PH forwarded this notice to GH on 7 September 2007. GH states they have no record of ever having received this notice. PH took no further action with respect to the renewal fee as it had been instructed by letter of 9 September 2005 that it "was not required to maintain renewal fee reminder records or attend to the payment of renewal fees". PH states that in their correspondence with GH on the prosecution of the file the issue of outstanding renewal fee payments was not addressed, as this was not part of their mandate and they had no reason to doubt that GH had the matter under control.

If a European representative is expressly instructed that he is not required to monitor the payment of renewal fees, the duty of due care does not involve that he nevertheless does so. It cannot be expected that the European representative monitors renewal fee payments at his own expense (he will not be able to charge fees for actions he is to refrain from according to his instructions). Furthermore, sending reminders against instructions may irritate the instructing party and may impair the relationship with the client. The client may have good reasons for giving such instructions, e.g. to avoid receiving reminders from different sources that will lead to additional work and expense for him. Reminders from different sources can also be a source of confusion and thus lead to mistakes.

The present case therefore differs from the case law where it was held that even if the renewal fee was paid by someone else, the European representative remained responsible in the procedure before the EPO, and had to take the necessary steps to ensure payment (see Case Law of the Boards of Appeal, 7**(th) edition 2013, III.E.4.5.2 b)), as in none of those cases the European representative had expressly been instructed not to monitor renewal fees.

The Board therefore concludes that the duty of care of PH involved the forwarding of the notice drawing attention to Article 86(2) EPC to GH, not however checking whether GH indeed received the notice and took the appropriate action.

[...]

The Board believes that this can be considered to be an "isolated mistake". It has been recognised by case law that in case of reorganisations or transfers isolated mistakes cannot be ruled out, and that such mistakes can be excused under Article 122 EPC (T 469/93, Reasons No 1; T 1136/04, Reasons No 1.2). In the present case numerous applications in different jurisdictions were assigned and transferred between attorneys, whereby the responsibility for prosecution of the case and responsibility for monitoring payment of renewal fees did not always run in parallel. As far as the Board knows, the present application is the only one where something went wrong when transferring the responsibility for renewal fee payments. The Board therefore believes that the mistake can be excused, as the loss of rights is not due to gross negligence of any party, and all parties have acted in good faith to keep the application alive.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The request for re-establishment into the time limit for paying the renewal fee (with surcharge) for the 5th year is granted.