T 0076/17 - Answering G1/18 (again)

Key points

• In this opposition appeal, the proprietor had filed "a request for re-establishment of the time limit pursuant to Article 108 EPC for filing an appeal. At the same time, the patent proprietor filed a notice of appeal and a statement setting out the grounds for appeal, and paid the appeal fee." The Board refuses the request for re-establishment for lack of due care.
• The Board then needs to decide whether or not to refund the appeal fee.
• " Hence, the time limit for filing a notice of appeal expired on 22 October 2016 (Article 108, third sentence EPC, Rule 131(4) EPC). No notice of appeal and no payment of the appeal fee were received within this time limit. As a consequence of the rejection of the request for re-establishment of rights under Article 122 EPC, the patent proprietor's failure to comply with the time limit for filing an appeal entails as a legal consequence that no appeal against the opposition division's decision posted on 12 August 2016 came into existence. The appeal filed on 24 November 2016 as part of the request under Article 122 EPC is, therefore, not deemed to have been filed. Consequently, the appeal fee is to be reimbursed." 
• I like this approach of treating the Notice of appeal as a part of the RE request. However, one may wonder if the appeal fee was not due as being part of the "completing of the omitted act" required for RE. I would need to check if it is established practice that fees paid as "completing the omitted act"  are refunded if RE is refused. In any case, a general practice that fees paid as part of "completing of the omitted act" are refunded if RE is refused (e.g. due to lack of due care) would be fair, in the sense that the RE fee itself is the fee for the RE request (and covers the EPO's cost in the appropriate share), the cost coverage of RE requests should not depend on the missing fee. In this case, there is no appeal procedure (or at least no processing of the substance of the appeal) so there is no reason why the EPO should keep the RE fee.

EPO T 0076/17 - link

Reasons for the Decision

1. The request for re-establishment of rights was filed, the prescribed fee paid, and the omitted act completed within the time limits set in Rule 136 EPC.

2. The duly summoned parties did not attend the oral proceedings, which, in accordance with Rule 115(2) EPC and Article 15(3) RPBA, took place in their absence.

3. Under Article 122(1) EPC, for re-establishment of rights to be allowed, the requester must show that it was unable to observe a time limit despite all due care required by the circumstances having been taken. In cases where the cause of non-compliance with a time limit involved some error in the carrying out of the party's intention to comply with the time limit, the case law has established that all due care is considered to have been taken if non-compliance with the time limit resulted either from exceptional circumstances or from an isolated mistake within a normally satisfactory monitoring system (Case Law of the Boards of Appeal, 8th edition, 2016, III E 5.3 and 5.4).

Isolated mistake within a normally satisfactory monitoring system

4. The patent proprietor argues that the mistake in the present case, i.e. the entry of an admittedly erroneous deadline for filing a notice of appeal into a case management system, was an isolated one in a normally satisfactory system for monitoring deadlines and that this mistake was thus excusable.

5. According to the case law, a normally satisfactory system for monitoring time limits requires an independent cross-check. There is a substantial body of case law addressing what an independent cross-check must entail. In general, it is required that two distinct persons need to convince themselves that the action(s) required for observing a time limit or the very recording of the time limit did take place, either by performing the required act themselves or by checking that someone else performed it (see J 9/16 of 21 November 2016, point 18).

6. According to point 1 of the patent proprietor's letter dated 24 November 2016, the recording of the time limits to be observed vis-à-vis the EPO employed a double-check system for ensuring that deadlines are correctly entered in the system. It can therefore be accepted that a normally satisfactory system for monitoring time limits was established at the relevant time in the representative's office.

7. However, the normal procedure for recording a time limit was not followed in the present case. The patent proprietor's representative himself took care of the entry in the file management system. As a consequence, there was no cross-check. Two distinct persons did not ascertain the correct recording of the time limit to be monitored. Therefore, the mistake did not happen within the system for monitoring time limits established at the representative's office but when deviating from the internal workflow.

8. Moreover, although it can be accepted that the error that occurred was isolated in that no loss of rights had occurred at the representative's office over a long period of time and that only a single mistake by a single person apparently caused the missing of the time limit for filing an appeal, it was the representative's mistake, not an assistant's. While an "isolated mistake" of an assistant or administrator may be excusable, this is not the case if the mistake was made by a representative unless there are exceptional circumstances (see R 18/13 of 17 March 2014, points 19 to 21; T 592/11 of 25 October 2012, point 5.2.2).

Exceptional circumstances

9. The patent proprietor argues that its representative had been on leave when the decision was notified and that the patent administrator did not enter the deadline into the system. Upon return from leave, the representative decided to take care of the deadline entry himself. However, the circumstances cannot be considered exceptional.

10. Moreover, the entry of the erroneous time limit for filing an appeal did not result from these circumstances. The mistake occurred 10 days after the representative's return from his leave. There was thus ample time for the representative to consider the action(s) required and to record the respective time limit(s) in the file management system. There is no evidence on file that the representative experienced technical difficulties with this system or other particular circumstances at the time of recording the time limit. Moreover, a professional representative should be able to correctly calculate the time limit for filing an appeal upon consultation of the relevant legal provisions. For the sake of completeness, it is also noted that there is no evidence on file suggesting that the erroneous entry was due to circumstances beyond the representative's control, e.g. a malfunctioning of the monitoring system.

11. For the above reasons, the entry of the erroneous deadline in the representative's monitoring system is not excusable for the purposes of Article 122(1) EPC. The request for re-establishment of rights is thus to be rejected.

12. Pursuant to Rule 126(2) EPC, the opposition division's decision posted on 12 August 2016 was deemed to be delivered to the patent proprietor on 22 August 2016. Hence, the time limit for filing a notice of appeal expired on 22 October 2016 (Article 108, third sentence EPC, Rule 131(4) EPC). No notice of appeal and no payment of the appeal fee were received within this time limit. As a consequence of the rejection of the request for re-establishment of rights under Article 122 EPC, the patent proprietor's failure to comply with the time limit for filing an appeal entails as a legal consequence that no appeal against the opposition division's decision posted on 12 August 2016 came into existence. The appeal filed on 24 November 2016 as part of the request under Article 122 EPC is, therefore, not deemed to have been filed. Consequently, the appeal fee is to be reimbursed.

Order

For these reasons it is decided that:

1. The request for re-establishment of rights is rejected.

2. The appeal is not deemed to have been filed.

3. The reimbursement of the appeal fee is ordered.