T 1934/16 - EPO proofs delivery

Key points

• In this case, the patentee did not file the translations of the claims in time during opposition, and did not pay the printing fee. The patentee argued that he had not received the invitation setting a time limit to pay the fee, and file the translated claims, with surcharge (Rule 82(3) EPC). Hence, under Rule 126(2) EPC,  it is incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee.
• " Following the enquiry in the present case, the letter from 1 March 2016 was found to have been delivered on 4 March 2016 at 09:18 to the law firm of the appellant's representative. The letter with the registered number (barcode) RD18229975NL contains a reference to the patent's application number 071143283 and can therefore be identified." 
• The patentee did not respond to this, and the request for re-establishment was withdrawn. Hence, the OD was correct in revoking the patent.
• In this case, the Board notes that the opposition decision transferred the appeal to the Board " without rectifying its decision". The patentee had requested interlocutory revision. However, as a comment, it is not so clear if interlocutory revision would have been available at all, because the opponent was treated as respondent by the Board. Indeed, in Form 2701, box 1 was crossed: appeal with more than one party, so no interlocutory revision. 

EPO T 1934/16 - link

Reasons for the Decision

1. The appeal is not allowable.

The appealed decision issued by the opposition division was correct. The provisions for the revocation of the patent due to failure to validly comply with the requirements under Rule 82(2) and (3) EPC were satisfied. The opposition division did not commit a procedural violation.

1.1 When an interlocutory decision relating to the maintenance of a patent in amended form has become final, the EPO sends an invitation to pay the printing fee and to file translations of the claims within a period of three months pursuant to Rule 82(2) EPC.

This invitation was dispatched in the present case on 13 October 2015. The appellant did not contest the receipt of this communication. Nevertheless no response from the appellant was received before expiry of the time limit. This has also not been contested.

1.2 Rule 82(3) EPC stipulates that, if the acts required under Rule 82(2) EPC are not performed in due time, they may still be performed within two months of a communication concerning the failure to observe the time limit, provided that a surcharge is paid within this period. Otherwise, the patent shall be revoked.

In the present case, a communication pursuant to Rule 82(3) EPC was sent on 1 March 2016. The letter was addressed to the proprietor's representative.

1.3 According to Rule 126(2) EPC a registered letter is deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee.

1.3.1 Since, in the present case, the appellant denied having received the communication under Rule 82(3) EPC, the EPO has to establish that it reached its destination and the date on which it was delivered (Rule 126(2) EPC).

Following the enquiry in the present case, the letter from 1 March 2016 was found to have been delivered on 4 March 2016 at 09:18 to the law firm of the appellant's representative. The letter with the registered number (barcode) RD18229975NL contains a reference to the patent's application number 071143283 and can therefore be identified.

Even though the appellant had been informed about the result of the enquiry, it did not supply any substantive response to the Board's communication in respect of any facts or arguments calling the result into doubt. In such circumstances, the evidence of the receipt produced by the enquiry is found to be reliable and complete for proving the proper delivery of the letter (see also T 529/09, Reasons point 5).

1.3.2 This also does not contradict the decisions J 9/05 and J 18/05 where a confirmation letter by the postal service was held not to be sufficient, because in those cases the appellant had filed a considerable amount of counter-evidence and pointed out specific reasons why the letter might not have been received by the representative's office.

In contrast, the appellant stated in the present case, albeit in the context of the now withdrawn request for re-establishment of rights, merely that the representative's law firm had a carefully designed and monitored system in place to avoid incoming mail being misplaced or handled improperly. This general statement without further details or reference to the specific circumstances is not suitable to call into question the evidence that resulted from the enquiry. In the absence of any substantiated facts or evidence to the contrary provided by the appellant, the mere allegation that the letter did not reach it, cannot cast doubt upon the enquiry made.

Therefore the result of the enquiry proves in the present case that the registered letter reached its destination and as the appellant did not submit substantiated details that are apt to demonstrate a different course of events no doubt exists that the letter was duly received by the appellant's representative.

1.4 As a conclusion, it is established that the communication pursuant to Rule 82(3) EPC was actually delivered to the appellant's representative on 4 March 2016. Thus the Board concludes that the appellant had been duly notified of the time limit under Rule 82(3) EPC on 4 March 2016 and the time limit for filing the translations and for paying the printing fee with surcharge had started to run.

1.5 In view of the legal fiction contained in Rule 126(2) EPC, that communication, in this case posted 1 March 2016, is deemed to have been delivered to the addressee on the tenth day following its posting, i.e. on 11 March 2016.

1.6 Since the appellant did not perform the acts mentioned in the communication within two months of the notification (11 May 2016), it missed the time limit provided for in Rule 82(3), first sentence, EPC. It was thus procedurally correct for the opposition division to revoke the patent with the appealed decision dated 14 June 2016 under Rule 82(3), second sentence EPC.

2. Since the decision was procedurally correct it also follows that no substantial procedural violation was committed by the opposition division and there is no reason for reimbursing the appeal fee under Rule 103(1)(a) EPC.

The request for reimbursement of the appeal fee is thus refused.

Order

For these reasons it is decided that:

The appeal is dismissed.