T 2012/20 - Who signs the notice of appeal

Key points

• This appeal deals with a request for re-establishment in connection with the appeal fee. The appeal fee was paid at the reduced rate in 2020. No SME declaration was filed when filing the Notice.
• The EPO sent out a letter "for the examining division" informing the applicant/appellant that the missing amount could still be paid within two months from the letter or alternatively the declaration could be filed. This letter was sent 24.11.2020.
• The appellant filed a request for re-establishment within the two-month period from the letter and paid the appeal fee at the full rate. 
• The Board grants the request for re-establishment. 
• "In view of all these factors (COVID-19, information provided in FAQ, electronic means previously used by the EPO, filing of appeal more than two weeks before deadline), the board considers that in the particular situation of the case at hand there are exceptional circumstances leading to the conclusion that due care had been taken and consequently justifying the re-establishment of rights."
• The only claim request is, however, not admitted under the "should have been filed" prong of Art. 12(6) RPBA 2020. Hence, the appeal is dismissed.
• A divisional application was filed.
• Back to the re-establishment request: " In the present case the representative had instructed the assistant via email (13 November 2020, 10:41 hrs) to promptly file an appeal. ... It is also apparent from the file that, as a result of the representative's email, the appeal was filed on the same day (electronic receipt of the appeal generated on 13 November 2020 at 14:00 hrs) and an appeal fee was paid. In the notice of appeal "the appeal fee" is mentioned, whereby no reference is made to a reduced fee. The board concludes from the evidence presented that the assistant knew how to file the appeal and how to pay the appeal fee, but, for whatever reason, paid the reduced fee instead of the normal fee."
• Noteworthy is that the Notice of appeal and the Form 1038E with the debit order both mention the name of a professional representative as the signature. The receipt indicates that the EPO smart card in the name of the same professional representative was used for submitting the documents with online filing, in turn implying that the assistant also used the PIN code of the smart card.
• There is some case law suggesting that errors of professional representatives are not easily compatible with the due care for re-establishment, unlike errors of assistants.
• The Board does not comment on whether the task of preparing, signing, and submitting a Notice of appeal can be delegated to an assistant and on whether, generally, an assistant can sign letters to the EPO "with the signature of" a professional representative. 
• The time limit for filing the Notice of appeal expired only on 28.11.2020, so the EPO's letter of 24.11.2020 was a warning about the incorrect appeal fee within the appeal period. The Board, however, considers it insufficient in the circumstances of the case. 
• "It is evident that a representative reading this information expects to be promptly warned if a deficiency is apparent. In the case at hand, such a deficiency was readily recognised by the European Patent Office, as can be seen from EPO Form 2901 (see A3). The latter was generated on 17 November 2020 (date at the bottom of the form), but post-dated 24 November 2020 - which is the normal procedure within the EPO (see, for example, G 12/91, Reasons 9.1) - and sent via registered mail. It was received by the appellant on 9 December 2020. Although registered mail was the official way of communication of the EPO, a representative reading the above response of the EPO to the FAQ would have expected the warning to be forwarded by the fastest possible means, especially if the time limit for paying the appeal fee had not yet expired, but was close to expiry. This is all the more applicable, since at that time the restrictions due to the COVID-19 pandemic were highly likely to impact the normal functioning of postal services (see also A1 and A2)."
• As a comment, G 2/97 confirmed that "The protection of legitimate expectations also requires the EPO to warn the applicant of any loss of rights if such a warning can be expected in all good faith." It seems reasonable that the EPO must (try to) give the warning effectively and that sending a registered letter may not always be sufficient.
• However, as I understand it, if the protection of legitimate expectations applies (alternatively the principle of good faith), that principle acts as a remedy on its own, and the request for re-establishment would be moot. The fee for re-establishment could be refunded.
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t202012eu1.html

Reasons for the Decision

1. Article 122 EPC: Re-establishment of rights

1.1 Considering points III. and V. above, the requirements of Rule 136(1) and (2) EPC are met and the request is thus admissible.

1.2 Under Article 122(1) EPC, for re-establishment of rights to be allowed the applicant must show that they missed the time limit despite taking all the due care required by the circumstances.

The case law has established the criterion that due care is considered to have been taken if non-compliance with the time limit results, for example, from exceptional circumstances (see Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, III.E.5.3).

1.3 In the present case the representative had instructed the assistant via email (13 November 2020, 10:41 hrs) to promptly file an appeal. It was also indicated in the email that filing the appeal well before the expiry of the time limit would allow any possible shortcomings to be addressed, if needed. In view of the representative's submissions and the wording used in that email, it is accepted that the representative and the assistant had already been working together for a long time and that the assistant was apparently familiar with filing an appeal. It is also apparent from the file that, as a result of the representative's email, the appeal was filed on the same day (electronic receipt of the appeal generated on 13 November 2020 at 14:00 hrs) and an appeal fee was paid. In the notice of appeal "the appeal fee" is mentioned, whereby no reference is made to a reduced fee. The board concludes from the evidence presented that the assistant knew how to file the appeal and how to pay the appeal fee, but, for whatever reason, paid the reduced fee instead of the normal fee.

1.4 The European Patent Office provides on its home page a section containing FAQ (Frequently Asked Questions) concerning amended Article 2(1), item 11 RFees relating to the reduction of the appeal fee (https://www.epo.org/service-support/faq/procedure-law/appeal-fee-reduction.html). The question "What does the EPO do if a declaration appears to be missing on the date of payment of the reduced fee for appeal?" is answered as follows:

"If an appellant pays the reduced amount of the appeal fee without filing the necessary declaration, the EPO will proceed as follows: If the period for paying the appeal fee has not yet expired, a warning letter will be issued to inform the appellant that no declaration has been received by the EPO. If the time limit under Article 108 EPC has not yet expired, the appellant can either pay the missing amount to the full fee or file the missing declaration. Should the appellant omit to pay the missing amount or not file the declaration within the time limit under Article 108 EPC, the appeal may be deemed not to have been filed or the appeal may be considered inadmissible."

This information was already available when the notice of appeal was filed in the present case, as transpired from a check with the Wayback Machine "archive.org".

1.5 It is evident that a representative reading this information expects to be promptly warned if a deficiency is apparent. In the case at hand, such a deficiency was readily recognised by the European Patent Office, as can be seen from EPO Form 2901 (see A3). The latter was generated on 17 November 2020 (date at the bottom of the form), but post-dated 24 November 2020 - which is the normal procedure within the EPO (see, for example, G 12/91, Reasons 9.1) - and sent via registered mail. It was received by the appellant on 9 December 2020. Although registered mail was the official way of communication of the EPO, a representative reading the above response of the EPO to the FAQ would have expected the warning to be forwarded by the fastest possible means, especially if the time limit for paying the appeal fee had not yet expired, but was close to expiry.

This is all the more applicable, since at that time the restrictions due to the COVID-19 pandemic were highly likely to impact the normal functioning of postal services (see also A1 and A2). In particular, the EPO itself used electronic means, namely the Zoom platform, to hold oral proceedings, and it is thus very surprising that appropriate electronic means were not used to warn applicants. In addition, the change in format of oral proceedings before the examining division to videoconference was announced by telephone on 9 July 2020 and this was promptly confirmed via email by the appellant. Registered mail was not used in either case. This undermines the understanding that there was a legitimate expectation on the part of the representative that the office would (additionally) communicate at that time by other means rather than normal postal service if a warning was to be issued close to the expiry of a time period.

1.6 The fact that the representative specifically indicated in her email to the assistant that the appeal should be filed some time before expiry of the time limit to allow possible shortcomings to be overcome indicates that the representative probably relied on the information provided by the EPO. The principle of the protection of legitimate expectations applies to courtesy services provided by the EPO where these are not worded so as to rule out any misunderstanding on the part of a reasonable addressee (see Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, III.A.3.2).

1.7 In view of all these factors (COVID-19, information provided in FAQ, electronic means previously used by the EPO, filing of appeal more than two weeks before deadline), the board considers that in the particular situation of the case at hand there are exceptional circumstances leading to the conclusion that due care had been taken and consequently justifying the re-establishment of rights.

As a consequence thereof the appeal is deemed to have been filed(see also point V. above).

2. Article 12(6) RPBA 2020

According to Article 12(6) RPBA 2020 the board shall not admit requests, facts, objections or evidence which should have been submitted, or which were no longer maintained, in the proceedings leading to the decision under appeal unless the circumstances of the appeal case justify their admittance.

The request at hand was only submitted with the grounds of appeal and there has been no indication as to why that request was only submitted at the appeal stage. It is apparent from the minutes of the oral proceedings before the examining division that the representative stated and confirmed that no other requests would be filed (see points 9. and 12.). This was also not contested during appeal proceedings.

The decision under appeal does not contain any surprising content which would justify the filing of a new request only at the appeal stage. The objections under Articles 83 and 84 have been present throughout the examination proceedings. It is the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020). Appeal proceedings do not constitute a continuation of examination proceedings.

The request at hand should have been submitted at the latest during oral proceedings before the examining division. All the objections were known and the applicant was explicitly given the opportunity to respond to these objections during the oral proceedings.

Therefore, the board does not admit this request pursuant to Article 12(6) RPBA 2020.

3. No valid request being on file, there is no basis for a patent to be granted (Article 113(2) EPC) and the appeal cannot be allowed (Articles 110 and 111(1) EPC).

Order

For these reasons it is decided that:

1. The appellant is re-established in their rights.

2. The appeal is dismissed.