T 1874/23 - (II) Häufungsgrundsatz

Key points

• The TBA rejected a request for re-establishment of the appellant-applicant (late filing of the notice of appeal and statement of grounds) without advance notice (and without holding oral proceedings despite these having been requested).
• The Board:  As outlined above, a request for re-establishment must substantiate the grounds and facts within the time limit of Rule 136(1) EPC (see also Article 114(2) EPC).
• Indeed, Rule 136(2) EPC specifies that "The request shall state the grounds on which it is based and shall set out the facts on which it relies.".
• "Thus, the factual basis for the requested decision cannot be altered after the expiry of the time limit for the request (Case Law, III.E.4.4, see J 19/05, Reasons 4, 5; T 585/08, Reasons 9; T 479/10, Reasons 2.1; J 15/10, Reasons 3.2; J 6/22, Reasons 14; T 178/23, Reasons 5.2.1)."
• Note, the legal term 'altered' does not mean 'can not be supplemented or further elaborated'. Probably, you cannot switch from the ground 'sudden illness' to 'a hacker in our IT systems', but adding more details about how sudden the illness was, is not excluded by the phrase  'the factual basis cannot be altered'.
• J 15/10: "present the core facts making it possible to consider whether all due care required by the circumstances had been taken to comply with the time limit concerned" (emphasis added).
• J 19/05: "Ein Nachschieben von (neuen) Tatsachen, die einen anderen Hindernisgrund betreffen, ist daher unzulässig." ...  "Auch ein auf allgemein gehaltene Behauptungen gestützter Wiedereinsetzungsantrag, der keine individualisierbaren Tatsachen enthält, genügt nicht der Begründungspflicht nach Artikel 122 (3), Satz 1 EPÜ [1973] und ist daher mangels Substantiierung als unzulässig zurückzuweisen." (emphasis added)
• 
  
• "20. This requirement for immediate and complete substantiation of the request corresponds to the principle of "Eventualmaxime" or "Häufungsgrundsatz" in contracting states with a German law tradition ("le principe de la concentration des moyens" in France), under which the request must state all grounds for re-establishment and means of evidence without the possibility of submitting these at a later stage.
• Note, 1) the EPO legal rule, by very definition, cannot be the German rule as such - they are different legal instruments, so the meaning of 'corresponds to' must be considered;
• 2) The German rule apparently includes "means of evidence", which is not mentioned in Rule 136(2) EPC (and must have been intentionally left out by the legislator, in which case the EPC legislator apparently did not wish to adopt the German approach) (see T324/90 - "it is not necessary that the application for re-establishment of rights provide any prima facie evidence for the facts set out in it, nor is it necessary that it indicate the means by which those facts are supported");
• 3) The Board does not explain why the EPO rule would be the same (in substance) as the German rule;
• 4) In view of Article 125 EPC, it cannot be assumed that EPC procedural law is the same as German law, or the national law of any other EPC contracting state, or that any (perceived) lacuna in the procedural provisions of the EPC must be filled in in accordance with German law (Art. 125 EPC: " the principles of procedural law generally recognised in the Contracting States")
• The Board does not explain why it refers to German law and not the law of another EPC contracting state.
• The TBA refers to: "see e.g. Foerste in Musielak/Voit, ZPO, 21**(st) edn. 2024, § 282 Rn. 4 f); Deixler-Hübner in Fasching/Konecny, Zivilprozessgesetze, 3**(rd) edn. 2017, II/2 § 149 ZPO; Gitschthaler in Rechberger/Klicka, ZPO, 5**(th) edn. 2019, §§ 148 f 2; Article 1355 du code civil, Cass. ass. plén., 7 juillet 2006, n° 04-10.672)."
• Article 1355 du code civil - France is about res judicata (link);
• Cass. ass. plén., 7 juillet 2006, n° 04-10.672 (link) is also about res judicata, or claim preclusion (second litigation of the same claim on a different legal ground (first: salary, second procedure: unjust enrichment; in litigation against a father's estate).
• Res judicata is indeed a generally accepted principle. However, it is not relevant to the case at hand, where there is a request for re-establishment, not an earlier decision of the EPO.
• I don't have quick access to the cited German handbooks.
•  The term Eventualmaxime was also used in J14/21, but in that case, the Examining Division had admitted the additional factual assertions. The Board, in the appeal against the refusal of the request, did not admit further factual assertions, which is in line with Art. 12(6) RPBA. Hence, the term was used obiter (and without references to the German handbook and French decision). The same applies to "Häufungsgrundsatz". In other words, the Board is not simply recalling established EPO case law (indeed, the decision does not cite case law on this point). 
• 21. Only if this requirement for immediate and complete substantiation within the time limit has been fulfilled, might it be permissible to complement the facts and evidence in later submissions, and provided that they do not extend beyond the framework of the previous submissions (see J 5/94, Reasons 2.3; J 19/05, Reasons 5; T 585/08, Reasons 9; J 15/10, Reasons 3.1; see also J 8/95, Reasons 3; T 324/90, Reasons 5).
• Here, it is unclear if the Board refers to the German requirement (for immediate and complete substantiation of requests for re-establishment), or to Rule 136(2) EPC, or if the Board has just decided that Rule 136(2) EPC, first sentence, is in substance the same as that German rule.
• Note: Would the requesting party have had a right to present orally arguments about the correct legal interpretation of the first sentence of Rule 136(2) EPC during the oral proceedings that had been requested by them (but were refused by the Board)?
• As already noted in  T324/90, the language versions of Rule 136(2) differ. The German version of the first sentence is "Der Antrag auf Wiedereinsetzung ist zu begründen, wobei die zur Begründung dienenden Tatsachen glaubhaft zu machen sind." The French version: "La requête doit être motivée et indiquer les faits invoqués à son appui". The English version: "The request shall state the grounds on which it is based and shall set out the facts on which it relies." Only the German version seems to suppose that the facts are not merely stated or indicated, but are supported by evidence (" glaubhaft zu machen"). Of course, the three texts are equally authentic (Article 177).  
• 22. As outlined above, this is not the case here for the request for re-establishment in these proceedings. In particular, no factual assertions were made at least on the provision of supervision and/or an independent cross-check mechanism in [US patent attorney firm T] to make for a normally satisfactory monitoring system. (...)

• 25. ... Given the inherent restrictions for factual assertions outside the time limit for the request of re-establishment in these proceedings (the principle of "Eventualmaxime", see above), the appellant is even prevented from validly submitting new factual assertions at this stage, including in oral proceedings.
• The phrase 'inherent restrictions' seems to refer to the provision of Rule 136(2) EPC, as interpreted.
• The Board's analysis of Rule 136(2) could have been more complete by including an application of the grammatical, systematic, and theological methods of interpretation in the written decision and a reference to the travaux préparatoires. 

EPO 

The link to the decision can be found after the jump.

J 0013/21 - RE for EP entry with FP

Key points

•  The applicant requests the re-establishment of rights for entry into the European phase with further processing.
• " EPO Form 1010 ("Payment of fees and expenses") was annexed indicating bank transfer as the mode of payment and the payment of fees including one fee for re-establishment of rights and fees for further processing (except the fee for further processing for the failure to file the written request for examination).
The Receiving Section "expressed its preliminary view that the request for re-establishment of rights was inadmissible because five re-establishment fees were due and only one was paid. In response to this communication, the applicant, in a letter dated 18 May 2020, submitted further reasons for the admissibility of the request, requested correction of a transcription error in the fee calculation sheet (Form 1010) under Rule 139 EPC and paid four additional re-establishment fees."
• The Receiving Section rejects the request.
• In appeal, the applicant requests a correction of the fee calculation sheet. 
• The Legal Board: "In accordance with Rule 139, first sentence, EPC, only errors in documents filed with the EPO may be corrected. Consequently, an error in a bank transfer order cannot be corrected under Rule 139 EPC because it is not an error in a document filed with the EPO but a document filed with a bank. The requested correction of Form 1010 (whether allowable or not) would not remedy the non-payment, which was not caused by the indications in Form 1010 but by the transfer order given to the bank." 
• More importantly, the appellant challenged the Receiving Section's view that five RE fees would be due.
• The Legal Board, turning to the precedent: " In J 26/95, the Legal Board of Appeal was dealing with a case where the applicant had failed to reply to a communication pursuant to Article 96(2) and Rule 51(2) EPC 1973. This led to the application being deemed to be withdrawn. The applicant had also failed to pay a renewal fee in due time. The applicant submitted that only one fee was due in connection with its requests for re-establishment in respect of both time limits missed since both time limits had not been complied with for the same reason (serious financial difficulties). However, the Board held that where time limits expiring independently of one another have been missed by the applicant, each resulting in the application being deemed withdrawn, a request for re-establishment had to be filed in respect of each unobserved time limit. Consequently, a fee for re-establishment had to be paid for each request. It was irrelevant whether the requests for re-establishment were based on the same or different grounds."
• The Legal Board, turning to the present case: "In the Board's view, the individual acts required under Rule 159(1) EPC do not form a unitary procedural step but are legally independent requirements subject to independent time limits although some of them may coincide in a particular case. The legal consequences and possible remedies of not fulfilling the requirements of Rule 159(1) EPC are not identical. The legal consequence provided in Rule 160 EPC (application deemed to be withdrawn) does not apply to all of these requirements. In contrast to some other requirements listed in Rule 159(1) EPC, non-payment of the third renewal fee within the time limit provided for in Rule 159(1)(g) EPC does not lead to an immediate loss of right since the fee can still be paid within a further period of six months. On the other hand, the remedy of further processing is not available with respect to this requirement."
• " It follows from the above that in the current case the appellant had to pay more than one re-establishment fee. However, only one re-establishment fee was paid in due time. The remaining re-establishment requests are not deemed to have been filed since the required fees were not paid within two months from the removal of the cause of non-compliance (Rule 136(1) EPC), "

• As a comment, the Board here does not say that five RE requests were necessary. The reasoning seems to only distinguish between the payment of the renewal fee with a surcharge on the one hand and the other acts with further processing on the other hand. See also  T1823/16.

•  

EPO 

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

J 0008/21 - No proper cross-check at 1000+ attorney firm

Key points

•  The PCT application was filed by a USA law firm 5 days after the expiry of the priority year.
• " the internal procedural rules used in the law firm were as follows: "Each paralegal is responsible for tracking deadlines for their patent matters and requesting the docketing department to de-docket each deadline after the desired actions (if any) for responding to the deadline have been taken. A daily reminder is also sent from [the firm's] docketing department to each paralegal, reminding the paralegal of daily deadlines. As an additional cross check, before de-docketing a docketed deadline, the procedures require that the paralegal assigned to a patent matter ensure that it is proper to de-docket a deadline. If unsure whether it is proper to de-docket a deadline, the paralegal should contact either the supervisory attorney(s) for the patent matter and/or the client (e.g., the Applicant) to obtain their approval to de-docket the deadline."
• The facts: "The paralegal in charge of the application had been reminded by the docketing system again on the final day about the deadline for filing the PCT application and hence received an independent reminder from the system to avoid that the due date was overlooked or missing in the backup docket. The paralegal had made her first mistake by wrongly converting the client instructions into a "NO filing required". The due date was still docketed in the docketing system. To remove such a date from the system - so the appellant alleged - approval from a supervisor/attorney was required. Here, the paralegal had made her second mistake in not contacting a supervising attorney or the applicant. The deadline was removed from the docketing system [note the passive voice; I understand by one and the same paralegal] , and no further patent application was filed before the one-year deadline."
• 
  
• The Board: " the described procedure does not amount to a cross-check independent of the person responsible for monitoring time limits because the paralegal decides whether a second person becomes involved or not. If the de-docketing of a deadline by the paralegal and the paralegal's subsequent decision not to contact a supervisor are wrong, the system does not ensure that a second person will notice this mistake at a point in time when it can still be corrected."
• The request for restoration of priority is refused.
• The name of the law firm can be found in the decision. According to Wikipedia, it has 1000+ attorneys.
  
  
• The applicant tried some creative arguments. "the appellant argued that the case law of the boards on "due care" had been developed decades ago and was too strict in that it did not reflect the technological and economic circumstances in which law firms organised themselves today. Since that case law had been developed, the volume of patent applications and renewal fees to be managed had multiplied, and office management had become computerised. Thus, it had become disproportionate to require parties or law firms to hire and assign additional employees for performing cross-checks." The Board: "This line of argument is not convincing either. While technological circumstances have indeed changed, missing deadlines can have the same grave legal and economic consequences for clients as before. Hence, changes in technological circumstances eliminate neither the need to require nor the proportionality of requiring large law firms to provide for an independent cross-check by a second person. The Board also considers it feasible for large law firms to use IT when implementing such an independent cross-check, thus using the changes in technological circumstances to their advantage."

EPO 

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

T 1995/19 - A dispute within the meaning of Rule 126(2)

Key points

• An application is refused."In the present case the applicant had appointed [at the relevant time] Ms [A], a legal practitioner qualified in Portugal, who was thus authorised to act before the EPO in the same way as a professional representative (Article 134(8) EPC)."
• There were some changes in the representative in the course of the appeal proceedings.
• The appeal fee is paid by the deadline with bank transfer, but no written Notice of appeal is filed within the 2 month period. The Notice is filed at a later time The Statement of grounds is filed in the prescribed time limit.
• "On 28 November 2019 the board issued a communication noting of loss of rights pursuant to Rule 112(1) EPC and Article 108, second sentence, EPC indicating that the appeal was deemed not to have been filed. A time limit of two months from notification of the communication was set, with the indication that the communication would become final in case of no reply."
• About 6 months later,  "On 11 June 2020 a request was filed according to Article 122(1) EPC for re-establishment of rights in respect of the time limit for filing an appeal under Article 108 EPC. "
• The one year period is complied with.
• "The request for re-establishment of rights is refused as inadmissible." because it is not filed within the two months period.
• It is not immediately evident to me why a late-filed Notice of appeal is deemed to not have been filed (G1/18) but a late-filed request for RE is inadmissible (and in the present case, should the RE fee be reimbursed?)
• The applicant disputes the moment that the two-month period started.
• The Board: "According to the case law of the Boards of Appeal, the cause of non-compliance is removed on the date on which the person responsible for the application is made aware of the fact that a time limit has not been observed (e.g. J 27/90[]). Removal is a question of fact, which occurs with the actual becoming aware of the fact that a time limit has not been observed. It is established jurisprudence of the Boards of Appeal that if a notification of the noting of the loss of rights under Rule 112(1) EPC is issued to a duly appointed professional representative, removal in principle occurs with the actual receipt of such communication (see [CLBA] III.E. 4.1.1.a)). In the event of exceptional circumstances, which cannot be blamed on either the applicant or the representative, the cause of non-compliance may persist even though the applicant's representative was informed of the loss of rights (e.g. J 16/93, points 4.3.2 and 4.3.3 of the reasons, also referred to in T 1588/15, point 5 of the reasons)."
• See also J1/20.
• "Pursuant to Rule 126(2) EPC, the communication of loss of rights is deemed to have been delivered on 8 December 2019. The board has no reason not to rely on the deemed notification of said communication, since there is no indication that it had failed to reach the appellant or reached them at a later date. Nor did the appellant maintain that this had been the case. Instead, they merely invoked, for the first time during the oral proceedings, the absence of an acknowledgement of receipt, further arguing that the EPO did not enquire whether the communication pursuant to Rule 112(1) EPC had actually been delivered.
  However, the board is not convinced that this is in itself sufficient to question the actual receipt and to give rise to a dispute within the meaning of Rule 126(2) EPC (T 247/98, point 2.6 of the reasons).
  On the contrary, by expressly referring to the communication in point 3.3.2 of the request for re-establishment of rights dated 11 June 2020, the appellant implicitly acknowledged that the delivery had actually taken place. A late receipt of the communication of loss of rights was not alleged."
• "On account of these considerations, the board concludes that the request for re-establishment in respect of the time limit for filing the notice of appeal was filed outside the two-month time limit from the removal of the cause of non-compliance set by Rule 136(1) EPC. Consequently, the request for re-establishment of rights is inadmissible. "

EPO T 1995/19

The link to the decision is provided after the jump.

T 1570/20 - Removal of cause of non-compliance

Key points
The Board reviewing some basics about admissibility of RE requests:

• The case at hand and the issue at stake: “A request for re-establishment of rights must be filed within two months of the removal of the cause of non-compliance (Rule 136 (1) EPC). It is thus decisive when the cause of non-compliance was removed. If this occurred on 6 August 2015, when the European professional representative was informed about the loss of rights, the request for re-establishment of rights is not admissible. If it occurred on 22 August 2015, when the applicant was informed, the request is admissible.”
• “3. If a professional representative is appointed, the removal of the cause of non-compliance usually occurs on the date on which the professional representative becomes aware of the fact that a time limit has not been observed (see J 27/90, point 2.3 of the Reasons). The notification of the communication on the loss of rights to the professional representative removes the cause of non-compliance unless there are exceptional circumstances. A person other than the professional representative being responsible for the payment of fees does not constitute exceptional circumstances (see T 1588/15, point 9 of the Reasons). The removal of the cause of non-compliance is normally the actual receipt - and not the deemed notification [under Rule 126, i.e. no 10-day rule] - of the communication by the professional representative (T 2251/12, point 10 of the Reasons; T 812/04, point 2.1.1 of the Reasons).”
• “In J 1/20 it is ... also stated that, if a European professional representative is appointed, the party acts through them in all proceedings established by the Convention and notifications are made to them, which implies that removal of the cause of non-compliance occurs in principle when the authorised representative becomes aware of the loss of rights (point 2.2 of the Reasons).”
• “In the Board's view, removal of the cause of non-compliance did not require any additional knowledge by the professional representative about possible reasons for the loss of rights, such as whether the non-payment of fees was intentional or not. Rather, it was sufficient that the professional representative became aware of the fact that a time limit - namely the time limit with regard to which re-establishment of rights was requested later on - had not been complied with, which included awareness of the fact that nobody had taken care of the payment of fees.”
• The request was filed late.
• The Board, obiter it seems: “The appellant is, as any party, free to choose their representatives and advisors. They must, however, also bear the possible negative consequences of their choices and arrangements. ” (referring to a Taiwanese law firm, not to the professional representative).

T 1570/20
https://www.epo.org/law-practice/case-law-appeals/recent/t201570eu1.html

decision text omitted.

J 0009/18 - RE request, assistant hiding letters

 Key points

• The Receiving Section finds that the application is deemed to be withdrawn because of the designation fee and examination fee were not paid and no response to the search opinion was filed. 
• The applicant requests further processing (represented by a well-known patent firm) but two days after expiry of the time limit for FP according to the EPO. The EPO invites the applicant to comment within a period of two months.
• About six months later, a request for re-establishment is filed. The European patent attorney explains that only recently became aware that the FP request had been filed late.
• The RE request is quite detailed, see below
• The Receiving Section then issues an appealable decision (link), not signed and bearing no name, stating the the RE request 'can not be dealt with' since 'this is not an available means of redress' and that the EPO's opinion regarding the further processing 'has become final since no timely reaction was received' to the Communication of 15 March. The applicant files the appeal.
• The Legal Board's preliminary opinion is quite negative as to whether the RE request was timely filed, but there is a thorough rebuttal and the applicant focuses on the substantial procedural violation in the first instance proceedings.
• The Legal Board finds two procedural violations: deciding on the RE request without deciding on the request for oral proceedings, and the immediate rejection of the RE request "without it having issued any prior communication informing the applicant of the department's preliminary opinion." The dismissal of the RE request was also insufficiently reasoned. The lack of name of the EPO officer writing the decision is the fourth substantial procedural violation.
• The Board remits the case without deciding on the RE request, as per the applicants final main request. 
• The RE request is based on exceptional alleged facts. The assistant of the attorney would have filed to file the response to the search report by the normal time limit and from that time would have hidden all further EPO Communications (received on paper), possibly intercepting them from the attorneys personal letter box and not docketing them. She would  have filed the FP request herself using the attorney's smart card without authorization (this document, p.10,  indicates that the assistent admitted having used the smart card  without authorization).
• The Board does not comment on the alleged facts in the decision.
• The file contains a letter of the applicant with extensive arguments why the 2-month time limit for requesting RE should run only from actual knowledge of the problem of the patent attorney and why it is not correct to ask when the patent attorney would have been aware of the problem if he had acted with all due care (cf. T 0198/16, obiter therein). 

https://www.epo.org/law-practice/case-law-appeals/recent/j180009eu1.html

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Receiving Section posted on 7 February 2018. The tenor of the decision reads as follows:

1. The EPO's opinion as stated in our communication under Article 113(1) EPC dated 15 March 2017 (EPO Form 1103B) has become final since no timely reaction from the applicant/representative was received within the appropriate time limit and therefore the application is deemed to be withdrawn with legal effect as of 12 November 2016.

T 0600/18 - Paper debit order, no RE

Key points

• The appellant filed a Notice of appeal by fax on 28.02.2018. Form 1010 was sued for the debit order. The form was signed by the in house professional representative. The debit order is invalid and a request for re-establishment was filed. 
• “The appellant submitted that, due to security considerations and the fact that it operated in the aerospace and defence sector, the EPO's online filing software was not available on its general computers but only on the machines of three paralegals responsible for online filing.”
• On the day at issue, all three paralegals were absent. Moreover, a storm was predicted for 1 March, the last day of the appeal period. Therefore, the patent attorney had himself filed the Notice of appeal of 28 February: “Since none of the regular paralegals was present and the normal way to pay the fees was thus unavailable, the patent attorney in charge of the case decided, under the pressure of the special situation, to use an alternative method of payment, by debit order form 1010.”
• The Board notes that the Notice includes the statement ‘we pay herewith the fee for appeal’. 
• The Board:  “This hints at the assumption (later acknowledged) that, when signing the Notice of Appeal, the patent attorney considered that the appeal fee had already been validly paid using form 1010. ”
• The Board recalls that “a mistake by the representative himself or herself is not normally excusable.”
• “In the present case, it seems that the failure to comply with the time limit to pay the appeal fee was caused by the mistaken belief of the representative that an outdated way to make payments was still acceptable, which was not in fact the case. Thus, at the time of leaving the office, the representative was under the impression that everything necessary to comply with the time limit had been performed. As a consequence, the correct payment was only performed when the representative's firm was made aware of the mistake.”
• The request for re-establishment is refused.

EPO Headnote

No conclusive case has been submitted with the request for re-establishment of rights that explains why an attempt was (erroneously) made to pay the appeal fee using a form that was no longer accepted at the EPO.
Article 122 EPC and the relevant case law does not excuse mistakes by the representative himself or herself that are caused by the ignorance of the latest provisions even if the representative does not normally perform the duty of paying fees himself or herself.
As he or she is the one that is expected to instruct and supervise his or her staff, he or she must always keep informed of the latest developments on how to handle the payment of fees.
As he or she is expected to remember what he or she has learned even in stressful situations it cannot be acknowledged that the mistake has happened despite all due care having been taken.
The situation (stress caused by an upcoming snow storm) cannot be equated with one where a patent attorney was incapable of taking sound decisions due to sudden serious illness or a sudden and unexpected bereavement.


EPO T 0600/18 -  link

Reasons for the Decision

1. The request for re-establishment of the right to appeal the decision of the opposition division dated 22 December 2017 is inadmissible.

1.1 The request has been submitted in writing within two months of the removal of the alleged cause of non-compliance on 2 March 2018 and both the missed appeal fee and the fee for re-establishment have been paid within this time limit.

1.2 However, the request is not admissible for the following reasons.

1.3 Rule 136(2) EPC, 1st sentence, states that the request "shall state the grounds on which it is based and shall set out the facts on which it relies".

1.4 This has been interpreted by the case law of the Boards of Appeal as implying that a conclusive case setting out and substantiating the grounds and facts on which the request relies has to be made (see Case Law of the Boards of Appeal, 9th edition, July 2019, III.E.4.4).

1.5 In the present case, however, no explanation has been given of why the Notice of Appeal filed on 28 February 2018 states "We pay herewith the fee for appeal" and why Form 1010 was submitted on paper, a method of paying that had no longer been acceptable at the European Patent Office since 1 December 2017. This hints at the assumption (later acknowledged) that, when signing the Notice of Appeal, the patent attorney considered that the appeal fee had already been validly paid using form 1010. Thus, the fact that none of the three paralegals able to submit online payments had been present on that day is of no relevance in deciding the case. The same applies to the fact that, due to severe weather conditions, neither the patent attorney nor any of the three relevant paralegals were present in the appellant's office on 1 March 2018.

1.6 Thus, the request for re-establishment does not contain a conclusive case setting out the grounds for the failure to pay the appeal fee in time. Rather, it gives an explanation of why the usual paralegals were not in a position to act. However, the present case is not one where no action has been taken at all, but rather one where the wrong action has been chosen. In this respect a conclusive case has not been submitted that explains why an attempt was (erroneously) made to pay the appeal fee using a form that was no longer accepted at the EPO.

1.7 Therefore, the situation on the day (illness of staff and upcoming storm) was merely the reason why the representative had to act himself. The failure to comply with the time limit was then caused by the representative's lack of awareness that there had been a change in the handling of payments at the European Patent Office. The request for re-establishment fails to give any explanation of the reasons for this real source of non-compliance with the time limit.

2. However, even if such an explanation had been given, as has been done later (see the letter dated 27 July 2018) the request for re-establishment would not have been allowable.

2.1 It can be taken as read that wide parts of the UK faced extremely poor weather conditions on 1 March 2018 (https://www.theguardian.com/uk-news/2018/mar/01/beast-from-east-storm-emma-uk-worst-weather-years). However, on the afternoon of 28 February 2018 the situation was not so extreme that there was an immediate need to evacuate the office or the like. The patent attorney in charge of the case was still able to perform his duties, albeit under pressure to let his staff leave early enough to get home safely.

2.2 For the reasons set out above, the cause of non-compliance with the time limit was the decision of the patent attorney to chose a payment method that was outdated at that stage.

2.3 The case law regarding isolated mistakes within a normally satisfactory system refers to systems where the representative has entrusted tasks such as the monitoring of time limits to well trained staff who operate under his or her supervision. However, as set out for instance in decisions T 1095/06, T 592/11 and R 18/13, a mistake by the representative himself or herself is not normally excusable.

2.4 In the present case the representative was forced by the circumstances to act himself, instead of his well trained and supervised staff. However, a representative acting himself or herself is expected always to be informed of the relevant procedural provisions. In the present case, it seems that the failure to comply with the time limit to pay the appeal fee was caused by the mistaken belief of the representative that an outdated way to make payments was still acceptable, which was not in fact the case. Thus, at the time of leaving the office, the representative was under the impression that everything necessary to comply with the time limit had been performed. As a consequence, the correct payment was only performed when the representative's firm was made aware of the mistake.

2.5 This mistake has been made under the stress of the situation, which might have slightly exceeded other stressful situations an attorney often has to face in the workplace. However the situation as submitted by the appellant cannot be equated with one where a patent attorney was incapable of taking sound decisions due to sudden serious illness or a sudden and unexpected bereavement, as in cases T 525/91 or T 387/11.

2.6 Article 122 EPC and the relevant case law do not excuse mistakes by the representative himself or herself that are the result of ignorance of the latest provisions, even if the representative does not normally perform the duty of paying fees himself or herself. As he or she is the person who is expected to instruct and supervise his or her staff, he or she must always keep informed of the latest developments on how to handle the payment of fees. As he or she is expected to remember what he or she has learned even in stressful situations, it cannot be accepted that the mistake has been made despite all due care having been taken.

2.7 Therefore, even if the appellant had presented its full and conclusive case within its initial request re-establishment could not have been granted.

3. Since the appeal fee has not been paid in due time, according to the reasons set out in decision G 1/18 the appeal is to be treated as not having been filed.

4. As a consequence, the appeal fee has been paid without any legal basis and is to be reimbursed.

Order

For these reasons it is decided that:

1. The request for re-establishment of rights is refused as inadmissible.

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

3. The appeal fee is to be reimbursed.

J 0003/17 - No restoration of priority

Key points

• For this Euro-PCT application, the PCT application was filed shortly after the end of the priority period with the Chinese patent office as receiving Office. The rO granted restoration of priority based on the "unintentional"  criterium. This does not bind the EPO (Rule 49ter.1(b) PCT) After entry into the EP phase, the applicant requested restoration of priority from EPO as designated Office under Rule 49ter.2 PCT (and paid the fee). The EPO refused the restoration of priority because the EPO applies the "all due care"  criterium. The applicant appealed.
• The Legal Board dismisses the appeal. The applicant had failed to show that all due care had been exercised.
• The decision is mostly interesting because restoration of priority under the PCT does not show up very often in the case law. 

EPO J 0003/17 -  link

Summary of Facts and Submissions

I. On 26 September 2014, the appellant (applicant) filed an international patent application with the Chinese patent office as receiving Office. The application claimed the priority of a Chinese patent application filed on 16 September 2013. Priority was therefore not claimed within the priority period.

II. The appellant submitted a request for restoration of the right to priority with the receiving Office in accordance with Rule 26bis.3(b) PCT. The same request was addressed to the European Patent Office as designated Office on 15 March 2016. The request was refused by decision of the Receiving Section of 12 December 2016. The appellant filed an appeal from this decision on 10 February 2017. The appeal fee was paid on the same day.

III. In the grounds for restoration the appellant explained as follows the events that had led to missing the deadline for filing the international application within the priority year:

The appellant used a Chinese agent, N.N., for filing PCT applications. According to instructions from the appellant, N.N. had been asked to draft the international application and file it on 22 August 2014, the priority deadline being 16 September 2014. These dates had been entered into N.N.'s electronic and paper time-limit monitoring system.

T 1815/15 - Re-establishment after opposition

Key points

• After an opposition-appeal, the patent proprietor did not pay the fee for publication of the new specification in time, only in the period for paying with surcharge (Rule 82(3) EPC, however without paying the surcharge. The patent was revoked. The patentee files an appeal, and thereafter a request for re-establishment.
• The Board does not allow the appeal (which was based on legitimate expectations). The Board is competent to decide on the request for re-establishment and grants the request.
• The Board for some reason still remits to the OD with the order to maintain the patent. In fact, the Board could have decided to maintain the patent in amended form since all formal requirements had been met. 
• Of note, the filing date was 25.10.1996, the grant 19.12.2001, the first decision in opposition appeal was T1147/06, the second decision was T0319/11, and this is the third decision in opposition appeal. 

https://www.epo.org/law-practice/case-law-appeals/recent/t151815eu1.html 

Summary of Facts and Submissions

I. By decision T 0319/11 of 20 October 2014 dispatched on 12 November 2014, the Board remitted the case to the opposition division with the order to maintain European patent 0857242 in amended form.

II. By a communication pursuant to Rule 82(2) EPC dated 10 December 2014, the opposition division requested the patent proprietor to pay the fee for publication of a new specification and to file translation of the mentioned claims in the other two official languages within three months of notification of this communication.

III. By a communication dated 24 April 2015 pursuant to Rule 82(3) EPC, the opposition division pointed out that the fee for publishing the specification had not been paid, and that the translation of the claims had not been filed in due time. The patent proprietor was reminded that it could still validly perform these omitted acts within two months, provided it paid a surcharge.

IV. The patent proprietor filed the translation and paid the fee for publishing on 3 July 2015, but failed to pay the surcharge.

T 0251/15 - No re-establishment

Key points

• Re-establishment remains unavailable for the opponent who misses the time limit for filing a notice of appeal. 

 EPO T 0251/15 - link 

Reasons for the Decision

1. According to Article 108, first sentence, EPC the notice of appeal has to be filed within two months of notification of the decision. The second sentence of this provision stipulates that the notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid.

2. In the present case, the decision under appeal was issued on 22 December 2014 and the time limit specified in Article 108, first sentence, EPC expired on 2 March 2015. Since the appeal fee had not been paid within that time limit (it was paid on 11 March 2015) the appellant [opponent ] was informed - according to Rule 112(1) EPC - by communication from the registrar of the Board of Appeal dated 21 April 2015, that the appeal was deemed not to have been filed pursuant to Article 108, second sentence, EPC. The appellant did not question this finding by applying for a decision on that matter pursuant to Rule 112(2) EPC. Thus, since the above finding became final the appeal is deemed not to have been filed, unless the appellant's request for re-establishment is allowed.

3. Admissibility of the request for re-establishment

Article 122(1) EPC stipulates that the right to re-establishment of rights is available for an applicant for or proprietor of a European patent. However, according to decision G 1/86 (OJ EPO 1987, 447) an appellant as opponent may have its rights re-established under Article 122 EPC if it has failed to observe the time limit for filing the statement of grounds of appeal. It follows from the reasons of the decision that the applicability of Article 122(1) EPC is limited to cases where an appellant-opponent missed the time limit for filing the grounds of appeal (see in particular points 7 to 11 of the Reasons). Thus, an appellant-opponent who misses, as in the present case, the time limit for filing the notice of appeal and/or for paying the appeal fee, is not entitled to have his rights re-established (cf. T 210/89, OJ EPO 1991, 433; cf. T 323/87, OJ EPO 1989, 343, T 128/87, OJ EPO 1989, 406). In such a case, an appellant-opponent cannot rely on the principle of "equality before the law". His legal position differs from the position of an applicant (or patentee)-appellant (cf. G 1/86, point 5 of the Reasons.)

Having taken into account the arguments presented by the appellant, the Board sees no reason to deviate from the established case law. According to G 1/86, points 8 and 9 of the Reasons, the patent proprietor has a legitimate interest in not being left uncertain as to whether a legally effective appeal has been filed within the two-month time limit under Article 108 EPC. By filing the notice of appeal and by paying the appeal fee within the two-month time limit of Article 108 EPC the opponent has validly made known his intention of having the Opposition Division's decision set aside. According to Article 108, second sentence, EPC the notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid. Thus, if the appeal fee has not been paid within the two-month time limit of Article 108 EPC, the patent proprietor's uncertainty no longer exists, since no appeal is considered to be in existence and the appeal procedure has not been validly set in motion. Thus, the Board does not accept the appellant's argument that the patent proprietor's uncertainty no longer existed in the present case merely due to the fact that the notice of appeal had been filed in time irrespective of the belated payment of the appeal fee. Thus, contrary to the appellant's argument, there is a sound reason that the late payment of the appeal fee and the failure to file the statement of grounds within the four-month time limit of Article 108, third sentence, EPC are treated differently as far as the issue of re-establishment of rights is concerned. The possibility for opponents to have their rights re-established in cases where the time limit for filing the statement of grounds is missed is based on the existence of a legally effective appeal, i.e. on the fact that the appeal procedure has validly been set in motion. However, when the appeal fee has not been paid in time, there is no appeal in existence and the patent proprietor has a legitimate interest in being able to rely on the fact that the Opposition Division's decision has become final.

4. Referral of a question to the Enlarged Board of Appeal

4.1 Under Article 112(1) EPC, the Board of Appeal, in order to ensure uniform application of the law or if a point of law of fundamental importance arises, and possibly of its own motion, shall refer any question to the Enlarged Board of Appeal if it considers that a decision is required for the above purposes.

4.2 As shown under point 3.1 above there is established case law on the question at hand which is based on decision G 1/86 of the Enlarged Board of Appeal. Moreover, the appellant admitted during the oral proceedings before the Board that deviating case law had not been found. In addition, the Board finds, as shown under point 3.2 above, that there is no lacuna in the reasoning of the decision G 1/86 which could be filled by answering the question which the appellant requested to have referred to the Enlarged Board of Appeal.

4.3 In that context the appellant noted that the question raised in the interlocutory decision of 24 February 2014 in T 2017/12 (G 2/14, cf. also the interlocutory decision of 20 February 2014 in T 1553/13 and G 1/14) should be taken into account. The question whether an appeal is inadmissible or deemed not to have been filed, where a notice of appeal is filed but the appeal fee is paid after expiry of the time limit of Article 108 EPC, first sentence, EPC could be of relevance for the present case (cf. Facts point VIII.).

4.4 The Board does not share that view for various reasons. First, the question raised in the aforementioned proceedings does not deal at all with the issue of re-establishment of rights requested by an appellant-opponent. Second, the facts underlying the interlocutory decisions in the above cases are different from the situation in the case at hand. In the present case, there is no pending question whether the appeal is inadmissible or deemed not to have been filed, since the appellant was informed - according to Rule 112(1) EPC - by communication from the registrar of the Board of Appeal dated 21 April 2015, that the appeal was deemed not to have been filed pursuant to Article 108, second sentence, EPC. This finding had become final since the appellant did not apply for a decision on that matter pursuant to Rule 112(2) EPC. Consequently, no appeal is considered to be in existence when the appeal procedure has not been validly set in motion, which was the decisive reason in G 1/86 allowing re-establishment of rights into the four-month period (cf. point 3.2).

4.5 Thus, the Board came to the conclusion that a referral to the Enlarged Board of Appeal was not justified.

5. Consequently, in view of the above, the Board comes to the conclusion that the request for re-establishment of rights is inadmissible. Thus, the appeal is deemed not to have been filed as noted by communication pursuant to Rule 112(1) EPC dated 21 April 2015.

Order

For these reasons it is decided that:

1. The request to refer a question to the Enlarged Board of Appeal is refused.

2. The request for re-establishment of rights is refused.

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

4. The appeal fee is to be reimbursed.

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)."