T 1529/20 - Learning about the opposition after your patent is revoked

Key points

• The OD revoked the patent without having received any reply from the proprietor. The proprietor alleges that it had not received the communication under Rule 79 informing it about the filing of an opposition.
• "For the purposes of Rule 126(2) EPC, the present board therefore initiated a postal investigation concerning the delivery of the decision dated 6 April 2020 (parcel number: RD432322983NL), within one year from the date in which the decision was posted. The outcome of the investigation carried out by the responsible service provider was negative, as the postal provider could not track any delivery of the parcel to the addressee, and the parcel had thus to be declared lost. "
• "Since the EPO could not prove whether the registered letter reached the appellant, as required by Rule 126(2) EPC, it must be accepted that the legal fiction of deemed notification did not apply and the appellant became aware of the appealed decision for the first time with the email [*] on 26 June 2020. This date is therefore the date of notification of the decision. "
• * - "The appellant submitted that they had never received the opposition division's decision and that they had become aware of it and more generally of the opposition proceedings only by an email of an employee of the EPO, PA admemp patent FO Team Central Formalities MU, Dir 1.2.5.1 dated 26 June 2020, 6 pm."
• Email is not a valid means of communication. However, irregular notification (e.g. by email) is sufficient, under Rule 125(4), if the EPO can proof the date of receipt of the document.
• The appeal is admissible. The Board finds the course of events to be a violation of the right to be heard and sets aside the OD's decision.
• "The board does not disregard that Rule 126(2) EPC refers to a dispute ("im Zweifel", "en cas de contestation") for the EPO's burden of proof [i.e. only in case of "a dispute"has the EPO the burden of proof of delivery of the document], nor that the mere absence of the advice of delivery or the receipt from the file is not in itself sufficient to give rise to a dispute (see T 247/98, Reasons 2.1 and 2.6). However in this case the appellant when filing the appeal has immediately disputed having received inter alia the communication of the notice of opposition and the communication under Rule 79(1) EPC."
• "even in view of the above mentioned Notice of the European Patent Office dated 16 June 2019 concerning implementation of amended Rule 126(1) EPC (OJ EPO 2019, A57) [abolishing the advice of delivery], the requirements of Article 113 EPC must be complied with, so that before a negative decision revoking a patent is issued, it has to be established that the patent proprietor has been duly informed about the initiation of opposition proceedings."
• The term "advice of delivery" has a rather specific legal meaning, as discussed in G 1/14. 
• "In order to ensure a legally sound notification of the relevant documents, they could have even opted for a notification by public notice [i.e. in the Bulletin] according to Rule 125(2)(d) EPC in conjunction with Rule 129 EPC. The board is aware that under the applicable legal framework it was no longer required to enclose advices of delivery, or that a public notification would not have been required in the present case, because the letter was not returned (Rule 129(1) EPC). However, even if not required by law, nothing prevents the taking of additional measures to ensure legal certainty when there are serious doubts as to whether a procedurally relevant notification, such as the one concerning the notice of opposition, has actually reached the addressee."
• Note, the setup of Rule 129(1) EPC is that notification through the Bulletin requires two notification attempts by registered letter ("has proved to be impossible even after a second attempt") to protect the parties concerned.
• The OD should have noticed that no reply was received from the proprietor and should have checked if the first delivery attempt was succesful.
• A complication is that the proprietor is located in the USA and the representative withdrew during the opposition period before the opposition was filed. However, notification to unrepresented parties outside the EPC contracting states is routine under Rule 160(2) EPC (non-entry into the European phase). 

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1992/15 - New patentee

Key points

• The OD revokes the patent. The written decision is dated 10.08.2015. On 05.08.2015, a valid request for registration of a transfer of the patent was filed. The registration under Rule 85  was made on 14.08.2015 with effect as of 05.08.2015. 
• On 08.10.2015, a Notice of appeal was filed in the name of the first patentee.
• The Board decides that this appeal is inadmissible under Article 107.
• "Am 8. Oktober 2015 war die Clariant Finance (BVI) Limited daher nicht mehr Patentinhaberin und konnte demgemäß auch keine rechtswirksame Beschwerde einreichen."
• A second appeal was filed on 26.11.2015 in the name of the new patentee. This date is clearly outside the two-month period when calculated from 20.08.2015.
• However, here we enter EQE paper D territory. Namely, the question is whether the written decision of 10.08.2015 was validly notified to the patentee. Without a valid notification, the period for filing an appeal does begin (but a Notice of appeal can already be filed before the notification).
• "Die Zulässigkeit dieser Beschwerde hängt davon ab, ob die angefochtene Entscheidung der Einspruchsabteilung einer beschwerdeberechtigten Partei mindestens zwei Monate und 10 Tage vor Beschwerdeerhebung, das heißt vor dem 16. September 2015 (vgl. Artikel 108, Regel 126(2) EPÜ), wirksam zugestellt wurde - in diesem Fall wäre die Beschwerde vom 26. November 2015 verspätet und damit unzulässig - oder ob eine wirksame Zustellung später oder gar nicht erfolgt ist - in diesem Fall wäre die Beschwerde rechtzeitig eingelegt und damit zulässig. "
• The decision of the OD was notified to a professional representative. The question is if the representative was an authorized representative of the party that was the patentee, at the relevant date.
• The transfer of the patent was effective 05.08.2015, such that the decision could not be notified to the representative. Moreover, the request of 05.08.2015 mentioned a new representative for the new patentee.
• Hence, the second appeal was timely filed.
• For the admissibility of the Main Request, the Board applies Art. 13 RPBA 2007 because the first summons was issued before 01.01.2020.

 

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 1372/18 - Notification by letter

Key points

• In this opposition appeal, the patentee contests that it had never received the invitation under Rule 79(1) EPC (and hence, that it became aware of the opposition only with the revocation decision of the OD).
• As to whether the Rule 79 invitation had been notified, "the EPO was only able to confirm the proper dispatch of the relevant communication, stating that as more than six months since dispatch had elapsed, it was not possible to investigate whether notification had taken place (see F2911O of 18 May 2018)".
• The Board: "In the case at hand, the addressee contends that it never received the communication concerned and the EPO confirmed its inability to establish that the letter had reached its destination or indeed even to be able to investigate the notification process." 
• "In light of these circumstances the Board must conclude that the letter never reached the addressee. Thus, it was not notified as foreseen in Rule 79(1) EPC and hence it cannot have produced any legal effect. In particular, it did not give rise to the time limit for responding to the notice of opposition."
• This is a substantial procedural violation. The decision is set aside and the case is remitted.
•  As a comment, the Administrative Council had decided (CA/D 2/19) that as of November 2019, all notifications by post will be done with a normal "registered letter"  (i.e. without advice of delivery), also for decisions. Hopefully, the EPO will have set up a better system to proof delivery by then. 

EPO T 1372/18 - link




III. On the appellant's request for information in this matter, the EPO was only able to confirm the proper dispatch of the relevant communication, stating that as more than six months since dispatch had elapsed, it was not possible to investigate whether notification had taken place (see F2911O of 18 May 2018).

Reasons for the Decision

The Board's findings on the merits of the present appeal are as follows.

1. Rule 79(1) EPC foresees a communication setting a time period for filing observations to an opposition. No reminder or any other measure is provided to ensure that any response from a patent proprietor does indeed reach the file. This entails however the unintended consequence that a proprietor which does not receive the communication under Rule 79(1) EPC will not realise the omission, until - potentially - too late.

2. Relief is to be found in the provisions regulating notification, in particular Rule 126(2) EPC, which stipulates that "where notification is effected in accordance with paragraph 1 (i.e. notification by registered letter), ... in the event of any dispute, it shall be incumbent on the European Patent Office to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be".

3. In the case at hand, the addressee contends that it never received the communication concerned and the EPO confirmed its inability to establish that the letter had reached its destination or indeed even to be able to investigate the notification process.

4. In light of these circumstances the Board must conclude that the letter never reached the addressee. Thus, it was not notified as foreseen in Rule 79(1) EPC and hence it cannot have produced any legal effect. In particular, it did not give rise to the time limit for responding to the notice of opposition.

5. This conclusion necessarily leads to the following consequences, namely that the opposition procedure was tainted by a substantial procedural violation, which was the violation of the proprietor's right to be heard (Article 113(1) EPC), with the result that the decision resulting therefrom has to be set aside.

6. Since the appellant was not heard, the Board considers that the only reasonable way to exercise its discretion under Article 111(1) EPC is to remit the case to the opposition division. Indeed, were the Board instead to have decided to consider the claims underlying the contested decision, it would be doing so as both the first and the last instance; this approach is not considered as either equitable or procedurally appropriate, or indeed even compatible with the judicial character of the appeal proceedings (see also Article 11 RPBA).

7. In the circumstances of the case, the Board further considers it equitable that the appeal fee be reimbursed (Rule 103(1)(a) EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution.

3. The appeal fee is to be reimbursed.

T 1596/14 - Different notification dates

Key points

• In this opposition appeal, the Board gives the following comments obiter "Appellant I (patent proprietor) objected to the fact that the decision of the opposition division was sent to them with a date of 9 July 2014 and resent only to appellant II (opponent) at the later date of 22 July 2014. This situation arose because the opponent had changed address without the EPO being aware of this, so that the decision could not be delivered on the first attempt."
• " Thus, it appears that appellant II had nine days more than appellant I to file their grounds (and theoreti­cally eighteen days more with regard to the calculation of the time limit)." 
• " Nevertheless, appellant I did not provide evidence that this situation was detrimental to their position as ap­pel­lant. It is correct that in the present case appel­lant II knew appellant I's argumentation before filing their own statement of grounds" 
• " But there is no general rule that in each and every ap­peal proceedings the parties file their statement of grounds in the last minute of the last day of the time limit. In fact, the situation would have been the same if appellant I had filed their statement of grounds, for example, nine days before the expiration of the time limit, e.g. 10 November 2014 and appellant II then only filed their statement on the last day of the "first" time limit, i.e. 19 November 2014." 
• " There is no specific sanction or remedy foreseen in the EPC for this situation and it seems difficult to as­sume that appellant I's suggestion to re-send the decision with a new common notification date would be a remedy, since the parties are by now already aware of each other's arguments."  (I think the Board uses "now" to refer to the date of the appeal decision. Back in 2014, resending the written decision to both parties would have been an eminently sensible thing to do).
• " Appellant I further questioned form 23XX of 22 July 2014 in Epoline which suggests that the outcome of the opposi­tion proceedings was also notified to the patent proprietor on 22 July 2014 even though this was never received by appellant I: Form 23XX in an internal form with the addresses of the parties to the opposition proceedings and is presumably generated automatically by the computer systems in consequence of the second attempt to notify the opponent of the outcome of the opposi­tion procee­dings, once the valid address of the opponent had beco­me available." (I think that this means that actually in 2014, the formalities officer should have resent the decision to both parties as Form 23XX instructs).
• Furthermore, a request for apportionment of costs: " Appellant II objected to appellant I's fifteen requests filed with the grounds of appeal which were subse­quently reduced to only three requests one month before the oral proceedings before the board of appeal. [...] When taking into account the events during the opposi­tion procedure (see point 2.3 above), the board does not consider such requests to be excessive or that they constitute an abuse of procedure. In consequence, the request for the apportionment of costs for preparing a response to the fifteen requests filed with the grounds of appeal is refused. 

EPO T 1596/14 -  link

Appellant I is the patentee, Appellant II is the opponent.

Reasons for the Decision

1. Admissibility of the appeal of the patent proprietor

The opposition division's finding of lack of inventive step of claim 1 as granted starting from document D16 assumed that the feature ("in such a way that the force required for the securing of the insert pipe (21) in the second position is absorbed by the outer surface (4) of the pipe (1, 1*)") of claim 1 as granted was disclosed in document D16. Should this not be the case, then the opposition division's decision in this respect cannot stand as it is, because it necessarily does not take into account the new arguments con­cer­ning the above feature advanced by appellant I on appeal.

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.

T 1693/13 - UPS Tracking information again

Key points

• The appellant relied on the 10 days period for the Notice of appeal. However, the written decision was sent by the EPO using UPS. 
• [clarified and corrected:] The Board notes that this raises the question whether UPS delivery is with "registered letter with advice of delivery". The Enlarged Board in G 1/14 had held essentially that this is not the case. If it was not, the written decision was not notified according to Rule 126(1), in the then applicable version, and therefore the 10 day rule would not not apply. Hence, the notification would then be on the actual date of receipt, which was earlier and on the basis of Rule 126, the appeal would be filed late.
• The Board observes that the EPO had started using UPS before Rule 126 EPC was changed to accommodate expressly for using UPS rather than the post, and invokes the principle of legitimate expectations to deem the appeal to be timely filed. 

EPO T 1693/13 - link

Entscheidungsgründe

1. Zulässigkeit der Beschwerde

Die Zwischenentscheidung wurde am 27. Mai 2013 an den UPS-Dienst übergeben. Der Empfang der Zwischenentscheidung wurde per "UPS Tracking Information" und Empfangsbescheinigung (EPA-Form 2933) jeweils am 28. Mai 2013 bestätigt. Die Beschwerde wurde am 1. August 2013 eingelegt.

Die Beschwerdegegnerin hat argumentiert, dass die Beschwerde nicht bis spätestens dem 29. Juli 2013 (Montag), d.h. nicht innerhalb der Zweimonatsfrist gemäß Artikel 108 EPÜ eingelegt worden war und damit als unzulässig zu verwerfen sei. Die Beschwerdeführerin hat diesem Argument unter Hinweis auf Regel 126(1) und (2) EPÜ widersprochen.

T 2054/15 - Receipt of decision

Key points

• In this appeal case, the Statement in grounds was filed in time from the date the professional representative had signed the acknowledgment of receipt form, but late filed from the date a person had signed the postal advice of delivery. The professional representative submits that that person was not autorized to sign for receipt, and was not an employee of him. The case seems to turn on the particular facts, e.g. the later postal advice of delivery for the summons for oral proceedings were signed by the same person.
• " The Board holds the view that persons authorised to receive registered letters addressed to representatives are not required to formally be their employees. This corresponds to the actual situation in most representatives' firms. There is not even a legal requirement that these persons be personally known to the representatives. These elements therefore do not demonstrate that a person lacks authorisation to receive notifications addressed to the representatives." 

EPO T 2054/15 -  link

Summary of Facts and Submissions

I. The appeal concerns the decision of the Examining Division dispatched on 19 June 2015 refusing European patent application No. 08842168.0.

A postal acknowledgement of receipt of the decision, signed on 26 June 2015 by Ms. [S], "empleada", was returned to the European Patent Office (EPO) on 3 August 2015. EPO Form 2936 acknowledging receipt of the decision, signed on 2 July 2015 by Mr. Alberto Alvarez, was returned to the EPO on 8 July 2015.