J 0010/20 - Covid extension lacks clear legal basis but saved

 Key points

• The extension of periods from 15 March to 2 June 2020 by way of  Notice of the EPO (OJ 2020, A60) because of Covid-19 by the president was adopted under Rule 134(2). However, Rule 134(2) requires “a general dislocation in the delivery or transmission of mail” in Germany or The Netherlands and post was actually delivered without significant disruptions in that period.
• The Legal Board, when deciding whether the appeal at issue was filed in time: “Rule 134(2) EPC, however, does not refer to a "general dislocation" as such [as mentioned in the Notices of the EPO ], but to a "general dislocation in the delivery or transmission of mail". The [Notices] are silent on whether there was a general dislocation in the delivery or transmission of mail in the Federal Republic of Germany. It thus seems likely that these Notices are based on an application of Rule 134(2) EPC by analogy []. Ultimately, however, this question can be left open.”. 
• The Legal Board then turns to the principle of legitimate expectations. “even if there was no general dislocation in the delivery or transmission of mail in the Federal Republic of Germany during the relevant period, and even if it were not possible to apply Rule 134(2) EPC by analogy under the given circumstances, users could still rely on the information on the extension of time limits provided in the Notices of the European Patent Office without suffering any disadvantages” because under G2/97, “Users must not suffer a disadvantage as a result of having relied on erroneous information received from the EPO”.
  
  
• The appeal concerns the rejection of a RE request because the RE fee was not paid in time, according to the Receiving Section, and the underlying question of whether the further processing fee was paid in time.
• The applicant gave a payment order “on [the last day of the period, a Friday] by a Brazilian bank which has a subsidiary in one of the contracting states to the EPC, namely the United Kingdom. Therefore, the fee should be considered to have been paid in due time under Article 7(3) of the Rules relating to Fees [according to the applicant].” The money entered the EPO bank account on the next Monday.
• There was an Italian lawyer under ARticle Article 134(8) appointed, but that representative did not submit a debit order and indicated that the payment would be made by bank transfer.
• The Board: “under Article 7(3) of the Rules relating to Fees it is of no relevance whether the banking establishment through which payment is made has a subsidiary in one of the contracting states or not. What matters is whether the payment, through a banking establishment, was made in a contracting state (see T 401/97, points 4 and 5 of the Reasons). In the present case, the order to transfer the amount of the payment was given in Sao Paulo, Brazil, and therefore not in a contracting state. Article 7(3) of the Rules relating to Fees is thus not applicable.”
• The RE request is considered to be not filed in the two-months period. “ Even if the cause of non-compliance had, as alleged by the appellant, only been removed on 11 March 2019, the prescribed fees for re-establishment of rights were still only paid on 17 February 2020. This would in any case be long after the expiry of the two-month time limit under Rule 136(1) EPC.”
• The removal of the cause of non-compliance was actually 1 February 2019 when the appointed representative was informed by the EPO, not 11 March 2019 when the applicant, a natural person in Brazil was allegedly informed of the situation.
• A letter with a request for re-establishment ('Memorandum in support of the request for further processing'  but referring to all due care) was filed 31.03.2019.
• The re-establishment fee was (according to the decision) paid with the Notice of appeal. The submitted Form 1038E indicates the debit order for the appeal fee.
• The impugned decision of the Receiving Section indicates that the RE request is deemed to not have been filed (at that time, the fee had not been paid) and that the European patent application is deemed to be withdrawn with legal effect of a certain date (expiry of the original period) and that all fees paid after the date of legal effect will be refunded once the decision becomes final. 
• The EPO had issued a Notice under Rule 51(2) concerning the renewal fee for the 3rd year in the course of the proceedings.
• The renewal fee for the 4th year was paid in the course of the appeal proceedings.
• The original period was for the fees under Rule 159. The Italian lawyer had only filed the translation(s) and the  Form 1200 Request for entry into the European phase, indicating that the fees would be paid by bank payment and not including a debit order.

EPO Headnote

If the European Patent Office issues a promise or statement on how to act in a given area, the principle of legitimate expectations requires that promise or statement to be honoured unless there is good reason not to do so. Users and representatives cannot be expected to question, without any apparent reason, statements on the extension of time limits which are made in publications under Rule 134(4) EPC. Even in the absence of a general dislocation in the delivery or transmission of mail, they can rely on such publications without suffering any disadvantages

EPO J 0010/20 J10/20 J 10/20

https://www.epo.org/law-practice/case-law-appeals/recent/j200010eu1.html

Summary of Facts and Submissions

I. The appeal of the applicant (appellant) lies against the decision of the Receiving Section of 5 December 2019 on European patent application No. 16874169.2. In this decision, the appellant's request for re-establishment of rights into the period for filing a request for further processing was deemed not to have been filed and the European patent application was deemed to be withdrawn with effect of 17 July 2018.

II. On 16 July 2018, the appellant filed Form 1200 for entry into the European phase of the international application No. PCT/BR2016/050317.