T 0748/24 - Filing no reply as proprietor in appeal - patent revoked

Key points

• The OD decided to maintain the patent in amended form. The opponent appeals. The proprietor does not reply to the communication setting the time limit for filing a reply to the Statement of grounds (with a registered letter).
• No acknowledgement of receipt is visible either, but I understand that those are no longer used. I understand the EPO has some internal information about the delivery of registered letters by the postal service provider (or can obtain such information) but that information is never visible in the public online file. 
• If the proprietor disputes the receipt or delivery of the letter, a petition for review could be successful (see R 7/09). 
• The Board revokes the patent without holding oral proceedings and without advance notice.
• The Board does examine the opponent's argument on the merits and agrees with them. 
• No petition for review was filed.

EPO 

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

T 0194/21 - Incorrectly applying the 10 day period

Key points

•  The OD issued the impugned decision on 12 June 2020. The Statement of grounds was filed 5 May 2021, too late, but only 9 days late. 
• The reason is that the notification of the decision to the opponent with a registered letter failed twice. The decision was then notified by public notice, i.e. by the publication of a notice in the European Patent Bulleting on 25 November 2020, cf. Rule 129(1) EPC.
• The decision is therefore deemed to be notified one month after the publication (Rule 129(2) EPC and Dec. Pres. OJ 2007 SE 3, K.1)
• The period for filing the SoG, therefore, expired Monday 26 April 2021 (R.134(1)).
• The professional representative filing the SoG probably added the 10 day period of Rule 126(2), but that period of course only applies for notification by post. Moreover, the professional representative (who is "grandfathered"* it seems) probably added the 10 day period at the end, so 25.12.2020 + 4 m = 25.04.2021 + 10 d =  05.05.2021.
• The Board finds that the appeal is inadmissible as late-filed.
• The professional representative had laid down representation shortly before the hearing before the OD, the opponent is located in an EPC Contracting State, so the decision of the OD was to be notified to the opponent.
• * = due account should be given to "the racist roots of the term “grandfather” protection"  https://www.americanbar.org/groups/litigation/committees/real-estate-condemnation-trust/practice/2021/grandfather-clause-racist-origins/ 

EPO T 0194/21 

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

T 0128/18 - Notification and representative

Key points

• The question is whether the appeal is admissible, which hinges on the question whether the revocation decision of 06.12.2017 was properly notified to the patentee, as the Notice of appeal (including a Statement of grounds) was filed on 20.12.2017.
• Patentee argues that the revocation decision was notified to the wrong representative. 
• As to the facts: “In [first instance] opposition proceedings, the patent proprietors' registered representative (in the following "the original representative") authorised a further representative (in the following "the further representative") to take part in the oral proceedings which took place before the opposition division on 8 October 2010.” The OD decided that the patent could be maintained in amended form. “The patent proprietors' original representative authorised the further representative to file the appeal and to conduct the appeal proceedings.” Subsequently, all appeals were withdrawn and the appeal was closed without decision. The OD then sent the Rule 82 Communication for filing the translated claims. No response was received, also not with surcharge and the patent was revoked.
• During oral proceedings before the Board “it was discussed whether it could be derived from the letters of the original representative dated 8 September 2010, 30 September 2010 and 18 January 2011 that the further representative was merely sub-authorised to act before the EPO only at the oral proceedings of 8 October 2010 in opposition and then again at the subsequent appeal proceedings, but not in the post-appeal opposition proceedings. Although the Board would not doubt the appellants' good faith when declaring that this was their intention, the Board was nevertheless unable to find literal and/or unequivocal support for that understanding in any of the documents on file.”
• The Board then notes that the "further representative" had acknowledged receipt of the Rule 82(3) Communication "without indication that something was amiss" .
• “If any doubt could have persisted as to the identity of the appellants' representative, and thus of the correct recipient of notifications at that stage, the appropriate course of action would have been for either the original or the further representative to have clarified the matter with the EPO. In the absence of any action or indication to this effect, the Board can only conclude that notifications were continued to be correctly addressed to the further representative.”
• “From the above reasoning, it follows that the present appeal was filed and the relevant fee was paid after expiry of the period foreseen in Article 108, first sentence EPC. Therefore the appeal is deemed not to have been filed and the appeal fee has to be reimbursed.”
• The patentee confirmed that re-establishment was not requested.

EPO T 0128/18 -  link

Summary of Facts and Submissions

I. The present appeal was filed by the patent proprietors (appellants) against the revocation decision pursuant to Rule 82(3) EPC dated 6 February 2017 and concerning the European patent N° 1 461 509.

II. The notice of appeal, containing also a statement of grounds, was filed on 20 December 2017. The appeal fee was paid on the same date.

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.

G 0001/14 - Refund appeal fee (inadmissible)

EPO G 1/14 (EPO G1/14)

For the decision, click here [A] / DE (24.11.2015)

Key points

• The Enlarged Board declares the referral in G 1/14 inadmissible.
• The referring Board had assumed that the notice of appeal had been filed after expiry of the time limit for doing so (and the same for the appeal fee) and had referred a question about whether the appeal was therefore inadmissible or deemed to be not filed (and hence, whether the appeal fee was to be refunded).
• The Enlarged Board notes that the appeal was in fact filed in time, because within 2 months of actual receipt by the professional representative. The decision had been delivered 12 days earlier at the office of the professional representative, however by UPS (with " tracking information"  and signature for receipt by some person) and not by post. The Enlarged Board finds that delivery by UPS not a notification by registered letter with advice of delivery is, as required under Rule 126(1) EPC (as it then was). The amicus curiae submission states that therefore,  Rule 125(4) EPC applies and the date of notification is the date of actual receipt by the professional representative (as reviewed in paragraph. X of the decision) [update 13 Oct 2016].
• The reasons why delivery by UPS is not the prescribed notification by registered letter with advice of delivery are explained by the amicus curiae submission of Dr. Hans Wegner. Essentially, the term "advice of delivery" refers to the advice of delivery as regulated in the Universal Post Convention of 1878 (text included in said amicus curiae). 
• Hence, an answer to the referred question was not " required"  and the referral is inadmissible.
• In the meantime, Rule 126 has been changed precisely to allow for notification by delivery services (CA/D 6/14 of 15.10.2014 (OJ EPO 2015, A17), in force as of 01.04.2015).
   
• Note that  the proceedings for G 2/14, about basically the same question, have been terminated.
• Please note further that the referring technical Board is of the opinion that document is deemed to have been notified upon the date of receipt by Mr./Ms. Weber (who had signed for receipt) pursuant to Rule 125(4) EPC (communication of 4 August 2016) [update 13 Oct 2016].

OJ 2015/4: Notice about mailbox (OJ 2015, A36)

Notice of the European Patent Office dated 30 March 2015 concerning amendments to Rules 2, 124, 125, 126, 127, 129, 133 and 134 EPC, and the decisions of the President of the European Patent Office dated 11 March 2015 on the late receipt of documents and on the pilot project to introduce new means of electronic communication

OJ 2015, A36

• The implementing regulations have been changed to replace "post" by "postal services", so that the EPO can use commercial post services.
• Rule 127(2) now specifies the 10-day rule for electronic communications. Note that in case of delivery in the Mailbox after the printed date, the 10 period is (apparently) added, based on Art 9(4) of the Decision about Electronic Communication (OJ 2015, A28). (Point 3.2 of the Notice). For paper notifications, this is not the case: if received after more than 10 days, the time limit runs from the date of actual receipt.