T 1278/23 - Re-establishment

Key points

• The proprietor missed the time limit for filing a notice of appeal (and paying the appeal fee, i.e. filed neither a notice of appeal nor paid the appeal fee) and the time limit for filing a Statement of grounds.
• The proprietor files two re-establishment requests (not on the same date, incidentally).
• The re-establishment request for the appeal period was rejected because "all due care" was not proven. The appeal fee, paid with the re-establishment request, is reimbursed.
• There is only one re-establishment fee due for the appeal fee and the Notice of appeal together. 
• The re-establishment request for the statement of ground is rejected as inadmissible. The (second) re-establishment fee paid for this re-establishment request is not refunded.

EPO 

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

J 0003/23 - (Not) remedying formal deficiencies in the drawings

Key points

• An application is refused because a deficiency in the drawings was not corrected in time in reply to a communication of 24.08.2021 under R.58, setting a two-month time limit. 
•  "On 15 December 2021, the appellant (applicant) submitted ten pages with the corrected ten drawings".
• "By decision of 21 December 2021 (which was handed over to the EPO postal service on 14 December 2021), the Receiving Section refused the application pursuant to Article 90(5) EPC because the deficiencies had not been corrected in due time."
•  As a comment, I think a fair and reasonable application of the EPC would be to make the decision based on an ex nunc examination, i.e., based on the file's status as it was on the decision day. In other words, the corrected drawings could and should have been accepted. However, the current position in the case law might be different.
• The applicant requests re-establishment. The Receiving Section refuses the re-establishment.
• Note that under J 18/08, the applicant could also have filed an appeal and then filed the drawings (again) with the Statement of grounds as a safe remedy (as I understand it, the principle to J18/08 applies to all refusals of applications for formal deficiencies).
• The applicant could also have filed a divisional application during the period for filing an appeal, which is probably cheaper (only the filing fee; the search fee will be refunded in the parent case)
• The applicant appeals the refusal of the re-establishment.
• The appeal is inadmissible for lack of substantiation.
• By way of obiter remarks, the Board also indicates that the appeal is not allowable even when reviewing the applicant's submissions before the Receiving Section.

EPO 

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

T 2012/20 - Who signs the notice of appeal

Key points

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

EPO 

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

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.

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 1/20 - Removal of cause of non-compliance

 Key points

• The Legal Board expressly abandons the established line of case law, according to which the date of removal of the cause of non-compliance under Rule 136 EPC is determined with reference to “the date on which the person responsible for the application is made aware or ought to have become aware of the fact that a time limit has not been observed.”
• “In the appealed decision the Receiving Section followed the approach developed in a substantial body of case law of the Boards of Appeal, according to which, for determining admissibility of a request for re-establishment, the relevant date is that on which the responsible person ought to have noticed the error, had all due care been taken”
• “The line of jurisprudence requiring that "removal" under Rule 136 EPC is assessed on account of the due care applied by the responsible person, essentially relies on the consideration that due care is a permanent obligation, which must be exercised not only at the moment when the time limit has not been observed, but also subsequently”
• “The Board doubts that this approach correctly reflects the requirements for re-establishment of rights laid down in Article 122 and Rule 136 EPC. Whereas due care may be regarded as a permanent obligation of a party to the proceedings in general, no legal basis is apparent for applying the due-care requirement in assessing the admissibility of a request for re-establishment.”
• “the established approach is not based on the wording of the EPC. The admissibility criteria in accordance with Rule 136 EPC (see point 1. above) are of a purely formal nature and are clearly distinct from the substantive requirements established by Article 122(1) EPC for allowability”
• “Second, as a consequence of this approach, due care is assessed in the context of the circumstances related to the removal of the cause of non-compliance [], rather than of those concerning the missed time limit ” [Note, this sentence appears to refer to the admissibility of the RE request]
• “However, Article 122 EPC refers to due care only in respect of missing a time limit. The removal of the cause of non-compliance is distinct from missing a time limit vis-à-vis the EPO. ”
• “Based on this analysis the Legal Board considers that the established approach does not lead to a correct determination of the date of removal. Instead the Legal Board deems that, for the purposes of establishing the admissibility of a request for re-establishment of rights under Rule 136 EPC, the legal due-care criterion must not be relied on when determining "removal".
• “In the Board's view, removal of the cause of non-compliance with the period is a purely factual criterion. Removal occurs on the date on which the person responsible for the application/patent (normally the authorised representative) becomes aware of an error. If a loss-of-rights communication is served there is (i) a presumption that removal occurs on the date of receipt of such communication and (ii) an obligation for the recipient not to ignore it, and to take action. This presumption is, however, rebuttable, in the sense that it is valid unless, due to exceptional circumstances, the cause for non-compliance persisted. Taking into account this exception and although it substitutes real facts, such a presumption is not unfair to the parties”
• As a comment, the presumption suggests that the burden of proof is initially on the EPO to show that the RE request is late-filed, not on the requester to show that it is timely. Only if the presumption applies, the burden of proof is shifted to the requester. The obligation that the Board appears to be referring to is not entirely clear to me; perhaps it is simply the two-month period of Rule 136, but then logically there is no obligation if the exception applies that "the cause for non-compliance persisted".

Headnote


1. The established approach of applying the due-care criterion to the question of removal of the cause of non-compliance under Rule 136 EPC leads to an additional admissibility requirement, by expanding the scope of the substantive due-care criterion, which has no basis in the EPC.

2. Removal of the cause of non-compliance is a question of fact which occurs on the date on which the person responsible for the application or patent actually became aware of an error (actual knowledge), rather than when this person ought to have noticed the error (presumption of knowledge).

3. Pursuant to Article 122(1) EPC, if failure to observe a time limit is due to an error of fact, the due-care criterion is to be assessed only in the context of the merits of a request for re-establishment of rights.

4. The same applies if failure to observe a time limit is based on an error of law. Thus, the due-care criterion is to be assessed only in the context of the merits of the request and removal of the cause of non-compliance occurs when the responsible person actually became aware of the error of law.

J 1/20 - J 0001/20

https://www.epo.org/law-practice/case-law-appeals/recent/j200001eu1.html

T 0538/20 - Filing problems in house last day

Key points

• The appellant tried to submit a Statement of grounds on the last day of the period by fax.
•  “ At 18.48 hrs on the day of the deadline its in-house representative had started to submit the letter setting out the grounds of appeal via fax using the computer fax equipment installed at the appellant's office. Since the representative had not yet received a confirmation of receipt or a notice that sending had failed, he sent the letter again at 20.27 hrs in the same way. After sending the second fax, the representative left the office. The next day he found two "delivery delayed" reports received at 22.58 hrs (for the first fax) and 00.27 hrs (for the second fax). The representative then informed the appellant's IT expert, who found that the computer fax equipment used at the representative's office was limited to a maximum file size of 10 MB and that the letter to be sent on 2 June 2020 had a size of 14 MB, attachments included.”
• “the [fax] capacity had been inadvertently reduced from 50 to 10 MB when the appellant's telephone system was updated by an external technician between 22 and 25 April 2020; the appellant had not noticed this. Once the IT expert had reset the limit to 50 MB, the letter was sent to the EPO without issue at 11.02 hrs on 3 June 2020. The appellant was of the opinion that it missed the time limit because of a unique and unintended misconfiguration of its computer fax equipment. ”
• The Board: “Despite there being other ways to send documents to the EPO, for example online filing, the appellant relied solely on the functioning of its computer fax system. Since these technical systems can be prone to faults, this alone makes the board question whether this satisfies the requirements of due care. This applies all the more in a time when technical support is not readily available.”
• As a comment, I'm not sure if the Board here says that due care generally requires that an in house professional representative acting as employee under Article 133(3) EPC (as in the present case) has an EPO smart card and EPO Online Filing installed at his office computer when filing a submission on the last day of a period. I also note that Online Filing can not be used without smart card (same for CMS) and that a smart card can not be obtained within a day. Furthermore, the EPO President has decided to not make WebForm filing unavailable in appeals for reasons which are unclear at least to me even more since the EPO itself wishes to phase out fax due to unreliability.  
• As a puzzle, what could the in house attorney have done to meet the deadline on the evening of the last day? There are certainly solutions but calling a patent attorney working at a firm is a helpful first step. 

T 0538/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t200538eu1.html

Summary of Facts and Submissions

I. The appeal is against the opposition division's decision posted on 2 January 2020 rejecting the appellant's opposition against the European patent No. 2 542 286 entitled "VENTILATION DEVICE".

II. The appeal was filed on 28 February 2020, followed by the statement setting out the grounds of appeal dated 2 June 2020 and received on 3 June 2020.

T 1663/12 - A (reportedly) billion dollar re-establishment case

 Key points

• This is an older case wherein a Notice of appeal was filed late and the Board refused the request for re-establishment. In the resulting litigation, the patentee reportedly alleged a loss of profits of about €1 billion
• However, the decision has become topical again because of this news item at ManagingIP (link):  “BASF targets [patent attorney firm] in €1bn row over missed patent deadline”.
• Managing IP writes that according to documents seen by them, BASF alleges that the total “loss of profits” suffered by BASF as a result of the revocation of the patent was €1.05 billion. The trial was reported to begin on 16 April 2021. Managing IP writes that the  “firm admitted it was responsible for the loss of the appeal”. However, reportedly the firm stated that the patent at issue was a “classic example” of the patentee trying to “over-reach its attempted scope of monopoly, followed by a series of futile attempts to add in limitations that could not have saved the claims”, Managing IP writes. 
  
• Managing IP mentioned the expiry date of the patent which allowed me to search for the filing date and the applicant. These matched with the Board decision below. 
• Addendum: see also this article: https://www.juve-patent.com/news-and-stories/cases/basf-sues-carpmaels-for-damages-over-missed-appeal-deadline/
• Addendum 01.11.2021: the damages claim was rejected by the UK High Court, in first instance, see here: https://www.bailii.org/ew/cases/EWHC/Ch/2021/2899.html 
• Addendum: the case was settled for nominal damages of £1 according to https://www.juve-patent.com/news-and-stories/people-and-business/basf-and-carpmaels-settle-missed-appeal-deadline-case/ 

https://www.epo.org/law-practice/case-law-appeals/recent/t121663eu1.html

http://k-slaw.blogspot.com/2013/02/t-166312-drop-dead-appeal.html 

https://register.epo.org/application?number=EP04779814&tab=main 

[...]

19. The appellant further argued that in assessing the requirement of "all due care" under Article 122(1) EPC it should be borne in mind that the notice of appeal was filed only a short time after the due date and that the public should have been aware that an appeal would be filed. The present Board does not share the appellant's opinion that the principle of proportionality can be applied when assessing the requirement of "all due care" under Article 122(1) EPC. Rather, it takes the view that the requirement of "all due care" means that only circumstances which happened before the time limit expired can be considered or, in other words, the obligation to exercise "all due care" must be assessed in the light of the situation as it stood before the time limit expired (see decisions T 1465/07 of 9 May 2008, reasons, point 16, and T 439/06 of 31 January 2007, reasons, point 15).

20. In considering the requirement of "all due care" under Article 122(1) EPC, the Boards have ruled in numerous decisions that the circumstances of each case must be looked at as a whole (see e.g. decision T 1465/07 of 8 May 2008, reasons, point 18). In the present case, looking at the whole series of failures and mistakes which took place, the Board sees no basis to argue that the failure to meet the appeal time limit could be considered an isolated mistake in a well functioning time monitoring system.

Final conclusions

21. As, therefore, the circumstances of the present case do not satisfy the requirement of "all due care" pursuant to Article 122(1) EPC, the request for re-establishment must be refused. Consequently, both the notice of appeal and the payment of the appeal fee were belated and the appeal is deemed not to have been filed pursuant to Article 108, first sentence, EPC. Furthermore, as there is no appeal in existence, the appeal fee must be reimbursed (decision J 21/80 of 26 February 1981, reasons, point 4, OJ 1981, 101, decision T 493/08 of 29 September 2009, reasons, point 7).

ORDER

For these reasons it is decided that:

1. The appellant's request for re-establishment of rights is refused.

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

3. The appeal fee is reimbursed.

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.

T 1060/19 - Appeal fee

Key points

• The appellant pays the appeal fee in January 2019 at the reduced rate with a debit order in Form 1038 by mistake, it is not an SME. The PDF letter and the remarks of the Form contain a statement that purports to be a debit order in case of underpayment.
• To recap some relevant case law: T 3023/18 considered the underpayment to be no small amount lacking and held that the EPO has no duty to carry out any ex officio enquiry to determine an appellant's entitlement to pay the reduced appeal fee. The fact that the ‘SME declaration’ was missing in that case, did not change this. The Board in T 3023/18 that it is the practice of the Boards of Appeal to accept such declarations at any time during the appeal proceedings. See J8/18 about the EPO Notice OJ 2018, A5 which suggest a requirement for an SME declaration; the Legal Board recalled that “the Board is in no way bound by Notices from the EPO concerning the application or interpretation of legal provisions”. According to J8/19, debit orders can be corrected (see also T 1000/19). According to T2575/19, the validity of a debit order in the remark field of Form 1038E is not ruled out under the ADA in the version valid until 1 October 2019.
• In my view, the present decision does not (expressly) contradict the above case law or departs from that case law. 
• The present appellant argues that the remark in the PDF letter was a valid debit order, because the SME declaration was omitted. I note that the decision does not comment at all on the requirement in the ADA that “debit order must be filed in an electronically processable format (XML)” (point 5.1.2 ADA 2017)
• The present Board undertakes an extensive investigation of whether "the authorisation given in the letter accompanying the notice of appeal, "In case of underpayment ... to debit the legally prescribed amount from our deposit account" had become effective before expiry of the appeal period". I think the Board is here perhaps implicitly applying the conclusion of T2575/19, that a debit order in the remarks tab of Form 1038 (filed before 01.10.2019) is not invalid merely because it is in the remarks tab. 
• The Board: “This would have required the EPO to be in a position before the end of the appeal period to recognise the underpayment, i.e. the fact that the appellant was not eligible for the reduced appeal fee”. The appellant argued that this was the case, because it had not filed the SME declaration, pointing out that EPO Notice OJ 2018, A5 states that "the [SME Declaration] must be filed at the latest by the time of payment of the reduced fee for appeal".
• The Board notes that: “points 3 and 4 of the Notice do not merely interpret decision CA/D 17/17 of the Administrative Council [OJ 2018, A4; i.e. amended Rfees2(1)11], but impose additional duties, i.e. in particular an express declaration (point 3) to be made by the date of payment at the latest (point 4). An assessment must be made therefore of whether legal concepts or legal provisions other than decision CA/D 17/17 provide a basis for these duties.” Implicitly the Board here appears to consider these additional requirements in the Notice to lack legal basis in amended Rfees2(1)11.
• The Board then (immediately) turns to 'legitimate expectations' (which is in my view not legal basis per se) and concludes that this principle does not apply. However, the Board adds that “the board will nevertheless assume arguendo that the provisions of the Notice that are pertinent to the present case are binding.” However, the Board reasons that the provisions of the Notice, when properly interpreted, do not give basis for a legitimate expections as argued by the appellant.  The Board, in particular, notes that point 11 of that Notice allows for remedying a missing declaration until the expiration of the appeal period, such that the Notice does not actually require filing the SME declaration at the latest when paying the appeal fee, as argued by the appellant.
• “The appellant's attempt to convert the EPO's correct response to the appellant's mistake into improper conduct, on the basis of certain provisions of the Notice (points 3 and 4) taken out of their context (point 11), must fail, regardless of the doubts as to their legal basis.
• Note that this whole analysis is about a debit order in the 'Remarks Tab', which is in any case excluded in the ADA in force as of 01.10.2019.

• The Board refuses the request for re-establishment. The representative had signed the Form 1038 himself (at least his signature is placed on it) and had made a mistake. Excessive workload (200 billable hours in one month; the attorney works at the Munich branch of a large USA patent firm; it is not said what he normally bills monthly) is no ground for RE. “Diligent representatives must make sure that the workload they accept is not excessive, i.e. does not go beyond their capacity to carry out the corresponding tasks properly. Otherwise they must bear the consequences of mistakes caused by an excessive workload.”

EPO T 1060/19 -  link

Summary of Facts and Submissions

I. The notice of appeal and the request for re-establishment of rights

[The following text has been taken verbatim from part A of the board's communication annexed to the summons to oral proceedings of 25 November 2019.]

1. The notice of appeal of 28 January 2019

With a letter of 28 January 2019 the applicant gave notice of appeal against the decision by the examining division of 28 November 2018 refusing European patent application 12 855 099.3. The penultimate paragraph reads as follows:

The appeal fee in the amount of EUR 1,880.00 shall be debited from our deposit account no. ... . In case of underpayment and/or missing fees, the EPO is also authorized to debit the legally prescribed amount from our deposit account no. ... .

The EPO form entitled "Letter accompanying subsequently filed items", in its "Fees" box 15-1, was filled out as follows:

"11e Appeal fee for an appeal filed by a natural person or an entity referred to in Rule 6(4) and (5) EPC", together with the total "Amount to be paid" of "EUR 1 880.00".

At the bottom of the letter, under the heading "Annotations", the appellant has added the following statement:

Authorization in case of underpayment and/or missing fees([Name representative]; 27.01.2019)
1. Remark(Annotate)
In case of underpayment and/or missing fees, the EPO is authorized to debit the legally prescribed amount from our deposit account no. ... .

T 1426/14 - RE refused, renewal fee refunded

Key points

• The applicant had failed to pay the renewal fee with surcharge during his appeal against the refusal of the application. He requests re-establishment. The Board refuses the request due to lack of due care. As part of the RE request, the omitted act was completed as prescribed and hence the renewal fee with surchare was paid.
• The Board orders the refund of the renewal fee at issue (including the surcharge). 
• “Therefore [...]  the request for re-establishment of rights has to be refused. This means that the loss of rights communicated on 7 February 2019 has become final and the application is deemed to be withdrawn. Since the renewal fee for the 9**(th) year and the additional fee were paid after the loss of rights occurred, they were paid without legal basis and therefore have to be reimbursed.”
• As a comment, Rule 136(2) EPC prescribes that the renewal fee must be paid as part of the omitted act. Still, in line with G 1/18, it is correct to say that the renewal fee was “paid without legal basis” and is reimbursed.
• The Board is competent to decide on the RE request, instead of the examining division.
• “The noting of loss of rights was issued by the formalities officer on behalf of the examining division. At that time, however, the appeal proceedings were pending. Thus the loss of rights resulting from the failure to pay the renewal fees occurred in the course of the appeal proceedings. Given that with the commencement of the appeal proceedings, the competence to decide on the case has moved from the department of first instance to the Boards of Appeal [], the Board is competent to decide on the request for re-establishment of rights [].” This illustrates the devolutive effect of appeal.
• The order on the main appeal is that " The appeal proceedings are terminated"
• The renewal fees paid during the main appeal in the period 2014-2018 are not refunded (the file does not indicate such a refund, 09.11.2020) even though the Examining Division's refusal decision in 2014 is now final. 

About due care  for renewal fees and clients using payment service companies

• In case the applicant uses a payment service company and the European professional representative is instructed to pay no renewal fees: “However, in the present case, the representative was informed about the applicant's intentions and he could be sure that the applicant was aware of the running time limit. Once the applicant had clearly indicated that he had taken note and that he would pay, the representative had fulfilled his obligations and the responsibility shifted to the applicant.”
• “ All due care of an applicant in such a situation requires that he carefully studies the letters he receives from his consultants and gives the required instructions in good time.”
• “The Board does not concur with this view because that mistake [of the applicant] could have been avoided if the applicant had properly read the correspondence sent to him by his consultants [letter from professional representative], which is to be expected from a careful applicant taking part in business life.”

EPO T 1426/14 -  link

Reasons for the Decision

Board's competence to decide

1. According to Rule 136(4) EPC the department competent to decide on the omitted act shall decide on the request for re-establishment of rights. The noting of loss of rights was issued by the formalities officer on behalf of the examining division. At that time, however, the appeal proceedings were pending. Thus the loss of rights resulting from the failure to pay the renewal fees occurred in the course of the appeal proceedings. Given that with the commencement of the appeal proceedings, the competence to decide on the case has moved from the department of first instance to the Boards of Appeal (T 473/91, OJ EPO 1993, 630, Reasons 1.2), the Board is competent to decide on the request for re-establishment of rights (T 555/08, Reasons 2; see also T 936/90, Reasons 1; T 1381/11, Reasons 2; T 649/13, Reasons 3 and T 1201/10, Reasons 1).

T 1222/19 - Wrong appeal fee paid

Key points

• The applicant files a Notice of appeal and pays the appeal fee at the reduced rate for SME's (the Notice and debit order (Form 1038E) are signed by in house counsel). The Board requests evidence of the SME status. The applicant in reply acknowledges that it is not an SME and requests re-establishment of rights.
• The Board decides that the appeal is deemed not to have been filed. 
• The request for re-establishment is refused because all due care has not been shown. The Board recalls that an error of a representative is "grundsätzlich nicht entschuldbar" .
• In this case, the representative had asked the assistant to fill in the debit order (with Online Filing Software) using the normal appeal fee. However, because the amount of the reduced rate was the same as the normal (only) fee rate until the fee increase of 1 April 2018, the assistant chose the familiar amount and the attorney did not spot the error when signing. 
• The appeal fee is refunded. 
• As a comment, the Board does not discuss the 'good faith' principle that the EPO should inform parties of easy-to-spot errors if there is still time for correcting the error. I note that the appealed decision was dated 15.11.2018, the Notice of appeal was filed 03.01.2019 without a declaration of SME status (see J8/18 about this SME declaration, see T 0703/19 about "good faith" being available as remedy for payments of appeal fees).

EPO  T 1222/19 - link

Sachverhalt und Anträge

I. Die Beschwerdeführerin wendet sich gegen die am 15. November 2018 zur Post gegebene Entscheidung der Prüfungsabteilung, mit der die Anmeldung Nr. 07 857 786.3 zurückgewiesen wurde.

II. Am 3. Januar 2019 reichte die Beschwerdeführerin Beschwerde gegen die Entscheidung der Prüfungsabteilung ein und zahlte am gleichen Tag den für kleinere und mittlere Unternehmen (KMU) i.S.v. Regel 6 (4) a) und (5) EPÜ geltenden, ermäßigten Betrag für die Beschwerde­gebühr i.H.v. EUR 1.880,00 anstelle des regelmäßigen Betrags i.H.v. EUR 2.250,00. Eine gesonderte Erklärung der Beschwerdeführerin über ihre Eigenschaft als KMU ging nicht ein. Die Beschwerde wurde mit Schriftsatz vom 5. März 2019, eingegangen am 21. März 2019, begründet.

III. Die Kammer wies die Beschwerdeführerin in einer Mitteilung vom 24. Mai 2019 darauf hin, dass sie begründete Zweifel an der KMU-Eigenschaft der Beschwerde­führerin habe und forderte sie auf, einen entsprechenden Nachweis einzureichen. Gleichzeitig wies die Kammer darauf hin, dass für den Fall, dass die Beschwerdeführerin kein KMU sei, die Beschwerdegebühr in zu geringer Höhe und damit nicht wirksam eingezahlt worden sei.

IV. Mit Schriftsatz vom 18. Juli 2019, eingegangen am 24. Juli 2019, hat die Beschwerde­führerin angegeben, kein KMU zu sein. Gleichzeitig hat sie Antrag auf Wiedereinsetzung i.S.v. Artikel 122, Regel 136 EPÜ in die Zweimonatsfrist gemäß Artikel 108 Satz 1 EPÜ gestellt, die Gebühr für den Wiederein­setzungs­antrag und den Differenzbetrag zu der vollständigen Beschwer­de­gebühr gezahlt sowie ihren Wiedereinsetzungs­antrag begründet.

Entscheidungsgründe

1. Die Beschwerdeführerin hat innerhalb der zweimonatigen Beschwerdefrist i.S.v. Artikel 108 Satz 1 EPÜ zwar Beschwerde eingelegt, nicht jedoch den vollständigen, für sie als Nicht-KMU geltenden Betrag für die Beschwerdegebühr i.H.v. EUR 2.255,00 gezahlt. Die Beschwerde gilt daher als nicht eingelegt, Artikel 108 Satz 2 EPÜ (vgl. G 1/18, Leitsatz 1 a)).

2. Etwas Anderes würde jedoch gelten, wenn der Antrag der Beschwerdeführerin auf Wiedereinsetzung in die Beschwerdefrist gemäß Artikel 122, Regel 136 EPÜ begründet wäre.

2.1 Die Zulässigkeitsvoraussetzungen gemäß Artikel 122 (2), Regel 136 (1) und (2) EPÜ für den Wiedereinsetzungs­antrag sind erfüllt.

2.2 Ein Antrag auf Wiedereinsetzung in den vorigen Stand ist dann begründet, wenn der Antragsteller gemäß Artikel 122 (1) EPÜ die nach den gegebenen Umständen gebotene Sorgfalt beachtet hat und trotzdem daran gehindert war, eine Frist einzuhalten. Die Recht­sprechung der Beschwerdekammern hat zwei Kriterien für die Beachtung der gebotenen Sorgfalt entwickelt. Die Fristversäumung muss

T 2609/18 - No RE for Notice appeal, refund fee

Key points

• In this examination appeal, the appellant filed only a debit order for the appeal fee (Form 1038E). The appellant requests re-establishment for the filing of the Notice of appeal (the appellant does not argue that the timely filed Form 1038E was a Notice of appeal).
• " In the present case, the appellant - contrary to its submission with the letter dated 4 January 2019 - learned already during the telephone call with the formalities officer on 24 October 2018 that a notice of appeal had not been sent to the EPO. It follows that [...] the two-month time limit started on 25 October 2018 and expired after the Christmas holidays on 2 January 2019. [] Since the appellant filed the request for re-establishment together with the notice of appeal only on 4 January 2019, the request was filed [late]".  Consequently, the request for re-establishment is inadmissible.
• The request is also not admissible for lack of substantiation. "The appellant merely submitted that the failure to file notice of appeal was "due to a clerical error made in good faith". It presented no facts whatsoever on the question whether the conduct of the appellant's representative complied with the requirement to exercise all due care under the circumstances. Hence, the request does not satisfy the requirement for a duly substantiated request under Rule 136(2), first sentence, EPC and is inadmissible for this reason as well." 
• " Following the opinion G 1/18 of the Enlarged Board of Appeal, Headnote 1 c), an appeal is deemed not to have been filed where: - the appeal fee was paid within the two-month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal; and - notice of appeal was filed after expiry of that two-month time limit. Consequently, the appeal fee is to be reimbursed. This is to be ordered ex officio (see G 1/18, Headnote 2)." 

EPO T 2609/18 - link

Reasons for the Decision

1. According to Article 108, first sentence, EPC, notice of appeal must be filed at the EPO within two months of notification of the decision. The appeal fee must be paid within the same time limit, Article 108, second sentence, EPC.

2. The appellant received the decision of the examining division on 2 July 2018. Consequently, under Rules 126(2), 131(2) and (4) EPC the above two-month time limit started on 3 July 2018 and expired on 2 September 2018. Within this period, the appellant paid only the appeal fee but did not file notice of appeal.

3. It is established case law that, if no written notice of appeal has been filed within the time limit but only the appeal fee has been paid in time, the mere payment does not constitute a valid means of lodging an appeal (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, section IV.E.2.5.4, and further references cited there).

4. Thus, the question of whether the appeal has been validly lodged hinges on whether the request for re-establishment of rights in respect of the time limit for filing the notice of appeal is admissible and allowable.

T 0851/18 - Paper debit orders

Key points

• In March 2018, a paper debit order for the appeal fee is submitted, when only XML debit orders were allowed. The appellant submits (auxiliary, but I discuss it first) that the payment is valid. 
• " In ... Entscheidung vom 4. Juli 2018 (T 590/18) hat die Kammer bereits festgestellt, dass der Präsident des Euro-päischen Patentamtes grundsätzlich berechtigt war, die Modalitäten der Zahlung per Abbuchungsauftrag wie geschehen zu verändern. " 
• " Aus diesen Grundsätzen - an denen die Kammer festhält - folgt auch, dass das Amt nicht verpflichtet ist, einen zum Beispiel per Telefax rechtzeitig eingereichten sowie inhaltlich klar und eindeutigen erteilten Abbuchungs-auftrag stets als wirksame Zahlung der Beschwerdegebühr akzeptieren." The Board distinguishes from T 152/82 because at the time of that decision, the debit order did not need to specify the exact amount, such that the debit order at issue actually complied with the version of the ADA then in force.
" Insbesondere führt die Verpflichtung, den Abbuchungs-auftrag mittels eines elektronisch verarbeitbaren Formats (XML) zu übermitteln, nicht zu einer unverhält-nismäßigen Erschwerung des Zugangs zu den Beschwerde-kammern als gerichtlicher Instanz der Europäischen Patentorganisation und verstößt deshalb - entgegen der Auffassung der Beschwerdeführerin (Patentinhaberin) - auch nicht gegen Art. 113(1) und 125(1) EPÜ sowie gegen Art. 6(1) der EMRK ([European Convention on Human Rights]."
• r.2.2.2 " Ein Verstoß gegen Art. 6(1) EMRK ist bereits deshalb nicht gegeben, weil die Zahlung per Abbuchungsauftrag - wie oben dargelegt - lediglich eine vom Amt nach Art. 5(2) der Gebührenordnung freiwillig eröffnete weitere Möglichkeit zur Gebührenzahlung darstellt." (in addition to bank transfer). 
• As a comment, in my view this reasoning is too easy. Even though debit orders are an alternative means of payment, this does not mean that it can be a trap for appellants. If we assume that Article 6 ECHR requires that an appeal fee can be paid in a reliable way (I did not check the ECtHR case law on this point), this regulates all payment methods in my view. To take an extreme hypothetic situation: presume that payment in cash at the EPO in Munich would be possible, can the EPO levy a surcharge for debit orders in a capricious way, e.g. for appeals against refusals of patent applications relating to plants? I don't think so. The fact that payment with a bank transfer is possible, does not mean that the ADA are exempted from basic legal principles such as the ECHR (in fact, the present Board assess the reasonableness of the ADA in r. 2.2.5, so I don't suggest that the present Board would have allowed the above extreme hypothetical situation even though r.2.2.2 suggest so). 
• The Board then notes that point 5.5 ADA provides for the extension of periods if one of the allowed ways of filing debit orders is not available. The Board concludes that (r.2.2.5) " Die Kammer sieht in diesen Regelungen ein ausgewogenes System, dass insbesondere auch die Interessen potentieller Beschwerdeführer in angemessener Weise berücksichtigt." 
• The EPO had issued a warning about the invalid payment, as courtesy service mentioned in point 5.1.3 ADA. The EPO, however, sent the warning by post such the appeal period had already expired by the receipt of it. The Board notes that it is a courtesy service in any way, such that parties have no right to it. I note that the invalid debit order was filed 22.03.2018 together with the paper Notice of appeal. The appeal period expired 05.04.2018 and the EPO despatched the paper warning only on 04.04.2019. 
• The request for re-establishment is refused because a professional representative had signed the debit order. The appellant had provided evidence of isolated mistakes of assistants, but had not indicated reasons why the representative was unable to meet his obligation of  "Sorgfalts- und Prüfungspflicht" . 
• The Board allows the request that certain documents are only included in the public file in anonymized form. 

EPO T 0851/18 -  link

Sachverhalt und Anträge

II. Die Beschwerde der Beschwerdeführerin (Patentinhaberin) vom 15. März 2018 ist am 22. März 2018 beim Europäischen Patentamt eingegangen. Am selben Tag ist - zum Zwecke der Zahlung der Beschwerdegebühr - ein Abbuchungsauftrag unter Verwendung des Formblattes EPA-Form 1010 einge-gangen.

Entscheidungsgründe

1. Die in Artikel 122 (1) EPÜ genannten Voraussetzungen für eine Wiedereinsetzung in den vorigen Stand sind nicht erfüllt. Der darauf gerichtete Antrag war deshalb zurückzuweisen.

1.1 Die Beschwerdeführerin (Patentinhaberin) hat im Einzelnen dargelegt und durch Vorlage eidesstattlicher Versich-erungen ihrer Mitarbeiter untermauert, dass und warum eine ihrer Mitarbeiterinnen ein nicht mehr gültiges For-mular für die Erteilung des Abbuchungsauftrags verwendet hat. Allerdings ergibt sich aus den Erklärungen und dem Inhalt der Akte im Übrigen auch, dass die Beschwerde und der Abbuchungsauftrag letztlich von einem bei der Beschwerdeführerin (Patentinhaberin) angestellten Euro-päischen Vertreter unterzeichnet wurden.

J 0005/18 - Re-establishment

Key points

• This case concerns a request for re-establishment for failure to file a response to an Art.94(3) Communication with further processing. The US patent attorney had emailed on 25.02.2014 to the European patent attorney (prior to the Notice of loss of rights setting the time limit for requesting further processing) that "Our client has decided not to file a response to the First Examination Report dated August 26, 2013, ... However we are interested in further processing. I cannot recall whether you must take action at the deadline for response or only after the EPO sets a further deadline."
• The US patent attorney leaves the firm, a new US patent attorney takes over the case and an assistant  (trainee patent attorney?) in the US firm indicates that no further action is necessary and the time limit is removed.
• The Board finds a lack of due care: " When the US representative, Ms V., consulted the document management system and believed that the letter dated 25 February 2014 was an instruction for the EP representative to request further processing she did not act with all due care required by the circumstances. The letter dated 25 February 2014 did not give the slightest indication that the EP representative had already been instructed to request further processing. Quite the contrary, this document clearly demonstrated that no action had been taken at that stage. As stated above, the necessary legal assessment did not even require any specific knowledge of the EPC, but simply the common legal skills that can be expected of any representative." 
• The Legal Board recalls that " the exception from the high standard of due care is only available for assistants who are merely carrying out routine duties; it is not available for representatives who are entitled to act on behalf of the applicant". Moreover, "A historical interpretation of the law as made by the Enlarged Board of Appeal in R 18/13 shows that the reports on Article 122 EPC, only state that "the Conference did not want to rule out that an employee could be excused", while the possibility of apologising for any fault on the part of the applicant or the representative was not discussed. This means that an excuse for the representative's fault was out of the question."

EPO J 0005/18 - link

Summary of Facts and Submissions

I. The appeal of the applicant (appellant) lies against the decision of the examining division posted on 11 December 2017 wherein the request for re-establishment of rights was rejected and the application deemed withdrawn. The background of the appealed decision is as follows:

II. With a communication posted on 26 August 2013, the examining division set a time limit of four months for a reply to its communication pursuant to Article 94(3) EPC and later granted a two-month extension following a request by the applicant. The applicant did not reply within the extended time limit, so on 1 April 2014, a notice of loss of rights pursuant to Rule 112(1) EPC was dispatched which informed the applicant that further processing or a decision on the matter could be requested within two months after notification.

T 1954/13 - No re-establishment Notice of appeal

Key points

• This case concerns a request for re-establishment for a late-filed Notice of appeal and, more interestingly, the question of the refund of the appeal fee
• The decision was taken on 27.10.2017 but was published only on 03.01.2019. The Board orders the refund of the appeal fee; however, I note that referral G1/18 was not yet pending when the decision was taken. 
• For the RE request, that is refused for lack of due care. The due care discussion is not unusual (a US client issuing a "STOP WORK" order but not explicitly deciding to abandon the case).
• The Board comes to the conclusion that the appeal is deemed to not have been filed and that the appeal fee is reimbursed. 
• The Board in conclusion: "Finally, because the request for re-establishment of rights is rejected and the appeal is deemed not to have been filed, the appeal fee has not fallen due pursuant to Article 4(1) RFees. Thus, the appeal fee was paid without a legal basis and must therefore be reimbursed"  (citing J 21/80, T 1026/06, T585/08).
• As a comment, whether the appeal fee payment was valid or not is quite a puzzle. The Board states first in r.8 that "the omitted acts, i.e. the filing of the notice of appeal and the payment of the appeal fee, were completed in due time". Which seems to imply that the appeal fee was validly paid under Rule 136(2) in order to complete the omitted act.
• However in r. 44 the Board states that "the appeal fee was paid without a legal basis" which to me means that the payment was invalid. Hence, the appeal fee payment is simultaneously valid (under R136(2)) and invalid (under Rfees4 - or at least "without a legal basis").  
• Admittedly, EPO practice appears to be that also in case of a RE request for a missed renewal fee payment (with surcharge) that is refused for lack of due care (hence, the RE request is admissible), the renewal fee with surcharge is refunded (e.g. J13/99, r.11 and the file of T 2106/14 and J23/14).
• Possibly, the Enlarged Board in G1/18 could clarify whether the fee payment is valid or invalid  (e.g. by concluding that the fee payment as omitted act has Rule 136(2) as legal basis), or if the current case law is to be confirmed, at least explicitly acknowledge that the omitted fee is simultaneously validly paid for R136(2) (such that the RE request admissible) and invalidly paid under Rfees4 (so that it is refunded as paid without legal basis). Or perhaps I simply overlook something (comments are welcome!)
• A second point is of course whether in case the RE request refused, the Notice of appeal is deemed to be not filed or inadmissible (which is precisely the question in pending referral G1/18).
• The Board: "Firstly, the appeal is deemed not filed in the present case because no notice of appeal had been filed within the two-month time limit, and the appeal fee had not been paid within that time limit either. The board's construction, that in order for the appeal to be deemed filed not only the notice of appeal must be filed but also the appeal fee must be paid within the two-month time limit of Article 108, first sentence, EPC, is based on the consideration that sentences 1 and 2 of Article 108 EPC are to be read together. [....] Accordingly, the board interprets Article 108, second sentence, EPC as meaning that payment of the appeal fee within the two-month time limit is a further precondition for an appeal being formed."
• As a comment, this reasoning can set the reader on the wrong track by the emphasis in that the wording "not only the notice of appeal must be filed but also the appeal fee must be paid" can suggest that the question was whether the filing of only Notice of appeal is sufficient - the facts of the case are that neither the Notice of appeal was filed nor the appeal fee was paid. The debated issue is whether the sanction is whether the appeal is "deemed not to have been filed" or is inadmissible. Moreover, the Board's phrase "payment of the appeal fee within the two-month time limit is a further precondition for an appeal being formed" uses a kind of a third alternative - does "formed" mean "deemed not to have been filed" or "inadmissible" or something else? (or perhaps the Board is borrowing from the French text of Art. 108 using "n'est réputé formé").
• The Board continues: "This is in line with the general concept of the EPC that a request is only deemed filed [...] if payment is made in due time. Furthermore, [...] (see also T 1325/15, Reasons, point 41)." 
• T 1325/15 stated "Although the position that Rule 101(1) EPC means that a late-filed notice of appeal brings into existence an inadmissible appeal may be not unreasonable, in view of the general rule that no distinction is to be made between the late filing and the non-filing of a document, the Board considers that no appeal exists where a notice of appeal was not (deemed to be) filed in due time."
• As a comment, I think there are two distinct principles at play: firstly, that a request is deemed not to have been filed if no fee is paid and secondly the "general rule" assumed in T1325/15 that "no distinction is to be made between the late filing and the non-filing of a document". For the first, I note that this is irrespective of any time limit, e.g. applies also for a request for limitation under Art.105a(1) EPC. Moreover, it is not a general principle but for each request based on the specific EPC provision, e.g. for a request for an extension of a time limit there is no fee (R132(2)) and (arguably) failure to pay the filing fee does not result in the application being deemed to be not filed but deemed withdrawal (Art.78(2)). For the second principle, this applies e.g. also for documents not involving a fee such as a Statement of grounds. Hence, in my view, these two rules are distinct from each other.
• As to T1325/15's "general rule that no distinction is to be made between the late filing and the non-filing of a document " : there is no explicit legal basis in any provision of the EPC and I am also not aware of any Enlarged Board decision stating this; so the legal basis for this asserted  "general rule" is not readily apparent to me.  At least under Dutch national law, no such general rule exist (as far as I know) and a late-filed Notice of appeal is inadmissible without refund of the appeal fee (e.g. ECLI:NL:GHDHA:2016:4284 about a late-filed filed appeal in patent litigation without any order for refund). 
• As indicated in the amicus brief of Mr. Pavon Mayo in G1/18 "It has been argued that an additional general rule exists that late payment and non-payment should be treated the same way. [] German patent law influences decisions and practice in the EPO.  [] Not surprisingly, the German patent law (PatkostG § 6) provides for explicit provision stating that there is no distinction between late payment and nonpayment and in both cases it renders the action (Handlung) not made (nicht vorgenommen)". 
• However, in my view, the national law of one Contracting State seems a rather weak basis for accepting it as a "principle of procedural law generally recognized in the Contracting States" under Article 125 EPC (and as said, e.g. Dutch civil procedural law appears to have a different rule). 
• Finally, under German law, the relevant case appears to be 12 W (pat) 60/14 (link); on p.5 the omitted act (appeal fee) is considered paid with a debit order but on p.7, after the RE is refused for lack of due care, the debit order for the appeal fee is not to be carried out. 

EPO T 1954/13 -  link

Appeal not deemed filed and refund of the appeal fee

39. In the present case, the notice of appeal and the appeal fee were received outside the two-month time limit pursuant to Article 108, first sentence, EPC, together with the request for re-establishment of rights.

40. The board is aware of different approaches in the case law of the boards of appeal in situations where either or both the requirements of Article 108, first and second sentence, EPC (i.e. the filing of the notice of appeal and the payment of the appeal fee) have been fulfilled only after expiry of the two-month time limit: In a series of decisions the appeal was considered as deemed not filed and the appeal fee was reimbursed (for the cases that (1) the notice of appeal was filed in due time but (a) no appeal fee was paid - J 2/78 or (b) the appeal fee was paid late - J 24/87, J 16/82, T 105/85; (2) the appeal fee was paid in due time and the notice of appeal was filed late - J 19/90, T 445/98; (3) both, the notice of appeal and the appeal fee were late - J 21/80, OJ EPO 1981, 101, official text in French). In other series, the appeal was rejected as inadmissible in situations mentioned before, either (1) with an order to reimburse the appeal fee (see e.g. T 489/93) or (2) without such order (see e.g. T 122/02 for late appeal fee payment; T 1100/97 and T 2450/16 for late notice of appeal; T 1289/10 and T 2210/10 for both requirements fulfilled late).

T 1823/16 - (II) Cross check when docketing, and RE

Key points

• In this RE case, the time limits for filing the Notice of appeal and the Statements of grounds were both missed, because the due dates were not docketed by "the assistent" who worked in the large in house IP department of the applicant. This was an isolated mistake. The question is whether there was " normally satisfactory system" , in particular whether the required cross check was in place. In the case at hand, there was no cross check at the initial stage of docketing them, only for the correctness of docketed due dates.. 
• " In the Board's view, a cross-check to be effective has to be introduced at an earlier stage, i.e. at the data entry phase, because if a mistake happens at that point the case will not be flagged at all. "
•  " Clearly, the data entry at that stage is of utmost importance, because if not properly done, the case will completely disappear. Thus a cross-check at that stage is essential." 
• The appeal is rejected as inadmissible. The decision was taken on 28.06.2018, i.e. after the referral in G 1/18 (received on 07.06.2018), the Board however does not comment on that. The Board merely notes that " both the notice of appeal, as well as the statement setting out the grounds of appeal were not filed in due time, the appeal is inadmissible". However, G 1/18 uses and/or, i.e. also asks if the appeal is deemed not filed if both the Notice of appeal and the appeal fee are late. The late filing of the  Statement of grounds can not make the appeal "deemed filed" (but inadmissible) in my view. 
• This is the second post about  T 1823/16. 

EPO  T 1823/16 -  link

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division refusing European patent application No. 09779319.4 pursuant to Article 97(2) EPC. The decision was handed over to the postal service provider on 10 December 2015. Both the notice of appeal and the statement setting out the grounds of appeal were filed on 28 June 2016, together with a request for re-establishment of rights. The fee for re-establishment and the appeal fee were paid on the same day.

[...]

Reasons for the Decision

Thus the request for re-establishment of rights is admissible.

3. According to Article 122(1) EPC, an applicant shall have his rights re-established if he has sufficiently demonstrated that in spite of all due care required by the circumstances having been taken, he was unable to observe the time limit. When an applicant is represented by a professional representative, a request for re-establishment cannot be acceded to unless the representative himself can show that he has taken the due care required of an applicant (J 5/80, OJ EPO 1981, 343, Headnote 1). An isolated mistake by an assistant that happens in a normally satisfactory system is excusable. Where a large number of dates has to be monitored at any given time, it is normally expected that at least one effective cross-check is built into the system in order to be satisfactory. The cross-check must be independent of the person responsible for monitoring time limits. (cf. Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, III.E.5.4 and 5.4.4).

T 1823/16 - (I) How many RE fees?

Key points

• The applicant failed to file both the Notice of appeal and the Statement of grounds in time and requested in RE for both. The isolated mistake was a failure to docket the refusal decision. One fee for RE was paid. Is that correct.
•  The Board decides that one fee as enough in this case.  
• " Only one re-establishment fee was paid, although the time limit for filing the notice and the time limit for filing the statement of grounds of appeal were missed. However, the non-observance of both time limits is intrinsically linked to the same hindrance. Both periods are triggered by the same event, i.e. the notification of the decision, and the hindrance to complying with them is based on one unitary factual basis i.e. that the time limits were not noted in the monitoring system." 

• I highlight this decision, because the GL E-VIII, 3.1.3. were changed in 2017 by adding: "In such cases, the number of unobserved time limits, each resulting in the application being deemed withdrawn and requiring a request for further processing, determines the number of requests for re-establishment and the corresponding number of fees for re-establishment." The GL were also amended by adding an example that if the time limit for entry into the European phase (Rule 159) with FP is missed, 5 FP fees are to be paid and 5 RE-fees (for filing the translation, paying the filing fee, the designation fee, the search fee, and the request for examination + the examination fee. I find that reasoning of the Guidelines not very convincing. This decision contradicts it, it in my view, at least for the case that the time limit(s) (of R159 with FP) are missed due to a single hindrance / due to  one unitary factual basis  (e.g. a single car accident). 

EPO T 1823/16 - link

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division refusing European patent application No. 09779319.4 pursuant to Article 97(2) EPC. The decision was handed over to the postal service provider on 10 December 2015. Both the notice of appeal and the statement setting out the grounds of appeal were filed on 28 June 2016, together with a request for re-establishment of rights. The fee for re-establishment and the appeal fee were paid on the same day.

[...]

Reasons for the Decision

1. According to Article 108 EPC, the notice of appeal shall be filed within two months, and the statement setting out the grounds of appeal shall be filed within four months of notification of the decision. These time limits expired on 22 February 2016 and 20 April 2016, respectively (Rules 126(2), 131(2) and (4), 134(1) EPC). Since, both the notice of appeal and the statement setting out the grounds of appeal were only received on 28 June 2016 and thus outside the relevant time limits, the appeal is inadmissible (Rule 101(1) EPC), unless the request for re-establishment of rights can be allowed.

2. According to Rule 136(1) EPC, a request for re-establishment of rights must be filed within two months of the removal of the cause of non-compliance. The cause of non-compliance was removed on 2 May 2016, when the appellant's representatives received a communication from the EPO regarding the refund of the 8th renewal fee. The request for re-establishment of rights was filed on 28 June 2016. The fee for re-establishment was was paid on the same day.

Only one re-establishment fee was paid, although the time limit for filing the notice and the time limit for filing the statement of grounds of appeal were missed. However, the non-observance of both time limits is intrinsically linked to the same hindrance. Both periods are triggered by the same event, i.e. the notification of the decision, and the hindrance to complying with them is based on one unitary factual basis i.e. that the time limits were not noted in the monitoring system. Re-establishment in respect of both periods has to be examined together and the result will inevitably be the same. In this situation, the Board considers one re-establishment fee to be sufficient (following the approach taken in T 832/99 of 17 September 2004 and J 17/16 of 28 June 2017). The omitted acts, i.e. filing the notice and the grounds of appeal and paying the appeal fee were completed at the same time.

Thus the request for re-establishment of rights is admissible.