J 0014/08 (Re-establishment of rights) 17-07-2009

1. The appeal is admissible.

2. In order to be allowable, the request for re-establishment has to meet the requirements of Article 122 EPC 1973, which is applicable to the present case pursuant to Article 1, No. 5, of the decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the EPC Revision Act (see special edition No. 1/2007 OJ EPO, at pp. 197 et seq.)

3. The issue to be addressed in this appeal is whether the request for re-establishment of 20 April 2007 contains an instruction to the EPO to debit the third renewal fee and surcharge from the European Representative's deposit account with the EPO, thus completing the relevant "omitted act" under Article 122 EPC 1973.

4. It is clear from reading the request for re-establishment of 20 April 2007 that this document does not contain any explicit instructions to the EPO to debit the third renewal fee and surcharge from the European Representative's deposit account with the EPO. The issue, therefore, is whether it contains an implicit instruction to debit the European Representative's deposit account.

5. The first argument to address is that it was clear from the 20 April 2007 letter that Dennemeyer, the US based annuities firm, had no responsibility for paying the third renewal fee and surcharge - Dennemeyer's responsibility began with the fees subsequent to these fees, for example the fourth renewal fee.

5.1 The fifth paragraph on page 2 of the request for re-establishment of 20 April 2007 states:

"Following the investigation conducted into the present situation, the relationships between the parties have been revisited to the extent that all parties are now clear [emphasis added by Board] that it is the Applicant who has the sole responsibility for instructing the annuity payment service, Dennemeyer, to pay the renewal fees for this European patent application. Thus, the present misunderstanding is an isolated incident and will not happen again".

Two declarations referred to in the second paragraph of III above were attached to the request for re-establishment. These are both dated 19 April 2007. Both declarations state that at the end of 2002 a new system was set up whereby responsibility for liaising with Dennemeyer lay with the Appellant, rather than with the US representatives, Foley & Lardner. However, the Appellant did not completely understand this new system with the consequence that about three and a half years later the third renewal fee was not paid. Paragraphs 10 and 11 of the declarations are identical and read as follows:

"That it was only upon receipt of the Notice of loss of rights from the European Patent Office (dated 16 February 2007) that either 21CM, or attorneys of Foley & Lardner LLP were made aware of the inadvertent lack of communication with the annuity service and failure to timely pay annuities.

That the chain of communication required to have newly filed cases added to the docket of 21CM's annuity service is now clearly [emphasis added by the Board] understood by both Foley & Gardner LLP and 21CM so that a repeat of the misunderstandings which lead to the failure to timely pay the renewal fees in the present case are highly unlikely to occur again".

5.2 As a preliminary remark, these declarations do not assist in interpreting the 20 April 2007 request for re-establishment of rights. What these declarations do indicate is that it was never the intention of the Appellant that it would be the European Representative who would pay the renewal fees. Thus these declarations do not assist the Appellant's case. The Board considers that the EPO would understand from the above text of the European Representative's request for re-establishment of 20 April 2007 and further from the attached declarations that any fees due on or after 20 April 2007 would be paid by Dennemeyer, as the US representatives and the Appellant were "now clear" about this on 19 April 2007, and the European Representative was "now clear" about this on 20 April 2007.

5.3 The request for re-establishment of 20 April 2007 and the attached declarations contain explicit statements that Dennemyer was responsible for the payment of fees. It would therefore require rather clear language to inform the EPO that it was, nevertheless, to debit the deposit account of the European Representative. Such clear language as regards the fee for re-establishment of rights is found in the first paragraph of the request for re-establishment of 20 April 2007, referred to at point II above, and also in the "Payment of fees and costs" form, where the European Representative filled in the box for "Fee for re-establishment of rights", and faxed this to the EPO on 20 April 2007, about 4 hours before it faxed the request for re-establishment. No such wording as regards the third renewal fee and surcharge can be found even though a box for these fees appears on this form.

6. The Appellant also argued that the Receiving Section should have derived an implied request to deduct the third renewal fee and surcharge from the European Representative's deposit account from the fact that the request for re-establishment was filed on the last day for doing so. Hence the Receiving Section should have noted that this meant that there was only a limited time for Dennemeyer to be instructed to pay the fees and have therefore deducted these fees from the European Representative's deposit account.

6.1 From the third paragraph, page 1 of the request for re-establishment and from paragraph 10 of both of the attached declarations it is apparent that on or about 20 February 2007 the European Representative, Foley & Lardner and the Appellant became aware of the non-payment of the third renewal fee and surcharge. Hence there was a period of approximately 2 months in which it could have been arranged for Dennemeyer to pay the fee. Thus the Receiving Section had no reason to consider that "there was only a very limited time in which to instruct the renewal fees service, particularly in view of the fact that Dennemeyer were based abroad".

The argument advanced by the European Representative, that it had only received instructions to file the request for re-establishment on 13 April 2007, and hence did not have time to instruct Dennemeyer regarding the payment of the renewal fees, is unconvincing. This is because with modern communications 5 working days should have been enough time to give instructions. In addition, when precisely an applicant decides to give instructions to their professional representatives is a matter within their own control and thus any negative consequences from belated instructions are to be borne by the applicant. This is especially the case here where the Appellant had known of the problem for 2 months.

7. Turning now to the arguments, set out in point VI (c) above, based upon the case law of the Boards, the first case cited is T 152/82. T 152/82 concerned a case where the applicant had given a debit order for an amount that was too low as it corresponded to the old fee for re-establishment of rights, not the fee in force at the time of the request. The Board in this case found that such an order was sufficient to instruct the EPO to debit the correct fee as neither the EPC nor the relevant "Arrangement for deposit accounts", issued by the President of the EPO, required that a debit order specify the amount to be deducted. The Appellant argued that this decision would support interpreting the word "fee" in the second sentence of the first paragraph of the request for re-establishment as encompassing "fees" and thus including both the fee for re-establishment and the third renewal fee and surcharge.

The current fact situation concerns a fee that was not named and an amount that was neither mentioned nor paid. Thus the facts of T 152/82 and the present case are sufficiently remote from each other that the reasoning of T 152/82 cannot be applied to the present case.

8. The second case cited is J 6/90. J 6/90 concerned a situation where the missing renewal fee and re-establishment fee had been paid in time and the applicant filed a letter indicating that "...a written application for re-establishment of rights" would follow. This written application was received outside the time limit and hence the Receiving Section found the request to be inadmissible. The Board found the letter, which was filed in time, to amount to a request for re-establishment in itself. The Appellant argues that the situation of J 6/90 is analogous to that of the present case and that hence its letter of 20 April 2007 could be seen as a request for the deduction of the third renewal fee and surcharge from the European Representative's deposit account.

This case would only be helpful to the Appellant if its letter of 20 April 2007 could be considered as indicating an intention that the third renewal fee and surcharge be deducted from the European Representative's deposit account with the EPO. As set out in point 5 above, the entire thrust of the 20 April 2007 request is that Dennemeyer and not the European Representative would be responsible for paying such fees.

9. The third case, J 13/90 concerned a request for re-establishment following non-payment of a renewal fee. The Receiving Section rejected the request as the omitted act, the payment of the renewal fee, did not take place within the time limit. In its request for re-establishment the applicant had indicated that they would pay the missing fee once their rights had been re-established. The Board found that the applicant was "...evidently confusing the provisions of Article 122(2), second sentence, EPC with those of national law which would have allowed them to pay the missing fee after re-establishment had been granted" (see point 7 of the reasons of J 13/90). Applying the principle of good faith the Board found that the EPO should have warned the applicant about this deficiency. The European Representative argues that in this case the non-payment of the renewal fee was also obvious from the fee sheet, (faxed to the EPO on the same day as the request for re-establishment, but 4 hours earlier), as this only mentioned the re-establishment fee and was easily correctable by the EPO deducting the renewal fee and surcharge.

Thus J 13/90 deals with a situation where the party gave a clear indication that they had a mistaken understanding of the relevant provisions of the EPC and hence, under the principle of protection of legitimate expectations (sometimes called "good faith"), the EPO had a duty to correct this misunderstanding. This is not the case here and this case cannot assist the Appellant.

10. Finally the Appellant referred to T 14/89 in support of his appeal. T 14/89 concerns a patent proprietor who filed a request for re-establishment of rights well within the time limit for doing so. This request had two deficiencies: the fee for re-establishment had not been paid and the facts to substantiate the request had not been filed. The Board found (at point 5 of the reasons) that under the principle of good faith, "...the European Patent Office should not fail to draw the appellant's attention to obvious deficiencies in his acts. This obligation certainly exists if as in the present case, the obvious deficiencies can be expected to be remedied within the time-limit for re-establishment".

T 14/89 was commented upon by the Enlarged Board of Appeal in G 2/97 (OJ EPO 1999, 123) where it found that this decision "... related to the particular facts of that case and that there is no generally applicable principle to be derived therefrom" (point 3.4 of the reasons). In T 14/89, it is to be noted that the EPO had ample time, about 6 weeks before the expiry of the time limit for requesting re-establishment, in which to inform the proprietor of the deficiencies of his request. There is a substantial case law on the principle of protection of legitimate expectations. The duties of the EPO under this principle are limited and do not extend to informing a party of missing fees immediately after the receipt of a request for re-establishment (see J 2/94 of 21 June 1995, point 2 of the reasons).

This principle is further limited in that the EPO can only be expected to warn a party of a deficiency if the deficiency is readily identifiable by the EPO and the party can still correct it within the relevant time limit (see T 455/98 of 10 July 2000, point 2 of the reasons). In the present case the deficiency was not readily identifiable and, as the appellant filed his request for re-establishment on the last day for doing so and after EPO office hours, there was no time for the EPO to warn the appellant about the non-payment of the third renewal-fee and surcharge even if the EPO had been in a position to spot this deficiency.

Thus T 14/89 is of no assistance to the Appellant.

11. Thus in conclusion none of the cases cited support the appeal.

12. The Appellant made a further argument that the second and third paragraphs of page 2 of its request for re-establishment dated 20 April 2007 refer to the "normal" situation concerning responsibility for paying the renewal fees, and that the Receiving Section should have understood that from the context of the "abnormal" situation of a request for re-establishment that it was the European Representative who had responsibility for the payment of these fees.

From reading these paragraphs it is clear that they are concerned with setting the scene for the request for re-establishment as they indicate how the non-payment of the renewal fees came about in the first place. This is confirmed by the immediately following fourth paragraph which states:

"As a result of these misunderstandings, Dennemeyer were never instructed to pay the fees within the time limit, despite the Applicant's intention to maintain the present European patent application".

Thus, these paragraphs cannot be read as giving any indication to the Receiving Section that it should deduct the renewal fees from the deposit account of the European Representative.

13. In conclusion the Board finds that the Receiving Section was correct to find that the request for re-establishment was inadmissible due to non-completion of the omitted act.