J 0002/86 (Isolated mistake - restitutio) 21-10-1986

I. On 30 April 1980 the Appellant filed European patent application No. 80 301 418.2 at the European Patent Office, through the services of his professional representative, a partner in a firm of European patent attorneys who have an office in London. On 23 and 24 March 1984, respectively, the Appellant filed as divisional applications of the above parent application, European patent applications Nos. 84 103 253.5 and 84 103 272.5, through the same professional representative.

II. The renewal fees for each of the two divisional applications in respect of their third and fourth years calculated from the date of filing of the parent application were already due pursuant to Article 86(1) EPC at the respective dates of filing of the divisional applications. On 23 and 24 July 1984, respectively, the four month periods for paying said renewal fees provided by Rule 37(3) EPC expired, and said renewal fees were not paid by then. By notices and a telex dated 3 September and 17 September 1984, respectively, the representative was informed by the Receiving Section that, pursuant to Article 86(2) EPC, said renewal fees could be validly paid within six months of the due dates, i.e. by 23 and 24 September 1984, respectively, provided that the additional fees (10% of the renewal fees) were paid at the same time.

III. The renewal fees for the two divisional applications in respect of the fifth year became due on 30 April 1984, but had not been paid by the beginning of September 1984. The representative was also informed by notices from the European Patent Office dated 3 September and 17 September 1984 respectively, that these renewal fees could be validly paid within six months of the due date, i.e. by 30 September 1984, provided that the additional fees were paid at the same time.

IV. The fifth year renewal fees were duly paid (by the representative) on 27 and 20 September respectively, together with the additional fees due pursuant to Article 86(2) EPC. However, no payment was made in respect of the third and fourth year renewal fees within the six month period provided for by Article 86(2) EPC. Payment of such third and fourth year fees, together with the additional fees, for both divisional applications was made on 27 September and 25 September 1984 respectively by telexed debit orders, i.e. 3 days and 1 day too late respectively.

V. The Receiving Section informed the representative by letters dated 12 November and 6 November 1984 that the respective divisional applications were deemed to be withdrawn because the renewal fees in respect of the third and fourth years were not paid in due time, pursuant to Article 86(3) EPC. By a letter dated 19 November 1984 which was received by the EPO on 21 November 1984 the representative filed an application for re-establishment of rights under Article 122 EPC in respect of each divisional application. The fees for said applications were paid on 20 November 1984.

VI. Said letter dated 19 November 1984 was signed personally by the representative, and stated grounds on which the application under Article 122 EPC was based, and set out facts relied upon, which are here summarized: The failure to pay the fees in time was "because of the circumstances arising from the arrangements for the payment of maintenance fees" between the representative's office and the Appellant. The arrangement was that the representative was responsible for filing and prosecution of European applications, and the Appellant was responsible for payment of maintenance fees. No action was therefore expected from the representative in respect of the various reminders sent by the EPO. However, on 19 September 1984 the representative did in fact instruct his office to pay the 5th year renewal fee in respect of one of the divisional applications, and also sent a telex to the European attorney of the U.K. subsidiary of the Applicant company in respect of the 3rd and 4th year renewal fees due by 24 September 1984 for the same divisional application. Said European patent attorney had received no instructions to pay said renewal fees from the Appellant before he received the telex from the representative. He then attempted to pay the 3rd and 4th year renewal fees in respect of the one divisional application, but diffi culties arose which caused the payment to be made one day late, on 25 September 1984. As a result the 3rd, 4th and 5th renewal fees for the other divisional application were also paid on 27 September 1984. All due care was said to have been taken by the represen tative and by said European patent attorney, and it was said that the requirement for payment of the relevant renewal fees relatively soon after the filing of these divisional application "appears to have been overlooked" by the patent department of the Appellant in the USA.

VII. No further evidence was filed in support of the applications under Article 122 EPC. Decisions dated 16 July 1985 were issued by the Receiving Section in respect of each divisional application, in which it was held that the applications for re-establishment were admissible. The decisions also held that it was clear from the letter dated 19 November 1984 that the Appellant itself had been responsible for payment of the renewal fees in question, but that it was "unaware of the special rules for the payment of renewal fees for a European divisional application under Rule 37(3) EPC" and that a "mistake in the interpretation of the EPC" was no ground for reestablishment. The decisions also considered the factual circumstances following receipt at the representative's office of the various reminders from the EPO in relation to the renewal fee payment, but held that the failure to pay in time would not have occurred "if the Appellant had acquainted itself thoroughly with the problems of the payment of renewal fees for European divisional applications." For those reasons each decision held that "the due care required by the circumstances" could not be said to have been exercised; and confirmed that because the telexed debit orders making payment in respect of third and fourth year renewal fees together with the additional fees for each divisional application were not sent until after the expiry of the respective time limits, such renewal fees were not paid in due time, and each divisional application was therefore deemed to be withdrawn.

VIII. On 13 November 1985 the Appellant filed Notices of Appeal in respect of both divisional applications, and paid both appeal fees on the same day. On 22 November 1985 the Appellant filed an identical Statement of Grounds of Appeal (dated 20 November 1985) for each case, signed by the European patent attorney at the U.K. subsidiary of the Appellant, and accompanied by evidence in the form of four Affidavits sworn respectively by

(i) the Appellant's patent counsel,

(ii) a patent attorney employed by the Appellant,

(iii) the "patent coordinator" employed by the Appellant,

(iv) the European patent attorney of the U.K. subsidiary referred to above.

It was submitted in the Statement of Grounds of Appeal, on the basis of the evidence that accompanied it, that although the decisions subject to appeal correctly held that the Appellant had assumed responsibility for the payment of the renewal fees in question, there had in fact been no error by the Appellant in the sense that it was unaware of the requirements of the EPC in this respect; it was said that the error by the Appellant had been a mistaken expectation on the part of its patent coordinator that the office of the U.K. representative would pay the required renewal fees in due time.

IX. In a communication dated 13 March 1986, the rapporteur queried who had in fact been responsible for payment of the renewal fees in question, having regard to the wording used in the further evidence filed; and having regard to the requirement in Article 122(1) EPC that "all due care required by the circumstances" must be shown to have been taken, he asked for further clarifying information, especially as to the system which had been used by the Appellant to ensure that payment of the kind in question was duly made. Some further information was supplied in the first instance by a letter dated 16 May 1986 from the European patent attorney of the U.K. subsidiary.

X. As appeals had been filed from two separate decisions but both appeals had been designated to be examined by one Board in a common composition, the Appellant was asked in the above-identified communication whether it consented to the two appeals being dealt with in consolidated proceedings. The Appellant consented to such consolidation in the letter dated 16 May 1986. Accordingly, pursuant to Article 9(2) of the Rules of Procedure of the Boards of Appeal, the Board proceeded to deal with both appeals in consolidated proceedings.

XI. An oral hearing took place on 21 October 1986, at which said European patent attorney supplied further clarifying information. He stated essentially as follows: (i) at the time of filing the parent European patent application in this case, i.e. prior to June 1980, all European patent applications of the Appellant were filed and prosecuted by the office of the U.K. professional representative; (ii) in November 1982 he himself took over the filing and prosecution of European patent applications from the UK office of the professional representative, with the result that from about the beginning of 1983 such U.K. office filed no further European applications on behalf of the Appellant, until the two divisional applications in the present case; (iii) in May 1981 the Appellant instructed the U.K. professional representative not to pay renewal fees for its European applications, because from then on the Appellant would itself be responsible for such payments. (Copies of the relevant correspondence between the Appellant and the office of the U.K. representative were produced at the hearing and admitted in evidence). From January 1983 such renewal fees were paid by the European patent attorney only after direct instructions from the patent coordinator of the Appellant; (iv) because the U.K. professional representative had been responsible for filing and prosecution of the parent application (filed in April 1980), in March 1984 the latter was instructed, as an exception to the then current practice of the Appellant, to file and prosecute the present two divisional applications. Evidence in the form of an affidavit from a partner of the professional representative was filed one week before the oral hearing, but this evidence was not referred to at the hearing. It was accordingly not admitted.