J 0005/13 (Re-establishment of rights - payment of renewal fee) 17-01-2014

1. The appeal complies with Articles 106 to 108 EPC and Rule 99 EPC and is admissible.

2. Admissibility of the request for re-establishment of rights

2.1 In accordance with Rule 136(1) EPC the request must be filed within two months of the removal of the cause of non-compliance with the time limit, i.e. normally from the date on which the person responsible for the application becomes aware of the fact that a time limit has not been observed (cf. J 27/90 OJ EPO 1993, 422, 426) and within one year following the expiry of the unobserved time limit.

2.2 In the present case the appellant essentially submitted that neither he nor his European representative had noticed the failure to pay the renewal fee for the fifth year. Thus the date on which the European representative received the communication pursuant to Rule 112(1) EPC dated 18 May 2009 was decisive.

Accordingly, the request for re-establishment of rights which reached the European Patent Office on 10 July 2009 was filed in due time.

2.3 The necessary acts required under Rule 136(1) and (2) EPC, i.e. payment of the renewal fee for the fifth year with surcharge, payment of the fee for re-establishment and submission of the grounds for re-establishment, were also performed in due time.

2.4 The appellant's request for re-establishment is therefore admissible.

3. Allowability of the request for re-establishment of rights

3.1 Under Article 122(1) EPC, an applicant for a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the European Patent Office, which has the direct consequence of causing a loss of rights, shall, upon request, have his rights re-established.

In considering whether all due care required by the circumstances has been taken, the circumstances of each case must be considered as a whole (cf. T 287/84 OJ EPO 1985, 333, 338, Reasons 2; J 1/07 of 25 July 2007, Reasons 4.1). The requirement of due care must be judged in view of the situation existing before the time limit expired. This means that the measures taken by the party to meet the time limit must be judged in the light of the circumstances as they were at that time (cf. T 667/92 of 10 March 1994, Reasons 3; T 381/93 of 12 August 1994, Reasons 3; J 1/07 of 25 July 2007, Reasons 4.1).

3.2 Regarding the appellant's responsibility, the board shares the opinion of the Receiving Section that the appellant, i.e. Mr Goldberg as the responsible person within the appellant's company, has exercised all due care.

3.2.1 According to the established case law of the boards of appeal, it has to be taken into consideration whether or not the applicant is familiar with the requirements of the EPC or is in possession of an established office organisation attuned to ensuring that procedural deadlines are met (cf. J 5/94 of 28 September 1994, Reasons 3.1; J 1/07 of 25 July 2007, Reasons 4.2).

3.2.2 As the Receiving Section correctly pointed out, Mr Goldberg had no such office organisation, he relied upon his US attorneys and - after they had resigned from representation - upon his European representative.

Mr Goldberg had no reason to doubt that the European representative had his necessary contact details. Additionally, he had provided his European representative with his name, his office telephone number, fax and cell phone numbers and his business email address. Particularly with regard to the renewal fee for the fifth year, which is the subject of this appeal, he could expect that his European representative would contact him by using the same communication means as he had in respect of the renewal fee for the fourth year. To put it another way, because of the experience of the year before, Mr Goldberg had no reason to believe that his representative would fail to contact him by using an outdated address.

3.2.3 Thus, based on the circumstances as they were at that time before the expiration of the time limit for payment of the renewal fee for the fifth year, the appellant exercised all due care to observe this time limit.

3.3 Regarding the European representative's responsibility, the board concludes that the representative too exercised all due care to meet the missed time limit.

3.3.1 If 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 or proprietor by Article 122(1) EPC (cf. J 5/80 of 7 July 1981, OJ EPO 1981, 343, Headnote I). The applicant has to accept the actions of his representative, including the actions of the attorney's assistants and employees, on his behalf (J 5/80, loc. cit., 346; J 1/07 of 25 July 2007, Reasons 4.3).

3.3.2 However, the extent of the duties of the representative depends on the agreement between the representative and his client. An appointed representative whose authorisation is silent concerning the payment of the renewal fees and who has not received any funds for this purpose is not expected to pay the fee by advancing money on behalf of the applicant out of his own pocket (J 16/93 of June 1995, Reasons 4.3.3; J 19/04 of 14 July 2005, Reasons 10; J 1/07 of 25 July 2007, Reasons 4.4).

Instead, he retains only a "secondary responsibility" (cf. J 1/07 loc. cit.) to advise the applicant properly either if the applicant addresses him or if he becomes aware of any problem that might affect the applicant's position in respect of the patent application. Thus his responsibility, above all, consists in finding out what his client really intends to do with respect to payment of the renewal fees (cf. J 16/93 loc. cit.). Since he remains responsible in the procedure before the EPO and thus has to take the necessary steps to ensure payment, this includes a reliable monitoring system and sufficient reminders to the applicant (J 11/06 of 18 April 2007, Reasons 8; J 1/07 of 25 July 2007, Reasons 4.3).

Accordingly, the scope of duties of a representative who retains only such a "secondary responsibility" to inform and advise his client with respect to the due date for renewal fees cannot be the same as it would be if he were responsible for the payment itself.

3.3.3 Without error of law, the Receiving Section found that the "PT-204-Annuités" system was in line with the requirements the EPC imposes on the due care of a representative not in charge of the payment of renewal fees. The board also agrees with the finding that the European representative applied this system correctly by sending the first three reminders dated 12 June, 9 September and 8 October 2008 by regular mail to the Silver Lane address.

Nor can there be any objection to the fact that the European representative sent the first three reminders by regular mail to the Silver Lane address. From the European representative's point of view, the Silver Lane address was still valid because this was the address which he had received from the US representatives when he was appointed in March 2006 and which was confirmed two years later when the US law firm informed him that it no longer represented the appellant.

The appellant convincingly argued in the hearing before the board that in 2008 the use of regular mail had been standard practice in the European representative's office. Emails or other means of sending letters (i.e. fax) had been used only at the explicit request of the client. Since no such request had been submitted by the appellant and because - up to the return of the fourth reminder - the European representative had no indication that there could be something wrong with the Silver Lane address, there was no reason not to use regular mail and the Silver Lane address.

3.3.4 The additionally sent fourth reminder, now issued by registered mail and once again addressed to the Silver Lane address, already went beyond the standard procedure laid down in the guidelines ("PT-204-Annuités") used in the representative's law firm. However, because of the special circumstances of the case - i.e. the fact that the fourth reminder was returned - at that point in time the European representative had some reason to assume that the first three reminders, sent to the same address, might have failed to reach the addressee, and accordingly was obliged to try another route to contact the client.

3.3.5 In this situation the crucial question is whether or not the European representative exercised all due care by sending the last (fifth) reminder to the private postal address of Mr Goldberg.

The Receiving Section was right to assume that the use of Mr Goldberg's business email address was a suitable way to get in contact with the appellant because Mr Goldberg himself had used this address in order to communicate with the European representative with respect to payment of the fourth renewal fee only a few months before. On the other hand it has to be taken into account that - according to the credible pleading of the appellant - in the bureau of the European representative, in 2008 the sending of emails had not been a regular means of communication, so that email addresses were not stored in his database. Furthermore, the European representative - at the time when he sent the fifth reminder - had no reason to believe that the postal address of Mr Goldberg - which was stored in his database and which actually worked a short time later when the European representative informed his client about the loss of rights - could be wrong.

Thus, with respect to the scope of the mandate of the European representative, which amounted to nothing more than monitoring the time limit and informing his client of the impending loss of rights, the board considers it to be sufficient that he relied on the postal addresses stored in his database instead of checking his file for any other contact details.

In this context, it has to be observed that monitoring the due date for renewal fees and duly informing the applicant is a mass business which nowadays can be - and in practice is - most reliably performed on a computerised basis. In a situation where the representative is not responsible for paying renewal fees and thus only has a secondary responsibility, he can perform this task on the basis of the database entries, unless special circumstances require additional measures. In the present case, special circumstances required the sending of an additional reminder. However, the circumstances did not require the file to be checked for other contact details, because the database contained an additional postal address under which the applicant could be contacted. The fact that the fifth reminder apparently got lost by mail cannot be blamed on the representative. As has been shown, the Stanley Drive address worked, since the loss-of-rights communication sent there was received by the appellant.

For that reason the board concludes that the European representative exercised all due care by relying on the address data stored in his electronic database.

3.4 Finally the board cannot find that the appellant's US representative, who was not in charge of payment of the renewal fee either, failed to exercise all due care. Although - according to Mr Goldberg's statement in his affidavit dated 12 April 2012 - the appellant vacated the Silver Lane address around June 2007 and despite the fact that the US representative still mentioned the Silver Lane address in his letter sent to his European colleagues informing them of his resignation from representation of the appellant in March 2008, the board has no cause to assume that the US representative had knowledge of the relocation of the appellant and thus gave incorrect information to his European colleagues.

Thus the board has no reason to assume that the US representative did not exercise all due care required by the circumstances.

4. Thus, the appellant's request for re-establishment is allowable. Accordingly, the appellant's auxiliary requests for remittal to the department of first instance and referral to the Enlarged Board of Appeal are redundant.