T 1897/17 14-02-2018

1. An applicant can be reinstated into the time limit of filing a notice of appeal if the applicant was unable to ob­serve this time limit despite all due care requi­red by the circumstances having been taken (Art. 122 (1) in con­junc­tion with Art. 108 EPC).

2. It not only rests with the appellant to exercise all due care, but with all persons acting on its behalf. Notably, also an appellant's professional represen­tative including the representative's assistants have to exercise all due care. All of these persons' acts are finally attributed to the appellant (Case Law III.E.5.5). All due care by the representative includes, among other duties, the reasonable instruc­tion and continuous supervision of assistants (Case Law III.E.5.5.4.(a) and (b)).

3. Based on the appellant's assertion of the facts, which are supported by the documentary evidence, all persons in the patent attorney's firm involved in the present case wor­ked under the guidance and super­vision of a qua­lified European Patent Attorney. No circumstances have come to light which could cast any doubt on the re­liability of any of these persons, in particular on Mr von M., the person res­ponsible for the prepa­ra­tion of the notice of appeal in the case at hand.

4. In accordance with established case law, one of the criteria to establish whether "all due care required by the circumstances" has been taken, is that the repre­sentative must be able to communicate effectively with his or her client. Specifically, to exercise due care, a professional representative that has been instructed to file an appeal, has to take all necessary measures to obtain any additional instructions needed to dis­charge his or her duty (Case Law III.E.5.5.2(a)). In addition thereto, the representative has to commence work on a file reasonably clear of a deadline, to be sure to complete all necessary steps in good time (Case Law III.E.5.5.2(d)).

5. In the present case, neither of these criteria have been satisfied.

In the email of one of the inventors of 12 July 2017, the intention to appeal the examining division's deci­sion had already been aired, albeit in terms which Mr von M. interpreted as being somewhat uncertain ("Essen­tially, we would like to appeal this decision"). Never­theless, the urgency and importance of the matter was flagged with Mr von M., as the steps to take were noted in the ICT management system, including deadlines and exclamation marks to underline their importance (see Annex 4 to the request, "Fristen-Liste"). Despite ini­tial repeated unsuccessful attempts to reach the inven­tors for clarifying whether an appeal should actually be filed (as well as for instructions regarding the po­ten­tial PCT application), Mr von M. only tried contac­ting the appellant (Mr C. as the relevant person) in the late afternoon of 10 August 2017, the day before the deadline of 11 August 2017 was due to expire, to in­form him about the failed attempts to reach the inventors, and to decide about whether to file an appeal.

Thus, although Mr von M. attempted to reach the inven­tors for clarification of their instructions, Mr von M. only managed to contact the appellant on the date of the deadline for filing the appeal. It may be left open whether due care was lacking on the side of Mr von M. or on the side of the appellant: the result was that any meaningful communication only actually took place on the date of the deadline. This very late com­mu­nication between Mr von M. and the appellant was, how­ever, due to the fact that Mr von M. only attempted to reach the appellant (as opposed to the inventors) the day before the deadline. In view of the potential de­lays in communication, Mr von M. thereby risked get­ting himself into a situation where he could not be sure of being able to file the appeal before expiry of the time limit.

6. A further criterion for establishing whether "all due care required by the circumstances" has been exercised, is that the non-compliance with a time limit results either from exceptional circum­stan­ces or from an iso­lated mistake within a normally sa­tis­factory monitoring system (Case Law III.E.5.2 ff). In a larger firm with normally numerous time limits to monitor, a "normally sa­tis­factory monitoring system" would have to contain an effective system of cross-checks, such a system be­ing independent of the person responsible for monito­ring the time limits, notably to prevent misunder­stan­dings between a representative and an assistant (Case Law III.E.5.4.4).

7. In the present case, this criterion has also not been sa­tisfied.

The time limit monitoring system used at the repre­sentative's firm appears to have a system of cross-checks built into it. Specifically, the time limits in the present case were displayed on Mr von M.'s computer and on a printout given to him by Ms A. Furthermore, Ms A. kept a copy of the printout so that she could sepa­rately monitor which actions had been completed. However, in the present case, this system of cross-checks broke down due to an erroneous statement by Mr von M.

On 11 August 2017, Mr von M. had two files on his list of deadlines for that day. The first file was the present case concerning the filing of a notice of appeal and the second file concerned the submission for oral proceedings. In actual fact, Mr von M. had to deal with three files that day, only two of which had found their way onto Ms A.'s list of Mr von M.'s deadlines (see Annex 11). The PCT application from the same applicant as the other two files had also to be filed and was to be treated in close collaboration with Mr von M.'s colleague Ms S.

The file regarding the PCT application (which was not on Ms A.'s list) had been finalised in the early af­ter­noon by Ms S. (with the involvement of Mr von M., as detailed above). While he was busy with the draft sub­mis­sion for oral proceedings (the second file on his list), he was asked by Ms A. about the two files on the list. At this point in time, the case at hand, with the notice of appeal to prepare, had not yet been started. Mr von M., though, confusing the PCT application file as finished early afternoon and the case at hand, told Ms A. that the latter had already been sent off. That erroneous response of Mr von M., while in itself being explainable due to the fact that the PCT file and the appeal file both had the same applicant, deprived Ms A. of any further possibility to realise the mistake la­ter. For her, all cases on the list were to be ticked off, in accordance with Mr von M.'s assertion.

This confusion and the resulting mistake were due to the incomplete listing of files to be treated by Mr von M. that day. This demonstrates that the represent­ative's system of recording and monitoring time limits was not water-tight and that an effective system of cross-checks was not in place. Ms A.'s list of actions for that day only included two files, whereas Mr von M. actually had to deal with three. Moreover, it would appear that Ms A. was apparently unaware of the existence of the PCT file. A system which allows for such incomplete information cannot be considered to be a satisfactory system for monitoring time limits.

A further detail to be noted in this respect is that Mr von M. was not, on the relevant date, yet a qualified European Patent Attorney. In such a situation, the qualified representative supervising Mr von M. is responsible for monitoring Mr von M.'s activities in the firm, effectively creating a further layer of cross-checking. In actual fact, the supervising represent­ative did not appear to be involved in the monitoring process at all, despite the fact that responsibility for filing the appeal ultimately lay with him. For reasons which have not been supplied, the supervising representative did not take any action to remedy the fact that the notice of appeal had not been filed before Mr von M. left the office that day, the error only being later discovered by Mr von M. himself.

8. For these reasons alone, it has to be concluded that "all due care required by the circumstances" has not been taken.

9. Against this background, it does not need to be exa­mined whether there were further issues regarding the actions and supervision of any of the assistants in­volved in the present case.

In particular, there is no need to examine if the accident of Mr von M.'s son and the resulting needs of his daughter - with the consequence that Mr von M. left the office immediately - could be considered a further issue in the context of all due care taken. Likewise, there is no fur­ther need to con­sider whether there was an effective system of staff substitution in place (cf. Case Law III.E.5.4.5).

Furthermore, there is no need to examine what impact Mr von M.'s distraction by ICT issues had on him that day and what influence this had on the series of events which resulted in the time limit for the notice of appeal being missed.

10. The appellant notes, as an aside, that, using internal Form 2701, the European Patent Office had initially erroneously recorded that the notice of appeal had been filed within the time limit. It was only when the appellant drew attention to the fact that it had in fact been filed late, that the EPO realised its mistake.

It is very much appreciated that the appellant pointed out this mistake. However, neither such an initial error nor the appellant's indication can have any bearing on the request for re-establishment of rights, let alone on the (calculation of the) time limit itself. In particular, a 'confirmation' of an appeal's timeliness cannot render a late filed appeal timely. Moreover, admissibility issues can and have to be examined at every stage of the appeal procedure (see Case Law IV.E.2.7, e.g. T 15/01). At the point in time at which the notification was issued, the admissibility check by the Boards of Appeal - which may have uncovered this mistake - had yet to be performed.

11. Therefore, the request for re-establishment of rights into the time limit for the notice of appeal has to be re­fused.

12. No request for oral proceedings in the proceedings for re-establishment of rights was made. With this decision being based on the appellant's own argumentation regarding the facts of the case, there was also no reason to hold oral proceedings ex officio.

13. In accordance with R. 126 (2) EPC, the examining division's decision was deemed to be delivered on 11 June 2017, with the time limit for the notice of appeal (Art. 108 EPC) expiring on 11 August 2017, a Friday and regular working day of the European Patent Office. From this follows that the notice of appeal, which was undisputedly filed on 14 August 2017, together with the payment of the appeal fee, was filed too late.

14. The legal consequence of this finding, as will be explained below, is that the appeal has to be rejected as inadmissible (R. 101 (1) EPC in con­­junction with Art. 108 EPC; T 79/01, T 122/02, T 1289/10, T 1535/10 and T 2210/10; cf. T 264/88, T 489/93).

15. The board does not concur with the majority interpretation in decisions of the Boards of Appeal that an appeal is 'deemed not to have been filed', if the notice of appeal or the payment of the appeal fee were received outside the two-month time limit of Art. 108 EPC (Case Law IV.E.8, J 16/82, T 804/95, T 445/98, J 9/00, T 778/00, T 314/01, T 1691/06, T 1026/06 [regarding the appeal fee, with a different assessment as to the fee for the request for re-establishment of rights] T 46/07, T 327/17, T 1553/13 of 23 November 2016, T 181/14, T 1946/15, T 2406/16; cf. J 21/80, T 2017/12 and T 1553/13 of 20 February 2014).

According to the clear wording of R. 101 (1) EPC, which is an Implementing Regulation of Art. 106 to Art. 108 EPC, if an appeal does not fulfil the legal requirements of (here) Art. 108 EPC, the board of appeal shall reject it as inadmissible. The legal fiction of Art. 108 EPC, second sentence, that the notice of appeal shall not be deemed to have been filed until the appeal fee has been paid, can, in the board's view only be understood as setting an additional (implicit) condition for an appeal to be admissible, namely the (timely) payment of the appeal fee. No procedural consequences follow from Art. 108 EPC, second sentence; these are exclusively governed by R. 101 (1) EPC, providing for the rejection of the appeal as inadmissible if the appeal does not comply with Art. 108 EPC, i.e. also in the case of late payment of the appeal fee (cf. T 79/01, quoting the travaux préparatoires to the EPC, IV/6514/61-D : "Die Kammer kann feststellen, dass die Beschwerde wegen Nichtentrichtung der Gebühr unzulässig ist").

In T 2017/12 and T 1553/13 (of 20 February 2014), the question of the consequences of the late pay­ment of the appeal fee was addressed in detail, with a careful analysis of the diverging case law outlined above and the question as to whether a late-filed notice of appeal and/or late payment of the appeal fee causes the appeal to be inadmissible or deemed not to have been filed, was referred to the Enlarged Board of Appeal.

T 2017/12 and T 1553/13 both noted that none of the decisions in favour of the second solution (appeal not deemed to have been filed) had given any reasons for their interpretation of Art. 108 EPC, se­cond sentence.

Refer­ring to G 5/83, which had deter­mined that the EPC was to be interpreted according to Art. 31 and 32 of the Vienna Convention on the Law of Treaties, T 2017/12 (and, in similar terms, T 1553/13) further states that Art. 31 (1) leg. cit. requires, as a first step of interpreting a legal norm, the estab­lishment of its ordinary meaning:

'...the ordinary meaning of Article 108 EPC, second sentence, "Notice of appeal shall not be deemed to have been filed until the fee for appeal has been filed," appears to be that before the appeal fee has been paid the appeal is deemed not to have been filed, and once the fee has been paid the aforementioned pro­vision no longer applies, with the conse­quence that the appeal is filed. No relationship between the payment of the appeal fee and the time limit for filing the appeal can be derived from the literal wording of Article 108 EPC. Further­more, the board is not able to establish, based on the text of the EPC or its preamble, that the parties to the EPC wanted Article 108 EPC, second sentence to be read "Notice of appeal shall not be deemed to have been filed until the appeal fee has been paid [in time]", nor is the board aware of any other source of interpretation as mentioned in Article 31 (2) and (3) of the Vienna Convention that would establish this.'

T 2017/12 (similarly, T 1553/13, also in the following) continues in saying that, according to Art. 32 of the Vienna Convention, supplementary means of inter­pre­ta­ti­on should only come into play,

'...in order to confirm the meaning resulting from the application of Article 31 or if the interpretation under Article 31 leaves the meaning ambiguous or obscure or leads to a manifestly absurd or unreasonable result. The board considers that the latter is not the case. Thus supplementary means of interpretation can only be used to confirm the meaning resulting from the ap­pli­cation of Article 31. In this regard, the board notes that there is nothing in the travaux préparatoires directly con­cer­­ning the interpretation of present Article 108 EPC, second sentence. But it may appear that document IV/6.514/61-D indirectly confirms the board's interpretation.'

T 2017/12 further quotes the travaux préparatoires IV/6.514/61-D, these reading that:

'... Die Feststellung, dass seine eingelegte Beschwerde mangels rechtzeitiger Gebührenzahlung als nicht erhoben gilt, wird dem Beschwerdeführer in einer wiederum beschwer­­­de­­­fähigen Entscheidung zugestellt werden müssen. Es er­­scheint nicht erforderlich, diesen Grundsatz im Abkommen selbst festzulegen. Ob in der Ausführungsordnung zu diesem Ab­kom­men eine entsprechende Bestimmung aufgenommen werden soll, wird später zu entscheiden sein.'

T 2017/12 then concludes:

'Furthermore, it seems that the legislator in fact elsewhere used explicit wording to specify the consequences of a late-filed request. An example can be found in Article 94(2) EPC, which reads: "If no request for examination has been made in due time, the application shall be deemed to be withdrawn." Consequently, it would appear incorrect to read Article 108, second sentence, EPC in a way it is not worded [namely, that it was to be read as "Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid in time", remark of the current board].

In neither of the cases T 2017/12 and T 1553/13 did the Enlarged Board of Appeal have to decide on the questions posed (see G 1/14).

T 1325/15 then returned to the majority interpretation of Art. 108 EPC, second sentence, that '... no appeal exists where a notice of appeal was not (deemed to be) filed in due time', arguing that this result was in line with numerous other EPC provisions where no dis­-tinc­tion was made between late filing and non-filing of a document. T 1553/13 (of 23 November 2016, the final decision in this case) came to the same conclusion on the grounds that the Enlarged Board in R 4/15 had now found that a petition for review under Art. 112a (4) EPC, last sentence, was deemed not to have been filed when the respective fee had been paid out of time. With Art. 108 EPC, second sentence, and Art. 112a (4) EPC, last sentence, having essentially the same wording, T 1553/13 further argues that they should be interpreted in the same way. This line was followed in T 2406/16.

In the current board's view, also this latest line of argumentation does not provide any convincing reasons to question the conclusion that a notice of appeal is deemed to have been filed on the day of (late) payment of the appeal fee, with the consequence that the appeal, which only comes into legal existence on the day of (late) payment, will be rejected as inadmissible (R. 101 (1) EPC). This conclusion is in line with T 79/01, T 122/02, T 1289/10, T 1535/10 and T 2210/10 and the detailed reasoning in T 2017/12 and T 1553/13 of 20 February 2014.

It is true that the wording of Art. 108 EPC, second sen­tence, '... not be deemed to have been filed ...', is also used in other provisions of the EPC, notably Art. 112a (4) EPC, last sentence and Art. 99 (1) EPC (further examples are listed in T 2017/12). There is, however, a fundamental difference between these three provisions on the one hand, and other provisions of the EPC using the same or similar wording on the other hand: in these three cases, specific procedural (implementing) rules exist, namely R. 101 (1) EPC, R. 77 (1) EPC and R. 108 (1) EPC. They confirm and complement the (clear) wording of Art. 108 EPC, second sentence, Art. 99 (1) EPC, second sentence, and Art. 112a (4) EPC, last sentence respectively: to reject as inadmissible a legal remedy (appeal, opposition or petition for review) attacking an EPO decision, if it does not fulfill the require­ments for admissibility, which, in the system of the EPC, include the timely payment of the respective fee. In all three cases, EPO decisions would become finally bin­ding on the parties, if not attacked by means of the respective legal remedy. The rejection of a legal remedy found inadmissible is a requirement to ensure legal certainty, a principle also generally recognised in the EPO's Contracting States.

Consequently, R. 101 (1) EPC and R. 77 (1) EPC can be seen as the implementing provisions envisaged by the travaux préparatoires (as cited in T 2017/12 "Ob in der Ausführungsordnung zu diesem Abkommen eine entspre­-chende Bestimmung aufgenommen werden soll, wird später zu entscheiden sein."), confirming and supplementing the (ordinary) meaning of Art. 108 EPC, second sentence and Art. 99 (1) EPC, second sentence respectively, by explicitly stating the procedural consequence arising from the late-filing of the respective fee, i.e. to reject the appeal or opposition as inadmissible. The travaux préparatoires do not cover Art. 112a EPC as this article was only introduced into the EPC 2000.

Against this backdrop, the assumption in T 1325/15 of a general rule, and the justification for a different result being that "no distinction is to be made [in the EPC] between the late filing and the non-filing of a document", cannot stand: (only) the late filing of a le­gal remedy, and the late payment of the respective fee, is subject to a decision rejecting as inadmissible this legal remedy.

While the parallels between the procedural rules for appeal, opposition and petition for review could speak in favour of their identical treatment (this was the view taken in T 1553/13 of 23 November 2016 and T 2406/16, both of which refer to R 4/15), R 4/15 did not elaborate on the reasons for why late payment of the fee for petition for review should result in the pe­ti­tion for review being deemed not to have been filed, as opposed to being found inadmissible. There­fore, no conclusions can be drawn from R 4/15 for the question to decide here.

16. To summarise, there is no basis for the assumption that the appeal is not deemed to have been filed. It is to be rejected as inadmissible.

17. This means that there is no reason to enter into the substance of the appeal and thus no reason to consider the appellant's subsidiary request for oral proceedings on the merits, made in the statement of grounds of appeal. As a result, such oral proceedings do not have to be appointed (T 374/90, T 608/94, T 988/97, T 154/98, T 1801/06.

18. The question remains whether the appeal fee could be reimbursed in the present case. This examination has to take place even in the absence of a request thereto (see T 489/93, T 314/01, T 46/07).

A fee can only be reim­bursed if such reim­burse­ment is explicitly provided for by the law or if it was paid without any legal basis (see, e.g., T 1026/06, T 2017/12).

In the present case, the appeal fee was paid in accordance with Art. 108 EPC and Art. 2 (1) No. 11 of the Rules relating to Fees in order to validly form an appeal and so was not paid without any legal basis. Since also none of the conditions of R. 103 EPC apply here, the appeal fee cannot be reimbursed.