2. Applicability of the principle of the protection of legitimate expectations
Overview
2. Applicability of the principle of the protection of legitimate expectations
The principle of the protection of legitimate expectations applies to all procedural actions – whether formal or informal – taken by EPO employees vis-à-vis parties to proceedings (T 160/92, OJ 1995, 35; see also T 343/95; T 460/95 of 16 July 1996 date: 1996-07-16; T 428/98, OJ 2001, 494).
It applies to both ex parte and inter partes proceedings (T 923/95).
The requirements in connection with the principle of good faith to be observed by the EPO are the same vis-à-vis all parties involved in proceedings before the EPO, be they applicants, patent proprietors or opponents (T 161/96, OJ 1999, 331, see also J 12/94).
The principle of the protection of legitimate expectations also applies to acts performed by other authorities concerned in Euro-PCT proceedings during the international phase such as the US Patent Office acting as receiving Office or as International Preliminary Examining Authority (J 13/03). It applies also to the conduct of national authorities when dealing with European patent applications filed with them under Art. 75(1)(b) EPC (J 34/03). It can also apply in situations in which, while there is no erroneous information from the EPO, the outcome is the same in that a party receives erroneous information as a result of another party's actions (see T 353/18, in which the respondent had mistakenly filed differing clean and annotated versions of the claim).
The principle of legitimate expectations only protects parties from disadvantageous procedural consequences of the omission of procedural steps, in relying on erroneous information from the EPO. It has no bearing on substantive law and cannot render patentable what otherwise would not be. This applies, in particular, when the information – even if it were wrong – was issued by a department of the EPO that was not competent to examine patentability (T 2239/15).
- J 3/24
Abstract
In J 3/24 the examination and designation fees (due on Friday, 10 February 2023) had been paid too late (on Monday, 13 February 2023). By letter of 12 February 2023, the appellant's representative had requested that the payment be considered as made on time, as he had wrongly assumed that he had given an automatic debit order. On 21 February 2023, a notification of loss of rights had been sent undated, and had been sent again on 7 March 2023 (together, the "Notification") informing the appellant that the application had been deemed to be withdrawn due to the late payment. The Notification indicated as available means of redress a request for further processing under Art. 121 EPC and a request to consider the fee to have been paid on time under Art. 7(3), 7(4) RFees, each within a two-month time limit for filing. No valid request for further processing had been filed during that time.
The appellant argued that the fact that the Receiving Section had not replied to his letter of 12 February 2023 and had wrongly stated that a reply had been given with the Notification constituted a substantial procedural violation. He requested reimbursement of the appeal fee.
The Legal Board did not consider that the requirements in R. 103(1)(a) EPC were met in the present case. It recalled that according to the established case law of the Boards of Appeal, the principle of the protection of legitimate expectations (also referred to as the principle of good faith) requires communications addressed to applicants to be clear and unambiguous, i.e. drafted in such a way as to rule out misunderstandings on the part of a reasonable addressee. An applicant must not suffer a disadvantage as a result of having relied on a misleading communication (see G 2/97, J 2/87, J 3/87, J 4/23, T 2092/13). If a communication is not as clear and unambiguous as it should be and misleads a reasonable recipient, this may constitute a substantial procedural violation and entitle the appellant to reimbursement of the appeal fee (see J 3/87). On the other hand, both the EPO and users of the European patent system who are parties to proceedings before it are obliged to act in good faith. The principle of the protection of legitimate expectations does not give carte blanche to the person relying on it (J 4/23). It is the responsibility of users of the European patent system to take all necessary procedural actions to avoid a loss of rights (see G 2/97, R 4/09). It is also inherent in the principle of the protection of legitimate expectations that a person can only successfully invoke an expectation on which they could, on an objective basis, legitimately rely. The erroneous information from the EPO must objectively justify their conduct (see J 4/23; G 2/97). Thus it must be established that, on an objective basis and in the circumstances of the case, it was reasonable for the appellant to have been misled by the information on which they relied (see J 4/23, J 27/92, G 2/97).
The Legal Board acknowledged that the Notification made reference to the late payment but did not expressly address the request of 12 February 2023 for the late payment to be considered as having been made on time. It was therefore not clearly apparent whether the Receiving Section had taken this request into account in the Notification. However, it was not reasonable for the appellant to completely disregard the Notification. Even if the appellant's representative had considered the Notification as having been generated automatically without taking into account the request of 12 February 2023, it was expected that communications from the EPO would be observed. The Notification pointed out the legal remedies available to overcome the loss of rights caused by the late payment and indicated the time limit for filing a request for further processing. Such an official communication could not simply be ignored and set aside. Rather, it was the appellant's own responsibility to enquire about the situation regarding his request before expiry of the triggered time limits to ensure that he did not suffer any loss of rights. The fact that he only contacted the Receiving Section on 1 June 2023 had to be attributed solely to him. The Legal Board reiterated that it was the responsibility of users of the European patent system to take all necessary procedural actions to avoid a loss of rights. This applied all the more in the case at hand as the matter was initially set in motion by an error on the part of the appellant's representative. Moreover, even if a substantial procedural error were to be assumed – which could not be recognised here – reimbursement of the appeal fee would not be equitable within the meaning of R. 103(1)(a) EPC, since the behaviour of the appellant had contributed to the situation.
The request for reimbursement of the appeal fee was refused.