4.1.1 Two-month time limit from the removal of the cause of non-compliance

Abstract

In the decision under appeal in T 1882/23, the examining division had rejected the applicant's request for re-establishment of rights in respect of the time limit for paying the renewal fee for the fourth year and the additional fee, and deemed the patent application to be withdrawn. The examining division considered the request to be inadmissible because it was not filed within two months of the removal of the cause of non-compliance within the meaning of R. 136(1), first sentence, EPC.

The board recalled that the removal of the cause of non-compliance is to be established on a purely factual basis. It occurred, as a rule, on the date on which the person responsible for the application vis-à-vis the EPO became aware of the fact that a time limit had not been observed. This awareness was typically the result of the actual receipt of a communication of loss of rights under R. 112(1) EPC (see T 231/23, J 1/20). This had not been disputed by the appellant.

The appellant argued that, in the present case, the person responsible for the application vis-à-vis the EPO should be the person employed by the appellant to manage its patent portfolio (the "IP person"). It argued that this person's awareness had to be decisive, and not that of the professional representative. According to the appellant, the present circumstances illustrated the problems associated with a "hybrid" system, where the representative was not fully responsible for all actions relating to the application, but where other persons, in this case the in-house IP person, were responsible for the patent portfolio and for managing the payment of renewal fees. The appellant stressed that the authorised firm of representatives had been specifically told that they were not responsible for paying the renewal fees.

The board did not find these arguments convincing. The question of who was responsible for which task within the appellant's sphere of responsibility could not be decisive for the issue of determining the point in time when the cause of non-compliance with the period was removed. Legal certainty required that the starting point be clearly and objectively determined. This could not depend on the circumstances of how the appellant had organised its tasks and representation, whether internally or with the help of external providers.

The board referred to the current case law on this matter and observed that, where a professional representative was appointed, it was that representative who was the "person responsible for the application vis-à-vis the EPO" (cf. J 1/20). The professional representative remained the person whose awareness was relevant for assessing when the cause of non-compliance with the period was removed, irrespective of whether a third party other than the representative was responsible for the payment of fees (J 27/90). As such, regardless of the contractual arrangements made by the appellant for the payment of fees, the appointed professional representative remained the EPO's single point of contact (T 231/23). If the appointed professional representative received a communication of loss of rights due to the non-payment of fees, the cause of non-compliance with the period was removed pursuant to R. 136(1), first sentence, EPC on the date of that actual receipt. This was also true where, as in the present case, that representative had been instructed by their client that all renewal matters would be handled by others. According to the board, such an instruction alone was not a reason for the cause of non-compliance to persist despite the appointed professional representative's actual awareness of the non-compliance (T 231/23). Thus, in the case in hand, it was irrelevant whether, and on which date, the appellant's "IP person" received the notice of loss of rights.

The appellant also sought to rely on T 942/12. However, the board did not find this decision relevant to the question at hand. According to the board, the findings in T 942/12 concerned solely the question of whether the representative had exercised "all due care", i.e. the merits of the request for re-establishment of rights. In contrast, the question in the case at hand related to the person whose awareness was relevant for the removal of the cause of non-compliance. This question was independent of the question of whether all due care was taken.

The professional representative had received the notice of loss of rights on 4 June 2019. The removal of the cause of non-compliance with the period thus occurred on that date. The request for re-establishment of rights was filed on 10 September 2019, i.e. it was not filed within the two-month time limit laid down in R. 136(1), first sentence, EPC. Therefore, the appeal was dismissed.