4.1.1 Two-month time limit from the removal of the cause of non-compliance
In several decisions the boards considered the question of the responsible person who could or should have detected the omission.
In T 812/04 the board held that the person to be taken into account for the purposes of establishing the point in time when the appellant was no longer prevented from carrying out an unperformed act was the duly appointed representative.
In T 32/04 the board considered that in the absence of a duly registered transfer of the application, the person responsible for the purpose of the EPO remained the applicant or his representative. Hence an alleged assignment of the application to a third party in the absence of such a registration was "res inter alios acta", i.e. outside the ambit of the legal relationship between the applicant and the EPO.
In T 191/82 date: 1985-04-16 (OJ 1985, 189) the board held that in a case in which non-compliance with a time limit was discovered by an employee of a representative, the cause of non-compliance, i.e. failure to appreciate that the time limit had not been complied with, could not be considered to have been removed until the representative concerned had himself been made aware of the facts, since it had to be his responsibility to decide whether an application for re-establishment of rights should be made and, if it was to be made, to determine the grounds and supporting facts to be presented to the EPO (see also J 7/82, OJ 1982, 391; J 9/86; T 381/93 of 12 August 1994 date: 1994-08-12).
In J 1/13 the Legal Board considered that within a law or patent attorney's firm the relevant person was the representative and not his or her employee (T 191/82 date: 1985-04-16); however, it was not up to the representative to extend the time period of R. 136(1) EPC at will by keeping him- or herself intentionally uninformed (see T 1985/11, where the board found it irrelevant that the representative had not read the letter when acknowledging its receipt). In addition, although most cases regarding the removal of the cause of non-compliance deal with the point in time when a representative discovered (or ought to have discovered) the error, the Legal Board stated it was recognised that the person whose knowledge was relevant might also be the applicant himself (see J 27/88; J 27/90, OJ, 1993, 422; T 840/94, OJ 1996, 680; T 32/04).
In T 840/94 (OJ 1996, 680) the board held that if a party instructed the authorised representative not to pass on any further communication from the EPO, it could not then rely on the fact that information notified to the representative and necessary for continuing the proceedings was lacking. See also T 1908/09.
In T 1588/15 the finding of the board differed from the line taken by J 1/13. The board saw no good reasons for the representative being uninformed and not taking immediate action in the knowledge (or merely belief) of being uninformed. It held that an applicant had a specific duty to positively inform its representative about an intended abandonment of an application. The board held that even when a representative was explicitly exempted from looking after a fee payment, at least he could be expected to be informed at all times about the applicant's intention as to whether or not the application was to be maintained. It decided that receipt of the noting of loss of rights by the representative triggered the time limit of two months foreseen in R. 136(1) EPC.
In J 27/88 the Legal Board held that the responsible person in the case at issue was neither the appellant nor the European representative but the US patent attorney who was the authorised agent of the appellant and was duly empowered to take all necessary measures. The date of removal of the cause of non-compliance was the date on which the US patent attorney became aware of the omission.
In J 27/90 (OJ 1993, 422) the applicant, a US company, properly appointed a European professional representative. For the payment of renewal fees it used a computerised service firm, a so-called "renewal fee payment agency". The Legal Board held that in the absence of circumstances to the contrary a communication under R. 69(1) EPC 1973 to the professional representative removed the cause of non-compliance. This also applied when parties instructed the (European) professional representatives via their (national) patent attorney. The appointment of an independent service firm for the payment of renewal fees did not constitute circumstances to the contrary.
In T 1908/09 the board observed that if there was more than one applicant the co-applicants had to name a common representative (Art. 133(4) and R. 151(1) EPC). If they failed to do so and one of the applicants was obliged to appoint a professional representative under Art. 133(2) EPC, this representative was deemed to be the common representative. In the case at issue, with the notification of the loss of rights (R. 126(2) EPC) to their common representative (Rule 130(3) EPC) both applicants were made aware of the fact that the time limit had expired.
In J 16/93 the Legal Board held that in the event of exceptional circumstances the cause of non-compliance with a time limit may persist even though the applicant's representatives were duly informed of the loss of rights resulting therefrom. This is the case when a combination of circumstances, which cannot be blamed on either the applicant or its representatives, and which arose in particular from the fact that they had both moved to new addresses and from the illness of a director of the company applying for a European patent, made it impossible for the professional representatives to contact the applicant in due time. This combination of circumstances prevented the representatives from performing the omitted act – i.e. paying the renewal fee for the third year – since they had not received any advance. A representative whose authorisation is silent in this respect and who has not received any funds for this purpose is not expected to advance moneys on behalf of his client out of his own pocket.
- T 1882/23
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.