J 0004/07 (Re-establishment of rights/STILLMAN) 07-07-2008

Reasons for the Decision

1. The appeal is admissible.

In order to be allowable, the appeal would have to meet the requirements of Article 122 EPC 1973, which is applicable to the present case pursuant to Article 1, No. 5, of the decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the EPC Revision Act (see special edition No. 1/2007 OJ EPO, at pp. 197 et seq.)

2. The question as to whether the application for re-establishment is admissible, in particular whether the statement of grounds on which it is based is sufficient in that regard (cf. J 19/05 of 24 November 2006), is left an open one.

3. As for the merits of the application, the Board considers that the appellant has clearly failed to show that it has met the requirements of Article 122(1) EPC 1973, namely that it was unable, despite having taken all due care required by the circumstances, to observe the time limit for payment of the fourth-year renewal fee, together with the surcharge, by the end of the grace period on 31 August 2004, non-observance of which directly led to the loss of the right to its application pursuant to Article 86(3) EPC 1973.

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 only be judged with regard to the circumstances as they were at that time (cf. T 667/92 of 10 March 1994, point 3 of the reasons; T 381/93 of 12 August 1994, point 3 of the reasons).

The request for re-establishment of rights of an applicant with a professional representative acting on his behalf is only allowable if both the applicant himself and his representative have met the necessary standard of care (see J 1/07, point 4.1 of the reasons). When an applicant is represented by a professional representative, a request for re-establishment of rights 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 1973 (cf. J 5/80, OJ EPO 1981, 343, headnote I). Where, as in the case at hand, there are two representatives, a non-European domestic representative, Mr Kirchanski, and a European representative, Mr Fiener, the duty of due care applies to both of them (cf. J 1/07, at points 4.3 et seq. of the reasons).

For cases where the cause of non-compliance with a time limit involves some error in the carrying out of the party's intention to comply with the time limit, what in the present case happened in the area of her European and U.S. representatives, the case law has established the criterion that due care is considered to have been taken if non-compliance with the time limit results either from exceptional circumstances or from an isolated mistake within a normally satisfactory monitoring system (see Case Law of the Boards of Appeal of the European Patent Office, 5th edition 2006, at VI.E.6.2.). The appellant, however, has not established that non-compliance with the time limit in question resulted either from an "isolated mistake within a normally satisfactory monitoring system" (see below, under point 4) or from "exceptional circumstances" (see point 5) in the area of responsibility of her European and U.S. representatives.

Consequently, there is no need to address the question as to whether the appellant, Mrs Stillman, herself has exercised all due care. In the letter of 6 July 2008 the European representative argues on the basis of Mrs Stillman's letter dated 31 August 2007 that she exerted all due care, "as she elected a known, well-working law firm", namely Trojan. But from his statement that "the former responsible US-law firm had a well-working annuity system in 2004" (emphasis added) it would anyway have to be concluded that the change to Trojan took place after the end of Year 2004. For that reason alone her employment of Trojan would be immaterial in this context. In any case, even assuming that she had exercised all due care before the time limit had expired on 31 August 2004 this would have no impact on the fact that her two representatives were also responsible and that she has to accept their actions on her behalf, including any missing of deadlines in their areas of responsibility that cannot be reinstated under Article 122 EPC 1973.

4. Isolated mistake within a normally satisfactory monitoring system

The analysis below will show that compliance with this limb of the due care criterion has not been established for either of the two representatives.

4.1 The European professional representative (Mr Fiener)

The European representative submitted that he sent a reminder to Reed Smith dated 6 April 2004. The fourth-year renewal fee had not been paid before the relevant date i.e. on 29 February 2004. The European representative has not asserted that he had sent any further reminder before the expiry of the grace period on 31 August 2004, subsequent to which the Office issued a communication of a loss of rights.

The Board notes that, even if renewal fees are paid by someone else (i.e. the U.S. patent attorney, an annuity service or even the applicant himself), the appointed professional representative remains responsible in the procedure before the EPO and he has to take the necessary steps to ensure payment, if intended. This includes a reliable monitoring system, reminders to the applicant, etc. (See J 11/06 of 18 April 2007, at point 8 of the reasons, relying on the established case law of the Legal Board of Appeal following decision J 27/90 (OJ EPO 1993, 422). The subject of those proceedings in which the same European representative acted was also a request for re-establishment of rights in relation to the non-payment of a renewal fee in due time.

In the present case it is of relevance that Reed Smith informed the European representative in a letter signed on 21 January 2004 that the fourth-year renewal fee would be paid by the annuity service CPA. Furthermore, in his reminder letter of 6 April 2004 the European representative referred to Mr Kirchanski's instructions of 24 March 2004 to proceed with the examination. Thus the European representative had every reason to believe that it was the appellant's intention to continue prosecution of the application in suit.

Under these circumstances the Board does not consider that it was sufficient for the European representative only to send a single reminder more than four months prior to the expiry of the critical term on 31 August 2004. Rather, the Board is of the opinion that the European representative could have reasonably been expected to send a further reminder shortly before 31 August 2004. The reminder would have had to be transmitted to the representative prosecuting the application in suit. According to the findings below (under "U.S. representative") this person continued to be Mr Kirchanski. Mr Kirchanski could have been reached in his new law firm LYSR, as evidenced by the letter dated 28 July 2004 sent to his address in the law offices of LYSR in the matter of his other client Shanbrom (see section II above).

As the European representative, in neither of the statements of grounds nor in any of his subsequent submissions, explained how his time limit monitoring system normally worked and, more specifically, which measures were normally taken in order to guarantee the timely payment of renewal fees, the Board is unable to find that failure to send a further reminder to Mr Kirchanski amounts to an isolated mistake in a normally satisfactory monitoring system.

4.2 The U.S. representative

- Mr Kirchanski being the U.S. representative

A non-European representative can be held responsible for meeting the obligations of any representative whose duty it is to care for his client's interests, irrespective of whether such representative is entitled to represent before the EPO or any other patent office (cf. J 25/96 of 11 April 2000, at point 3.2 of the reasons). The monitoring of specific time limits that were set expressly does not depend on knowledge of EPC law. Thus a non-European representative must also establish a reliable monitoring system for such time limits. Furthermore, any representative, whether European or non-European, moving from one law firm to another must make provisions upon entry in that firm that those files that he carries over are integrated into a time limit monitoring system.

The European representative, in none of his submissions, ever identified expressly with whom responsibility for the application at issue rested after Mr Kirchanski's change from the law firm Reed Smith to LYSR, i.e. whether responsibility remained with Reed Smith, or whether Mr Kirchanski continued to be in charge in his new law firm LYSR, having carried over the file at issue. However, from the facts and evidence that the European representative supplied it follows for the Board that the latter was the case. The Board thus does not concur with the decision of the examining division (see part 2.2), insofar as it is based on the finding that the firm of Reed Smith continued to be responsible for the file after Mr Kirchanski's departure.

The Board concludes from the European representative's submissions that it was Mr Kirchanski who, during the whole of Year 2004, acted as the appellant's representative in the U.S. In the statement of grounds for re-establishment received on 30 December 2004 it was said that patent applications of Mrs Stillman were handled in the U.S. by Mr Kirchanski. In the statement setting out the grounds of appeal it is said that in 2004 the appellant "was represented in USA by Mr KIRCHANSKI, being a member of REED SMITH". The European representative further claimed that the "absence" of Mr Kirchanski and his paralegal from Reed Smith amounted to "exceptional circumstances" (see below). This contention cannot be given the meaning that the responsibility for the file remained with Reed Smith, as the European representative also argued that the mistake was apparently caused "by several changes of responsibility as shown by 'switching' to several U.S. law firms/annuity services". Moreover he twice requested an extension of time in order to ascertain further facts with Mr Kirchanski whom he referred to in both requests as the "central" person. Had Reed Smith remained responsible for the file it would have been more sensible to turn to that firm to investigate the circumstances surrounding the missing of the deadline. Finally, from a post scriptum at the bottom of the European representative's letter dated 28 July 2004 ("Yes. ALL Shanbrom cases remain with us.") it follows that Mr Kirchanski carried over the cases of another client, Shanbrom, from Reed Smith to LYSR.

In any case, the European representative, in his letters filed subsequent to the Board's communication, on 3 and 6 July 2008 respectively, did not object to the Board's preliminary view expressed in the communication according to which it was Mr Kirchanski who, during the whole of Year 2004, acted as the appellant's representative in the U.S.

It may remain unclear what is meant by "switching" to several law firms and several annuity firms given that only one transfer, namely that of Mr Kirchanski from Reed Smith to LYSR, and no "switch" at all from CPA to any other annuity payment service has been alleged to have taken place before expiry of the deadline on 31 August 2004 (the "switch" to the Trojan law firm happened after the end of 2004). However, from the letter dated 28 July 2004 it can be deduced that, before that date at the latest, Mr Kirchanski had left the law firm Reed Smith and by that date at the latest he had joined the law firm LYSR. Consequently, Reed Smith's responsibility for, and involvement in, the prosecution of the application ceased on 28 July 2004 at the latest.

- No explanation of Mr Kirchanski's monitoring system

The European representative has not elaborated on how, before the relevant point in time when the loss of rights occurred, i.e. before expiry of the grace period for payment of the renewal fee and the surcharge at the end of August 2004, the time limit monitoring system in Mr Kirchanski's new area of responsibility with LYSR normally worked and which measures were taken in order to safeguard timely payment of renewal fees for such files. The new environment of LSYR, and not that of Reed Smith, is considered to be decisive in this regard because a period of about one month (that is the time between the latest date on which Mr Kirchanski started work at LYSR (28 July 2004) and the date on which the grace period for paying the renewal fee and the surcharge expired (31 August 2004) should it not have been done by that time) is judged to yet be largely sufficient for effecting payment, even in the course of an attorney's move from one law firm to another.

Instead of explaining any monitoring system, the European representative relies on the fact that several European patents (but not belonging to the appellant) handled by Mr Kirchanski had been granted, without providing any information on those patents with the exception of the number of one granted European patent (i.e. 1268305) in his submission of 6 July 2008. In this regard, the finding in J 11/06 (at point 6 of the reasons) is pertinent, according to which "the fact that recently several EP-patents had been granted on behalf of the applicant does not prove that a satisfactory [monitoring] system was in place."

On the basis of the foregoing legal considerations the Board cannot ascertain from the file that the appellant's European representative has "demonstrated and evidenced" that non-compliance with the time limit in question resulted from an isolated mistake within a normally satisfactory monitoring system within the responsibility of Mr Kirchanski.

5. Exceptional circumstances

The European representative also maintains that the "absence" of the responsible attorney and his paralegal from the law firm Reed Smith amount to exceptional circumstances within the meaning of the case law.

In a number of cases the Boards have recognised "exceptional circumstances" as an excuse for non-compliance with a time limit; cf. Case Law of the Boards of Appeal, ibid., at VI.E.6.2.1 and in particular T 14/89 and J 13/90 cited there. In T 14/89 (OJ EPO 1990, 432) the conditions for re-establishment were met where a mistake had occurred due to internal reorganisation and removals. Similarly, in J 13/90 (OJ EPO 1994, 456), in the context of a change of attorney, an isolated mistake was held to be excusable. In both of those proceedings specific reasons were given why the mistakes happened and corroborating evidence was filed. Such is not the case as regards the present proceedings.

However, as Reed Smith's responsibility for and involvement in the application in suit ended on 28 July 2004 at the latest, the Board is unable to see any causal link between the "absences" of Mr Kirchanski and of his former paralegal from the firm Reed Smith and the failure to effect a timely payment of the renewal fee and the surcharge by LYSR. The reason is that the time limit in question expired end of August 2004 so that the responsibility of Reed Smith for the payment ceased to exist roughly one month before the end of the time limit. As stated, a period of about one month seems to be largely sufficient for effecting payment, even in the wake of an attorney's move from one law firm to another.

Apart from that, the European representative himself does not seem to be sure about the reason why the time limit was missed. In both statements of grounds it is said that payment "never happened, whichever the reasons are. One assumption is that the signing paralegal Michael Moores left this law firm in spring 2004" (emphasis added).

On the basis of the above submissions the Board cannot recognise the presence of "exceptional circumstances" within the meaning of the case law in the case at hand.

6. European patent application No. 01994441.2

In his submission dated 3 July 2008 the European representative reports on a request for re-establishment of rights regarding European patent application No. 01994441.2 that he had filed and that was granted by the examining division "on very similar reasons, namely change of responsibility to a new representative and subsequent confusion as to annuity payment." The scant information that he provided in respect of that case (see above, at point VII.) and the equally limited submissions that he made in the present case do not however make it possible for the Board to judge whether the two cases could at all be comparable.

7. Conclusion

In the light of the foregoing the Board had to arrive at the conclusion that the application for re-establishment of rights in relation to the time limit for paying the fourth-year renewal fee with surcharge is not well-founded.