J 0021/92 (Re-establishment) 16-03-1995

Summary of Facts and Submissions

I. European patent application 87 907 061.3 (the subject of Appeal J 21/92) was filed on 1 October 1987, and European patent application 88 910 336.2 (the subject of Appeal J 24/92) on 21 October 1988, both in the name of the Appellant, Massachusetts Institute of Technology ("MIT"). The fourth year renewal fee on application 87. 907 061.3 was due by 31 October 1990, and the third year renewal fee on application 88 910 336.2 was due by the same date, but neither was paid by this date. In each case a form 2522, dated 27 November 1990, was sent by the EPO to the authorized European representative ("the European representative"), indicating that the fee had not been paid in the normal period, but that pursuant to Article 86(2) EPC it could still be paid together with a surcharge up to 30 April 1991. No payments were received by this date either, and the EPO by forms 2524, dated 7 June 1991, sent to the European representative, indicated that each of these applications was deemed to be withdrawn. On 6 August 1991, MIT filed a request for re-establishment of rights, under Article 122 EPC, by telefax. At the same time, the fees for re-establishment of rights, as well as the respective third and fourth year renewal fees plus surcharge, were paid.

II. The system operated was such that when a form 2522 concerning the possibility of payment with a surcharge of a renewal fee in an extended period was received by the European representative, it would be sent to the particular firm of US patent attorneys ("the particular US attorneys") handling the global prosecution of applications relating to a particular invention, who in turn would pass it on to MIT's patent administrator for action, if any. The records of the European representative show that the forms 2522 were forwarded to the particular US attorneys on 29 November 1990. The particular US attorneys had no records that showed that these forms were received, or that they were forwarded to MIT's patent administrator. The forms 2522 were not on record with MIT, and MIT's patent administrator had no recollection of having received them.

At the relevant time the particular US attorneys' renewals section was working under particular pressure because earlier that year the particular US attorneys had first decided to make payments of renewal fees for which they had responsibility, through a computer annuity firm, and then a few months later the particular US attorneys decided to revert to an in-house system of paying renewal fees. This caused the amount of correspondence with foreign associates on the question of to whom renewal reminders fees were to be sent to be much greater than normal.

At the beginning of 1990 MIT had a reliably working system for paying renewal fees, which was based on responding to renewal reminders sent to MIT by a number of firms of US patent attorneys dealing with the global prosecution of applications. Given that MIT's patent portfolio had expanded to many hundreds of patents this system had however become cumbersome to operate, and MIT decided in the spring of 1990 to centralize and simplify the work involved by arranging for a single computer annuity bureau to take over responsibility for generating renewal reminders and paying renewal fees. The various firms of US patent attorneys MIT was using would remain responsible only for prosecution of the applications. MIT realized that the computer annuity bureau would need an adequate record base, and employees of the latter visited MIT and prepared a listing of the cases identified as being handled by each firm of attorneys. On the 10 August 1990, MIT's patent administrator wrote to the US attorneys indicating that they would no longer be responsible for foreign annuity payments falling due after 1 October 1990, enclosing the relevant listing for that firm, asking them to cross check it with their own records, and requesting them to inform MIT of any discrepancies. The two European applications 87 907 061.3 and 88 910 336.2 and the relevant renewal dates did not appear on this listing, although the equivalent US and Canadian applications did so appear.

On appeal it was further submitted that of more than six hundred annuities relating to patents for which MIT's patent administrator was responsible between October 1990 and September 1991, only on the two under appeal was there an unintentional failure to pay.

III. MIT claimed 11 June 1991, the date of receipt of form 2524 at MIT, to be the date of removal of the cause of non-compliance.

IV. By decisions both dated 3 February 1992 with the same reasoning, the Receiving Section accepted that the requests had been filed in each case within two months from removal of the cause of non-compliance, and that the requirements of Article 122 EPC other than that of showing that all due care had been used were met. However restitutio in each case was denied essentially on the grounds that lack of due care had been shown because MIT's own records had not been sufficient for establishing a renewals database, MIT had not investigated why no answer to their letter of 10 August 1990 to the particular US attorneys had been received, MIT's system was not considered satisfactory, and some actions by MIT's particular US attorneys were considered careless.

V. MIT filed a Notice of Appeal in each case on 23. March 1992 and paid the appeal fee. In the Statement of Grounds filed on 11 June 1992, supported by additional evidence, MIT argued essentially that the criticisms in the decision under appeal were unreasonable and that the evidence showed that MIT had used all due care. The failures by the particular US patent attorneys had been due to quite exceptional circumstances, and should not be attributable to MIT nor prevent restitutio.