J 0011/93 (IRT Corporation) 06-02-1996

I. International patent application PCT/US91/05558 was filed with the US PTO acting as receiving office on 5. August 1991 by US professional representative Neil F. Martin, in the name of IRT Corporation, 3030 Callan Road, San Diego CA 92121 (USA).

The application designated the EPO for the purpose of obtaining a European patent and claimed the priority of US patent applications:

- US 563 041 of 6 August 1990

- US 704 292 of 22 May 1991.

II. On 12 March 1992 the Receiving Section of the EPO informed Mr Martin, the US representative, of the procedural steps to be taken for entry into the regional phase before the EPO.

By letter dated 30 September 1992 sent directly to the applicant company, the Receiving Section of the EPO informed it pursuant to Rule 85(a)(1) EPC that the due fees had not yet been paid but that they could still validly be paid within a period of grace of one month from notification of said communication together with a surcharge.

III. On 6 November 1992 Mr N. M. Wilson, European patent attorney, acting on behalf of the applicant "as will be seen from the authorisation ... of copending application 87301332.0", filed a Form 1200 in order to enter the European regional phase of the application, and ordered that the due fees plus surcharge be debited from his account.

IV. By letter dated 26 November 1992, the Receiving Section of the EPO informed the European professional representative that they had already sent the applicant a communication according to Article 49 PCT and Article 133(2) EPC giving it the opportunity to pay the fees within the prescribed time limit and that nevertheless the applicant had failed to comply with the requirements prescribed by Rule 104b(1) EPC within the period of grace, which had expired on 30 October 1992.

On the same day i.e. on 26 November 1992, the Receiving Section sent the European representative a notification pursuant to Rule 69(1) EPC informing him that the European application was deemed to be withdrawn.

In his answer dated 1 December 1992 the European representative pointed out that the applicant, not having either its residence or principal place of business within the territory of one of the Contracting States, had to be represented by a professional representative. Since in the present case, as indicated in the previous letter dated 6 November 1992, the applicant was already represented by him, it was incumbent on the EPO to address every letter to the appointed representative.

Moreover, had the letter dated 30 September 1992 been correctly forwarded to the European attorney, it would then not have been deemed to have been delivered until the tenth day following its posting, i.e. on 10 November 1992, so that the requirements of Rule 104b(1) EPC would indeed have been complied with within the stipulated period of grace.

V. By request dated 12 January 1993 the applicant formally applied for a decision on the withdrawal of the application, under Rule 69(2) EPC.

Subsequently, the applicant submitted in a letter dated 26. February 1993 that the authorisation filed in respect of European patent application No. 87 301 332.0 had been intended to be a general one in order to allow the then appointed attorney to represent the applicant in respect of all matters before the EPO.

It was also pointed out that the said authorisation bore no number or title specific to a particular application so that it should be deemed to be a general power. Therefore, the communication pursuant to Rule 85a(1) EPC should have been sent to the attorney already empowered and not directly to the applicant, and with respect to the provisions of Rule 78(3) EPC the fees paid on 6. November 1992 had been paid within the period of grace.

VI. On 14 May 1993 the Receiving Section of the EPO decided as follows:

- The representative's request of 26 February 1993, under Rule 69(2) EPC, for proceeding before the European patent office is rejected.

- The application No. 91 915 567.1 is deemed to be withdrawn. The national fees and surcharges paid on 10. November 1992, will be refunded.

VII. On 7 July 1993 the applicant lodged an appeal against this decision and paid the corresponding fee.

In its statement of grounds of appeal dated 24 August 1993 and received at the EPO on 26 August, the applicant essentially submitted that the official communication under Rule 85a(1) EPC should have been sent to the authorised European representative since he had been duly empowered to act on behalf on the applicant by a general authorisation filed with the EPO on 17 February 1987 together with another European patent application bearing No. 87 301 332.

As regards the significance of said document, the appellant submitted that, had it been unclear for the addressee because it bore neither application number nor any other indication linking it to a specific application, it was then incumbent on the EPO to query the exact meaning of the form.

It was further pointed out that the payment of fees can be done by any person and that it was inconsistent to send a first official communication to the representative in the international phase, i.e. Neil Martin et. al. in San Diego (USA) and a second communication pursuant to Rule 85a(1) EPC directly to the applicant, who was not deemed to be aware of every procedural step to be followed before the EPO.

Concerning the notification of the communication dated 30. September 1992, it was submitted that Rule 78(2) EPC does not mention "applicants" but only "addressees" not having either their residence or their principal place of business within the territory of one of the Contracting States. Therefore, in the absence of a European representative, the correct addressee was to be understood as being the representative appointed for the international phase.

Moreover, the practice of the EPO of following the Legal Advice No. 18/92 was wrong at least with respect to payment of fees, since no provision of the EPC expressly required that communications under Rule 85a EPC be sent directly to the applicant rather than to their already appointed professional representative for the international phase, whose duty it was to deal with the complexities of patent law and procedure.

An applicant not being aware of these rules would simply assume that any mail received from the EPO had already been received by his representative, wherever his residence might be, and would therefore not pay any particular attention to it.

In conclusion, the applicant submitted that it was contrary to the principle of good faith governing relations between the EPO and an applicant to send directly only to the latter official communications with respect to payment of fees when a representative had been specially appointed to take all necessary actions in order to maintain the application.

VIII. It was requested that the decision under appeal be set aside, and that the application be allowed to proceed.

IX. In a communication dated 2 December 1994 the rapporteur of the Board informed the appellant that at first sight the appeal was to be rejected for the following reasons:

- The notification under Rule 85a(1) was correctly sent to the applicant itself since it had neither residence nor principal place of business within the territory of one of the Contracting States and it had therefore to be represented by an authorised representative and act through him in all proceedings established by the EPC.

- The authorisation filed with the application No. 87 301 332.0, although bearing no precise indication, could not be considered to be a general authorisation, it being also noted that the recommended Form 1004 (OJ EPO 1992, 85) had not been used.

- Therefore the notification dated 30 September 1992 was deemed to have been made when its despatch took place, even if the addressee never in fact received it.

- The Receiving Section of the EPO first became aware of the change of address of the applicant in February 1993, i.e. after the loss of rights occurred.

X. In its response dated 29 June 1995 the appellant made the following observations:

- Although the applicant had neither residence nor principal place of business within the territory of one of the Contracting States, and assuming that it had no European authorised representative, the notification under Rule 85a(1) should not have been sent to the applicant himself since the latter could not in the case in suit be the "addressee" specified by the provisions of Rule 78(2) EPC.

In fact in cases such as the present one where the applicant has already appointed a professional representative for the international phase, albeit a representative not entitled to act before the EPO, it was then incumbent on the EPO to send every notification to that representative rather than only to the applicant itself who was not supposed to be aware of every fine distinction of the procedure before the EPO.

This was all the more necessary when the office had taken the first step of dealing directly with the agent appointed during the international phase of the application, although he was not entitled to act before it.

- The applicant then reiterated that the authorisation filed with the previous application No. 87 301 332.0, although not being a EPO recommended Form 1004, did not bear any precise indication allowing to connect it with a specific patent application. If the EPO had had any doubt about its significance, it should have sought clarification in that respect.

XI. In its last statement in writing dated 19 January 1996, the appellant emphasized the following additional points:

- Euro PCT applicants should enjoy the same rights as Euro applicants. This was not the case where the appellant was at a disadvantage simply because the notification directly sent to him was deemed to have been made when despatch took place, whereas a notification made to an applicant having its residence within the territory of one of the Contracting States would in fact result in an additional period of grace in favour of the addressee, whose payment in this particular case would have been deemed to have been made in time.

- The legal advice No. 18/92 according to which notifications under Rule 85b shall be forwarded to a non-European applicant by means of ordinary mail at its last known address is inconsistent especially when the EPO has already directly dealt with the appointed US representative.

XII. The appellant stood by its previous requests, and oral proceedings were held on 6 February 1996.