T 0261/07 (Culture medium/WELLCOME) 27-09-2007

1. Admissibility of the appeal

1.1 The appealed decision was issued on 19 October 2006, and the appeal period of two months according to Article 108 EPC expired on 29 December 2006, taking into account the 10 days period of postal delay as stipulated by Rule 78(2) EPC. The time limit so calculated is applicable "unless the letter has failed to reach the addressee or has reached him at a later date", Rule 78(2) EPC. The patentee indeed argues that the letter containing the decision never reached the addressee, and knowledge of the decision was only obtained by way of file inspection on 2 February 2007. It was then on 2 February 2007 that the patentee in a letter addressed to the Office indicated that "we hereby appeal the decision and request that the EPO withdraw the required appeal fee from the GlaxoSmithKline deposit account."

1.2 Decisions such as the one at issue are notified by registered letter with advice of delivery. Unlike in the case of the opponents, the patentee's pink advice of delivery was never returned to the Office. Neither did the Office receive the white standard acknowledgement of receipt mentioned in OJ EPO 1984, 325 and OJ EPO 1991, 577/578. Absence of these two documents does not necessarily indicate failure of delivery, however (T 247/98, supra point 2.6 of the Reasons). The information in OJ EPO 1991, 577 under point 1(b) specifically mentions that "as a result of differing delivery regulations in the individual Contracting States, advices of delivery are often either not returned to the European Patent Office at all or else returned without being completed at the receiving end." Absence of the advice of delivery or acknowledgement of receipt make it more onerous, however, for the European Patent Office to prove in the event of any dispute that a letter has reached its destination. But also the party that contests proper notification is under a duty to investigate the whereabouts of the letter in question and is not entitled to "sit back and wait if the European Patent Office will probably succeed in finding out when the letter has been received by the party", T 247/98 supra point 2.4 of the Reasons.

1.3 In this case, the patentee most helpfully conducted an enquiry, and the letter of 31 May 2007 indicated "that a member of staff in the Proprietor's Mail Room signed for the receipt of this tracking number on 26th October", thereby acknowledging that the decision was indeed received in the patentee's mail room within the 10 days period stipulated in Rule 78(2) EPC. The patentee later qualified this statement in that the person who signed for the letter was not an employee of the patentee, but of a company TNT that received letters on behalf of the patentee. Nothing turns on this difference, however. At no point did the patentee contest that the person who received the letter and whose name the patentee could not give to the Board was not authorised to receive mail on behalf of the patentee.

1.4 According to the patentee, the letter was not properly delivered, as this would require notification to "those concerned", as stipulated by Article 119 EPC. The patentee argued that notification of those concerned would have required the letter to reach if not the representative, then at least the CIP Unit as the "Administrative Unit" mentioned in Rule 26 EPC. To the extent that Rule 26 EPC required that such Administrative Unit, here the CIP Unit, be mentioned in the address, proper notification according to Article 119 EPC would require receipt of the letter by this Unit.

1.5 The most relevant case law seem to be the decisions T 172/04 (supra) and T 743/05 (supra). In both cases, an authorised person had received notifications from the EPO that were addressed to a specific representative. In both cases, the latter had received these notifications only sometime later, but this was deemed immaterial. The relevant passages in T 172/04 (point 4 of the Reasons) read as follows:

"The notification system by registered letter under Rule 78(c) of the EPC implies that such a notification is delivered at the addressee and in the present case the appellant has never disputed that the correct addressee was the firm of its representative and has admitted that the notification concerned was received by an employee authorised to receive post on behalf of the appellant.

The circumstance that the representative himself only had knowledge of the notifications several days or weeks later is not evidenced and, furthermore, even if it was the case, would be irrelevant as in the present case the only legal condition to consider i.e. delivery at the addressee is established."

In the case T 743/05 (supra), the EPO's notification bore the correct name of the professional representative on file and it was never argued that the person who signed the advice of delivery had not been authorised to act on behalf of the professional representative. Under these circumstances, the Board rejected the appellant's view that "delivered to the addressee" meant that the notification had to be actually brought to the attention of the professional representative in person:

"The circumstance that the professional representative himself had knowledge of the notification only several days later than the tenth day after posting is irrelevant since the only condition to be fulfilled is the delivery to the addressee, i.e. to the firm of the appellant's representative.

The appellant's interpretation would lead to an inextricable situation which would have as a consequence uncertainty for all the users of the European patent system.

The answer to the question whether notification has effectively taken place could in that case depend entirely on the honesty, goodwill or organisational skills of the professional representative.

When receiving a notification of a decision at his office he could unilaterally decide when to accept delivery of the decision and thus determine at will when the time limit for lodging an appeal or filing a statement of grounds of appeal would start to run.

Thus, decisions adversely effecting the party in question might never have been delivered to the addressee. This cannot be the case." (points 1.6 and 1.7 of the Reasons).

1.6 The two above-mentioned decisions stipulate that when a letter is addressed to a representative, delivery is deemed to have been effected once a person authorised by the representative signs for receipt of the letter. In the case at issue, the addressee of the letter was also an authorised representative, Mr Stott. Mr Stott, however, was not working for a firm of professional representatives, but was an employee of the patentee. Still, the Board fails to see why for the question of proper delivery it should make a difference whether the representative was organised in a firm of representatives or working in house, and what the organisational addition of an in house Central Intellectual Property Unit should change in this respect. If the patentee was correct in its approach, proper delivery and proof thereof would depend on the internal organisation of the addressee's company that, taken to the extreme, could set up quite a number of administrative units indicated in the address, thereby ring fencing the addressed representative and, again in the extreme, "unilaterally decide when to accept delivery of the decision" (T 743/05, supra). But this is exactly what Article 119 and Rule 78 EPC are meant to avoid. For reasons of legal certainty, delivery to the addressee is effected once a person authorised by the addressee has received the letter. Everything else belongs to the internal organisation of an addressee's firm or company, and is not of the EPO's concern.

1.7 Thus, the decision of the opposition division of 19 October 2006 has been received by the patentee within the 10 day period stipulated in Rule 78(2) EPC, and the appeal period ended on 29 December 2006. The appeal of 2 February 2007 was therefore filed out of time, and the appeal fee was paid late, too. Bar a restitutio in integrum, and in line with decisions J 16/82 OJ EPO 1983, 262 and T 324/90 (supra) the appeal is deemed not to have been filed and the appeal fee has to be reimbursed.

1.8 Since the position taken by the Board in this case in no way deviates from previous case law, there is no justification for a referral to the Enlarged Board of Appeal. The corresponding request by the patentee is thus refused.

2. The request for restitutio in integrum

2.1 The request for re-establishment of rights according to Article 122 EPC is allowable on three conditions. First, the request must have been filed within two months from the removal of the cause of non-compliance, second, all due care must have been taken, and, third, the omitted act must have been completed within the two months time period.

2.2 The decision of the opposition division revoked the European patent at issue. The non-observance of the time limit for filing an appeal thus has as its direct consequence a loss of the patent right. Under these circumstances, the patentee has missed a time limit that is open to a request for restitutio under Article 122 EPC.

2.3 In view of the sequence of events in this case, the Board needs to ascertain when the cause of non-compliance was removed. The respondents have argued that this was on the 2 February 2007 when the patentee's representative due to an online file inspection had become aware that something must have gone wrong. The patentee, on the other hand, takes the view that it had only become aware of an oversight when it could be established that the decision of the opposition division had indeed been received. Although it is undisputed that the patentee has indeed made a request for re-establishment of rights on 2 April 2007, the reasons given for the error were only submitted later, once the patentee was in possession of further and better particulars. The patentee relies on the decision T 949/94 (supra) that sets the date of removal of the cause of non-compliance at the point in time when a party has become aware "that a time limit has not been observed" (point 2.1 of the Reasons). While this may often be so, taken to the extreme in the case at issue it could well mean that such date was only reached once the Board of Appeal decided that the patentee had indeed received notice of the Opposition Division's decision, as up to this point in time the appellant had maintained the view that it had indeed observed all time limits. This view can certainly not be correct. Rather, and in line with the decision J 9/86 of 17 March 1987, "the 'cause of non-compliance' with the time limit was the fact that the representative was not aware...of the existence of the communication or its contents. The factual situation continued until...the representative investigated the relevant records in relation to this patent application." (point 8 of the Reasons). Thus, the cause of non-compliance was removed once the patent attorney via a file inspection noticed "that something was amiss" (decision J 17/89 supra, point 4 of the Reasons). This is also in line with other decisions such as T 191/82 (supra) that set a relevant time limit at the point the representative concerned became aware of the relevant facts. Upon the file inspection on 2 February 2007, the representative became aware that under ordinary circumstances and based on Rule 78 EPC, the period for filing an appeal had been missed. At this point in time he was put in a position to complete the omitted act. It is another matter whether the patentee within two months from 2 February 2007 was able to ascertain all the facts of the case. This was not so. For that reason, and contrary to the position of the opponents, the patentee must be able to complete its case even beyond the period of two-months, and indeed the decision J 2/86 (supra) supports this view: "In relation to the further evidence filed with the Grounds of Appeal and during the oral hearing, it is noted that, according to Article 122(3), "the application...must set out the facts on which it relies". The admission of further evidence during the appeal stage is a matter of discretion under Article 114(2) EPC, and this discretion is normally only exercised so as to submit further evidence which clarifies the facts which were set out in the application for re-establishment. In the present case the board considers the further evidence to be by way of clarification and therefore admissible." (point 2 of the Reasons). This position was also taken by decision T 324/90 (supra).

The Board has no doubt that the patentee communicated the facts relevant to its case for re-establishment of rights without delay once it had been in possession of these, and on 2 April 2007 gave an account of all the relevant facts to the best of its knowledge. The Board therefore regards it as appropriate to allow the patentee to adduce further clarifying evidence supporting its case, as filed on 31 May and 24 August 2007.

2.4 In the following, it has to be ascertained whether the patentee has taken all due care in setting up a system for properly monitoring incoming mail. In this respect, the patentee has filed two affidavits in order to prove that both the mail delivery room and the CIP Unit were properly organised and well run.

2.5 According to Article 122(3) EPC, it is incumbent upon the patentee to show that all due care has been taken. The patentee therefore has to point out where the mistake or omission occurred and that the occurrence happened despite all due care being taken. In the case at issue, it has been established that the decision of the Opposition Division was duly received by an employee of TNT acting on behalf of the patentee, yet nothing further is known of the whereabouts of this letter. The patentee has demonstrated that the letter was never put into the database of the CIP Unit. The letter might therefore have gone amiss even before it was inserted into the database of the mail room (possibility 1), between the mail room and the CIP Unit (possibility 2), or in the CIP Unit prior to its insertion into a database (possibility 3).

2.6 The procedure of forwarding mail to the addressee, i.e. the representative in charge of the case, involved a number of both automated and manual steps. The information to start from is the database by the Royal Mail. Part thereof was the priority services delivery note handed to an authorised person in the mail room, together with other letters indicated on that list. For the relevant date of 26 October 2006, this delivery note has been provided by the patentee and gives information that the letter in question was delivered together with many others. The next step (presumably carried out by the person signing for the receipt of the letters) would be to log these letters into the incoming consignments database (ICD). The ICD would further identify to which departments the respective registered letters should go. Data of the ICD would then be printed out and taken to the CIP Unit together with the relevant letters in question.

At the CIP Unit, the letters would be opened, classified according to which action would be needed, and the information entered into yet another database that is called the IP Master. The fact that the patentee cannot provide any information of what has happened between the delivery of the letter and the certain fact that it was never entered into the IP Master database is partly due to the fact that the ICD data were kept for half a year only. Data for 26 October 2006 thus were deleted on or around the 26 April 2007, long after the patentee had recognised that something had gone amiss, and even after the request for restitutio was made. This as such is not fatal to the patentee's case. However, it makes it more onerous for the patentee to prove that all due care has been taken, as the patentee has to demonstrate this for all the intermediate steps.

2.7 Where the patentee relies on persons carrying out duties on its behalf, case law requires proof that these persons have been properly selected, trained and supervised (J 2/86 supra, point 3 of the Reasons; T 949/94 supra, point 3.2 of the Reasons). According to the decision J 12/84 (supra), "the representative has to choose for the work a suitable person, properly instructed in the tasks to be performed, and to exercise reasonable supervision of the work." (Point 6 of the Reasons). In the case at issue, the patentee was not even able to name the person who had signed for the receipt of the letter, let alone demonstrate that such a person was properly qualified for the tasks he or she was entrusted with. Due to the routine deletion of data, it cannot be demonstrated that the person who signed for the receipt of the letter duly entered the letter into the mail room's database ICD. Neither was it demonstrated that the other persons who worked in the mail room and who might have taken the letter from the mail room to the CIP Unit were properly chosen or trained. Finally, weight must be given to the requirements of a failsafe system (T 686/97 supra, point 8 of the Reasons), or an effective cross-check as required by J 9/86 supra, point 9 of the Reasons. Such a failsafe system in the case at issue would have required a regular comparison between the ICD and the IP Master database as run by the CIP Unit in order to discover whether all registered letters logged into the ICD were subsequently also logged into the IP Master. In the system as described by the two affidavits, there is no computerised or manual cross-check between the two databases. Thus, a letter may well be entered into the mail room's database, yet subsequently not into the IP Master without this omission being discovered in due time. It seems to the Board that the two systems as described above do not function as a well organised, uniform entity, but rather as unconnected individual units whose exchange of information is not such that inconsistencies could be appropriately monitored.

2.8 Each of the above omissions leads the Board to conclude that the patentee cannot be said to have taken all due care in avoiding the letter getting lost and thus in missing the period for filing an appeal.

2.9 On 2 February 2007, the period for filing an appeal had been missed, yet the period for filing the grounds of appeal - had the appeal been filed in time - was still open until the end of that month. On 2 April 2007, the appellant paid one fee for restitutio (although at that point in time, also the period for filing the grounds of appeal had been missed), and made the following request:

"to the extent that our letter of 2nd February does not already do so, we hereby complete the omitted act by requesting appeal of the Decision of the Opposition Division (dated 19 October 2006) revoking the patent and request that it is reversed in its entirety. Specifically, we appeal the decision of the Opposition Division that the Main Request contravenes Rule 57a and Articles 123(2) and 123(3) EPC; and we also appeal the decision of the Opposition Division that the Auxiliary Request 1 contravenes Rule 57a and Articles 84, 123(2) and 123(3) EPC."

This undoubtedly was a completion of the omitted act of filing an appeal. However, the above statement can hardly be interpreted as grounds of appeal, and a corresponding fee for the restitutio in this respect was not paid, either.

While this may well be prejudicial to the patentee's case of restitutio, the issue can be left open in view of the fact that the patentee has not succeeded in showing that all due care had been taken.

2.10 Accordingly, the patentee's request for restitutio in integrum must be refused.