EPO express
rendered 9 July 2002
Holding back the payment of a fee for a reason other than the impossibility to comply with the legal provisions - particularly as a matter of strategy in the circumstances and for tactical considerations - is outside the scope of Article 122 EPC, and deprives the applicant from the possibility to be re-established in the right to pay this fee.
In a decision of the board of appeal the decision will most of the time speak of the appellant which is the person, or company in which name an appeal has been lodged. To make the decision more comprehensive this annotated summary uses the term “applicant” for the applicant of the European patent application also for the time after the applicant had lodged the appeal. The applicant was obviously not very at ease to put his arguments forward in English. We have therfore reworded his main submissions so that his strategic intentions became clear.
The applicant also alleged that for his interpretation of rules he was misled by the Guide for Applicants. This reason was dismissed, as it is settled case law of the EPO that ignorance of the law is indeed indicates that not all due care had been exercised.
J 0002/02 relates to European Patent application No. 98 xxx, which was filed on 22 July 1998. The time limit for the payment of renewal fee for the third year expired on 31 July 2000, and the applicant did not pay this fee in due time.
The EPO issued a communication dated 5 September 2000 notifying the applicant that under Article 86(2) EPC the renewal fee could still be validly paid within six months of the due date with additional fee.
The renewal fee remained unpaid and the applicant was notified by a communication under Rule 69(1) EPC dated 27. February 2001 that the application was deemed withdrawn pursuant to Article 86(3) EPC.
The applicant by a letter dated 13 April 2001 requested re-establishment of rights under Article 122 EPC into the time limit for payment of the third renewal fee and the additional fee under Article 86 EPC.
The main argument of the applicant submitted to the Examining Division in support of his request that can be reworded as:
The applicant paid the renewal fee and the additional fee on 11 April 2001.
A communication under Article 113 EPC was issued on 22. May 2001 informing the applicant that as opposed to further processing under Article 121 EPC, Article 122 EPC was not available to extend time limits for completing actions.
The applicant by a letter dated 21 July 2001 repeated his request in the same terms as in his previous letter dated 18 April 2001.He added that retention of the payment was provoked by competitors claiming "a precedence in possession" and no proof was furnished of this allegation.
The Examining Division rejected the request in its decision dated 25 September 2001 on the main ground that Article 122 EPC was an exceptional means of redress and could not be used to gain a further extension of time limit.
The present appeal was lodged against this decision on 28. November 2001. The appeal fee was paid on the same date and the grounds of appeal filed on 23 January 2002.
The applicant requested that the decision under appeal be set aside and that he be re-established into the time limit for payment of the third year renewal fee and additional fee under Article 122 EPC.
He submitted in support of his appeal his personal interpretation of Article 122 EPC, and in this respect he asked the Board to include in the term "circumstances" referred to by this article the bad behaviour of his competitors, and to adapt the concept of "due care required by the circumstances" which he alleged was not defined in the EPC to his particular case where the applicant alone prosecutes the application and where the isolated human error consisted of his wrong interpretation of the EPC rules.
The appeal is admissible under Articles 106 to 108 EPC.
The applicant maintains that he held back the renewal fee "because he was waiting for developments in pending infringement litigation ..." but he no longer specifies "until the expiry of the time limit for re-establishment of right" as he did before the first instance. He now simply rectifies his argument declaring "in the proximity of the expiry of the term of the payment of the renewal fee for the third year with additional fee" and he emphasises that he could not take the risk of paying a fee which would not later have been refunded.
From the above, the Board concludes that the renewal fee was deliberately not paid in time.
The reason for the non-payment mentioned above is a circumstance that per se is inconsistent with the condition required by Article 122 EPC namely that due care required is to be exercised, this concept having to be understood not in an abstract meaning but in connection with what was done to abide by the initial time limit.
Article 122 EPC does not imply for an applicant any right to have the final effect of an intentional action cancelled.
Holding back the payment of the fee for a reason other than the impossibility to comply with the legal provisions - particularly as a matter of strategy in the circumstances and for tactical considerations - is outside the scope of Article 122 EPC, and deprives the applicant from the possibility to invoke this article.
For these reasons it is decided that:
The appeal is dismissed.
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