EPO express
In J005/13 the board of appeal examined the circumstances in which an applicant, who was represented by a European Patent Attorney could be re-established to his rights of the European Patent application, which was deemed withdrawn due to lack of payment of an annuity. When an applicant is represented by a European Patent Attorney it is essential that both parties, the applicant and his European Patent Attorney, had exercised good care. It worked in the favour of the applicant that the scope of duties of a representative who retains only a "secondary responsibility" to inform and advise his client with respect to the due date for renewal fees cannot be the same as it would be if he were responsible for the payment itself.
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. In this case the appellant was the Company S LLC represented by it’s managing member Mr. G, who happened at the same time to be the first of the three inventors. 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. Between the decision of the receiving section of the EPO and the board of appeal Mr. G was sometimes called the managing member and sometimes the inventor. When a letter was sent to the the private address of the first inventor it was automatically sent to the private address of the legal representative of the applicant, as both physical persons were identical. In the end this distinction was not elaborated further in the decisions. Therfore we mostly refer to Mr. G rather than to the inventor, or the managing member of S LLC.
This case is a good example how the board of appeal will analyse the care of duties of an applicant and his representative. Therfore the facts cited in the decision of the board of appeal have been complemented with the facts that were cited only in the decision of the receiving section of the EPO. Quite a lot of information of the decision of the board of appeal has been retained.
Decision J 005/13 relates to the re-establishing of rights concerning a European patent application. The European patent application was based on an international application filed on 23 September 2004 in the name of S, LLC. In order to enter the European phase, the applicant's US patent attorneys (hereafter called "US law firm") mandated a European representative, presumably some time before entry to the European phase in 2006. At the same time the US law firm provided the European representative with the address of the applicant S LLC in the United States, which will be called in the following the “Silver Lane address”, as it included Silver lane as the street of the address. The US law firm also provided the European representative with the private address of the first inventor who was at the same time the "managing member" of the applicant S LLC. This address will be called in the following the Stanley Drive address.
The applicant vacated the facility at Silver lane around June 2007. From an affidavit of Mr. G it seems that the applicant had not informed the US law firm about the change of address.
The European representative was not in charge of paying the renewal fees.
As nothing is said in the decision that another entity was instructed to pay the annuitiy fees, we must assume that the applicant did not give instructions to his European representative to automatically pay the annuities unless he was instructed to the contrary
Nevertheless, the European representative monitored the due dates for paying them with a patent management software which enabled the European representative to monitor the time limits for renewal fees. This software was configured to send two reminders before the end of the time limit for the payment of renewal fees and if the applicant did not answer, to send a third and last reminder during the month following the expiration of the deadline.
That means that the third reminder was programmed to be send within the time period of six months in which the renewal fee still could be paid after the expiration of the deadline with an additional fee.
With letter dated 12 March 2008, the US law firm informed the European representative that it no longer represented the applicant and mentioned that the European representative may communicate directly with the inventor, Mr. G at the address already known to the European representative.
In the same period, i.e. on 11 March 2008, Mr. G contacted the European representative by email sent from his business account and provided him - apart from the mentioned email address - with his office telephone and fax number as well as with his cell-phone number. As Mr. G admitted later he forgot to inform his European representative with the current address. As Mr. G was not informed by his European representatives that their quality guidelines, on basis of which their organization had been evaluated and certified by ISO 9001: V2000 did explicitly call for sending annuity notifications only by postal services, he believed his e-mail address was sufficient to reach him.
With the same email Mr Goldberg gave order to pay the renewal fee for the fourth year. Further to several email exchanges between Mr. G and the European representative, the European representative paid the renewal fee for the fourth year and the corresponding additional fee on 27 March 2008.
Concerning the renewal fee for the fifth year, the European representative tried to get in contact with the appellant by the following means:
On 12 June 2008, the European representative sent a "first reminder" by regular mail to Mr. G at the Silver Lane address. This reminder was not answered.
On 9 September 2008, the European representative sent a second reminder also by regular mail to the same address. This reminder was not answered either.
After the expiration of the due date of 30 September 2008 the European representative sent a third reminder on 8 October 2008 once again to the same address. This letter also contained an indication that no further reminder would be sent. This letter once again went unanswered.
On 14 November 2008, a fourth reminder was sent by registered mail once again to the applicant’s address. This letter was returned as undelivered on 2 December 2008.
Since the reminder of 14 November 2008 had been returned by the postal services, the European representative sent a fifth and final reminder on 15 December 2008 by registered mail to the personal address of Mr. G in the United States. This letter remained unanswered and was not returned by the postal service.
As the European representative explained during the oral proceedings, in 2008 he only used letter mail as a standard means of communication with his clients. Correspondence via email had not been common. Clients were contacted via email only if they had so requested. Thus, at that time his database had contained only postal addresses.
In the European representatives experience it was not uncommon that renewal fee reminders were not answered when an applicant was no longer interested in the application. The European representative therefore had no reason to believe that the first three reminders had not been received by the applicant. When the fourth reminder was returned as undelivered the European representative took action and sent a fifth reminder to the private address of the managing member which was contained in the database, as it happened to the address of the first inventor. Since the European representative was not in charge of paying the renewal fees and since in those days the communication channel was via postal services, there was no need to check the file and look for other contact information.
The fifth reminder was not returned and it could therefore be assumed that it had reached its addressee.
The notice of loss of rights pursuant to Rule 112(1) EPC sent by the EPO on 18 May 2009 to the European representative was forwarded to the applicant by registered mail using the private address of Mr. G. This notice reached the applicant/inventor and was answered by Mr G. by email on 3 June 2009.
With letter dated 9 July 2009, received on 10 July 2009, the European representative requested re-establishment of rights pursuant to Article 122(1) EPC in respect of the time limit for payment of the renewal fee for the fifth year and the additional fee. The renewal fee for the fifth year, the additional fee and the fee for re-establishment were all paid on 10 July 2009.
The Receiving Section rejected the request for re-establishment of rights. It came to the conclusion that the request was admissible but not allowable.
The applicant was not familiar with the requirements of the EPC. To compensate this deficit, he could rely upon on his US attorneys and on his European representative. Since the European representatives had not explicitly informed Mr. G that any correspondence would be effected by (registered) mail only, Mr. G could assume that the correspondence by email regarding the payment of the renewal fee for the 4th year was the usual means of communication between the applicant and the representatives. The Receiving Section therefore conclude that the applicant’s failure to notify its representatives of its current address was an isolated error and that all de care was exercised by the applicant.
Since the European representative had not been instructed to pay the renewal fees due and had also not received any funds for this purpose, they were not expected to pay the fee for the 5th year by advancing money on behalf of the applicant out of their own pocket. Nonetheless, they remained with a secondary responsibility to advise the applicant properly. In summary the Receiving Section of the EPO was of the opinion that it was organizational error of the European representatives not to monitor the fourth reminder that was sent to the first inventors(!) address. The European representatives should have monitored the receipt of the acknowledgement of receipt of the fourth reminder and, when said acknowledgement of receipt was not returned, Mr. G should have been contacted by phone, fax or email before expiry of the time limit for payment of the renewal fee for the 5th year with additional fee.
In summary the Receiving Section concluded that the European representatives had not done all that is necessary to ascertain the applicant’s true wishes and thus failed to exercise all due care required by the circumstances, and rejected the request for re-establishment of rights.
Consequently, the applicant filed notice of appeal and paid the appeal fee. The applicant contests the decision of the Receiving Section dated 19 September 2012 rejecting his request for re-establishment of rights.
The board of appeal first had to decide if the case was admissible, i.e. the respective deadlines for reestablishment had been observed. The applicant essentially submitted that neither he nor his European representative had noticed the failure to pay the renewal fee for the fifth year. Thus the board of appeal accepted the date on which the European representative received the communication pursuant to Rule 112(1) EPC dated 18 May 2009 was decisive for the beginning of the deadlines laid down in Rule 136 (1) EPC.
Accordingly, the request for re-establishment of rights was filed in due time as it was filed within two months from the date on which the person responsible for the application becomes aware of the fact that a time limit has not been observed and within one year following the expiry of the unobserved time limit. Accordingly, the request for re-establishment of rights, which reached the European Patent Office on 10 July 2009 was filed in due time. The necessary acts required under Rule 136(1) and (2) EPC, i.e. payment of the renewal fee for the fifth year with surcharge, payment of the fee for re-establishment and submission of the grounds for re-establishment, were also performed in due time. The board of appeal therefore decided that the applicant's request for re-establishment therefore was admissible.
Under Article 122(1) EPC, an applicant for a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the European Patent Office, which has the direct consequence of causing a loss of rights, shall, upon request, have his rights re-established.
In line with older case law the board of appeal considered the circumstances of this case must be considered as a whole. The requirement of due care must be judged in view of the situation existing before the time limit expired. In case where an applicant is represented by a European representative due care must have been exercised by both, i.e. by
The applicant had no office organisation in his company to ensure that procedural deadlines are met. Mr. G relied upon his US attorneys and - after they had resigned from representation - upon his European representative.
Mr. G had no reason to doubt that the European representative had his necessary contact details. Additionally, he had provided his European representative with his name, his office telephone number, fax and cell phone numbers and his business email address. Particularly with regard to the renewal fee for the fifth year, which is the subject of this appeal, the inventor could expect that his European representative would contact him by using the same communication means as he had in respect of the renewal fee for the fourth year. To put it another way, because of the experience of the year before, Mr. G had no reason to believe that his representative would fail to contact him by using an outdated address.
The board came to the conclusion that Mr G as the responsible person within the appellant's company, had exercised all due care.
Regarding the European representative's responsibility, the board concludes that the representative too exercised all due care to meet the missed time limit.
If an applicant is represented by a professional representative, a request for re-establishment 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 (cf. J 5/80 of 7 July 1981, OJ EPO 1981, 343, Headnote I). The applicant has to accept the actions of his representative, including the actions of the attorney's assistants and employees, on his behalf (J 5/80, loc. cit., 346; J 1/07 of 25 July 2007, Reasons 4.3).
However, the extent of the duties of the representative depends on the agreement between the representative and his client. An appointed representative whose authorisation is silent concerning the payment of the renewal fees and who has not received any funds for this purpose is not expected to pay the fee by advancing money on behalf of the applicant out of his own pocket (J 16/93 of June 1995, Reasons 4.3.3; J 19/04 of 14 July 2005, Reasons 10; J 1/07 of 25 July 2007, Reasons 4.4).
Instead, he retains only a <b>"secondary responsibility"</b> (cf. J 1/07 loc. cit.) to advise the applicant properly either if the applicant addresses him or if he becomes aware of any problem that might affect the applicant's position in respect of the patent application. Thus his responsibility, above all, consists in finding out what his client really intends to do with respect to payment of the renewal fees (cf. J 16/93 loc. cit.). Since he remains responsible in the procedure before the EPO and thus has to take the necessary steps to ensure payment, this includes a reliable monitoring system and sufficient reminders to the applicant (J 11/06 of 18 April 2007, Reasons 8; J 1/07 of 25 July 2007, Reasons 4.3).
Without error of law, the Receiving Section found that the rules of the annuity system was in line with the requirements the EPC imposes on the due care of a representative not in charge of the payment of renewal fees. The board also agrees with the finding that the European representative applied this system correctly by sending the first three reminders dated 12 June, 9 September and 8 October 2008 by regular mail to the Silver Lane address.
The board did not see any objection in the fact that the European representative sent the first three reminders by regular mail to the Silver Lane address. From the European representative's point of view, the Silver Lane address was still valid because this was the address which he had received from the US representatives when he was appointed in March 2006 and which was confirmed two years later when the US law firm informed him that it no longer represented the appellant.
The applicant convincingly argued in the hearing before the board that in 2008 the use of regular mail had been standard practice in the European representative's office. Emails or other means of sending letters (i.e. fax) had been used only at the explicit request of the client. Since no such request had been submitted by the applicant and because - up to the return of the fourth reminder - the European representative had no indication that there could be something wrong with the Silver Lane address, there was no reason not to use regular mail and the Silver Lane address.
The board stated that the additionally sent fourth reminder, now issued by registered mail and once again addressed to the Silver Lane address, already went beyond the standard procedure laid down in the quality guidelines used in the representative's law firm. However, because of the special circumstances of the case - i.e. the fact that the fourth reminder was returned - at that point in time the European representative had some reason to assume that the first three reminders, sent to the same address, might have failed to reach the addressee, and accordingly was obliged to try another route to contact the client.
In this situation the board raised the crucial question whether or not the European representative exercised all due care by sending the last (fifth) reminder to the private postal address of Mr G.
The board followed the view of the Receiving Section to assume that the use of Mr G's business email address was a suitable way to get in contact with the applicant because Mr G himself had used this address in order to communicate with the European representative with respect to payment of the fourth renewal fee only a few months before. On the other hand, the board of appeal took into account that - according to the credible pleading of the applicant - in the bureau of the European representative, in 2008 the sending of emails had not been a regular means of communication, so that email addresses were not stored in his database. Furthermore, the European representative - at the time when he sent the fifth reminder - had no reason to believe that the postal address of Mr G - which was stored in his database and which actually worked a short time later when the European representative informed his client about the loss of rights - could be wrong.
Thus, with respect to the scope of the mandate of the European representative, which amounted to nothing more than monitoring the time limit and informing his client of the impending loss of rights, the board considers it to be sufficient that he relied on the postal addresses stored in his database instead of checking his file for any other contact details.
In this context, it has to be observed that monitoring the due date for renewal fees and duly informing the applicant is a mass business which nowadays can be - and in practice is - most reliably performed on a computerised basis. In a situation where the representative is not responsible for paying renewal fees and thus only has a secondary responsibility, he can perform this task on the basis of the database entries, unless special circumstances require additional measures. In the present case, special circumstances required the sending of an additional reminder. However, the circumstances did not require the file to be checked for other contact details, because the database contained an additional postal address under which the applicant could be contacted. The fact that the fifth reminder apparently got lost by mail cannot be blamed on the representative. As has been shown, the Stanley Drive address worked, since the loss-of-rights communication sent there was received by the appellant.
For that reason the board concludes that the European representative exercised all due care by relying on the address data stored in his electronic database.
Finally the board cannot find that the appellant's US representative, who was not in charge of payment of the renewal fee either, failed to exercise all due care. Although - according to Mr G's statement in his affidavit dated 12 April 2012 - the applicant vacated the Silver Lane address around June 2007 and despite the fact that the US representative still mentioned the Silver Lane address in his letter sent to his European colleagues informing them of his resignation from representation of the applicant in March 2008, the board has no cause to assume that the US representative had knowledge of the relocation of the appellant and thus gave incorrect information to his European colleagues.
Thus, the board has no reason to assume that the US representative did not exercise all due care required by the circumstances.
Thus, the appellant's request for re-establishment is allowable. For these reasons it was decided that:
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