EPO express
rendered 07 July 1981
In J005/80 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a European Patent Attorney could be re-established to his rights of the European Patent application, which was deemed withdrawn due to lack of payment of the designation fees. 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 due care. If the professional representative entrusts a person in his office with non-routine tasks, which are expected to be performed by himself, he has exercised non sufficiently due care and the re-establishment of rights of an applicant will be rejected.
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 decisions J 0005/80 is cited in every 8th decision on re-establishment of rights. This demonstrates that this decision has become a basic decision.
On 2 October 1978 the applicant filed an International Application claiming the priority of a national patent application made in France on 3 October 1977 and designating the Federal Republic of Germany, the United Kingdom, Luxembourg, Sweden and Switzerland as States for which a European Patent was desired.
At that time the provisions of the EPC forced an applicant to specify the countries in which he wanted to designate his European application.
On 5 April 1979, the International Bureau of the World Intellectual Property Organization published the international application together with the international search report. The period within which the national fee and the designation fees had to be paid thus expired three months later, on 5 July 1979.
The national fee was duly paid on 31 May 1979 but the designation fees were not paid until 3 October 1979, after the Receiving Section had notified the applicant, by letter dated 14 August 1979, that the application must be deemed to have been withdrawn.
By a Decision dated 19 December 1979, given at the applicant’s request, the Receiving Section held that the European patent application was deemed to have been withdrawn, in accordance with the provisions of Articles 79(2) (EPC 1973) and 150(2) EPC (EPC 1973), as the designation fees had not been paid in due time.
On 23 January 1980 the applicant claimed that the new Rule 85a EPC was applicable in this case. The surcharge prescribed by Rule 85a EPC was duly paid.
On 8 February 1980 the applicant lodged an appeal against the Decision of the Receiving Section, stating the grounds therefor. The appeal fee was duly paid. Referring to the view of the Receiving Section, expressed during a telephone conversation, that Rule 85a EPC would not be applicable to Euro-PCT applications, the applicant submitted that:
By letter dated 30 October 1980, the Legal Board of Appeal informed the applicant that in the particular case restitutio in integrum did not seem to be entirely excluded, but that it would be necessary for the reasons given in the Statement of Grounds to be developed in detail.
By letter dated 29 December 1980, referring back to the appeal lodged on 8 February 1980, the applicant requested restitutio in integrum in the alternative to the other relief sought. It appears from the appellant's letter and from a written statement made by the lady in charge of administration in his representative's office, that the representative had instructed her to pay all necessary fees and that she had interpreted Article 78 EPC (EPC 1973) as meaning that only the filing fee had to be paid within one month after filing when a PCT application designating the European Patent Office passed to the national phase.
Restitutio in integrum in accordance with Article 122(1) EPC is conditional upon the applicant showing that, where he was unable to observe a time limit vis-à vis the European Patent Office, all due care required by the circumstances has been taken.
During the Munich Diplomatic Conference in 1973, when the expression "all due care required by the circumstances" was inserted in place of the expression "force majeure", which had been employed in the draft text, it was observed that if an applicant had been represented by a professional representative the latter also would have to show that he had taken all due care required by the circumstances (Minutes of the Munich Diplomatic Conference for the Setting Up of a European System for the Grant of Patents, published by the Federal German Government, M/PR/1, points 574, 575, 577, 578 and M/PR/G, Annex I, Chap. II, Section 10, second paragraph). This interpretation seems to be correct.
At the same Conference, there was also discussion of the question whether one could excuse the negligence of an employee of a professional representative who normally carried out his work in a satisfactory manner. On this point it was noted that some routine tasks, such as typing dictated documents, posting letters and parcels and noting time limits, are normally carried out not by the professional representative personally, but by his staff. This follows normal commercial and professional practice. During the Conference, the AIPPI delegation gave a concrete example of the difficulties which can arise in this respect. Discussion of this example led to the amendment of the text mentioned in point 4. It is clear from the discussion that the Conference had no wish to rule out the possibility of excusing the negligence of an employee (Minutes, loc.cit., point 559 et seq. and point 571, second paragraph).
For the purposes of the present case it is not relevant to take account of rules of national laws concerning the liability of an agent to his principal for wrongful acts or omissions of the agent's employee. The Board must restrict itself to interpreting the concept of "due care required by the circumstances" in the context of Article 122(1) EPC. In the opinion of the Board, one could not expect of an assistant entrusted with routine tasks the same rigorous care as is demanded of an applicant or his professional representative. Nothing in the detailed discussions on restitutio in integrum during the Munich Diplomatic Conference would lead to a contrary interpretation.
To benefit from Article 122 EPC, a professional representative who employs assistants must be able to establish that he has used the due care required. In general, then, he should choose for the work a suitable person, properly instructed in the tasks to be performed, and he should exercise reasonable supervision over the work.
However, account should also be taken of the fact that by Article 134(1) EPC, the Contracting States have in principle confined representation of applicants before the European Patent Office to "professional representatives" who, by virtue of their qualification should guarantee the best possible representation. It follows that a representative cannot relieve himself of responsibility for carrying out tasks which, by reason of his qualification, fall upon him personally, such as, for example, the interpretation of laws and treaties. If he delegates such non-routine tasks to an employee and if the latter makes an error in the course of that work which results in the failure to observe a time limit, the representative cannot establish that he took all due care required by the circumstances.
In the present case, the professional representative gave the lady in charge of administration in his office, whose integrity and competence the Board does not doubt, the general task of paying all fees due within the prescribed periods. Thus, an employee was given tasks which she had to carry out independently and which exceeded the scope of mere routine tasks, the more so because - far from easy - interpretation of two recent international treaties was involved. The professional representative cannot therefore, for the purpose of avoiding the loss of a right, establish that he took all due care required by the circumstances. It follows that the appellant cannot be granted restitution of rights.
The board of appeal however also looked into Rule 85a EPC (EPC 1973). This Rule provided that, if the designation fee for a European patent application has not been paid within the period prescribed by Article 79(2) EPC, it can be paid within a further period of two months, upon payment of a surcharge within the same period. But Rule 85a EPC did not mention Rule 104b(1) EPC, which is applicable to Euro-PCT applications. The board of appeal interpreted Article 48(2)(a) PCT in a wide sense. They stated that at least Articles 121 and 122 EPC and Rule 85a EPC are applicable to international applications at the time of their transition to the regional phase. Based on Rule 85a EPC (EPC 1973) the board of appeal set aside the decision of the Receiving Section of the European Patent Office as the applicant had complied with the provisions of that rule.
The grace period rule of Rule 85a EPC 1973 has now been integrated in rule 135 EPC (EPC 2000) “Further processing” and this part of the decision has become obsolete and is not included herein in detail.
The reason given by the board why they looked into the re-establishment of rights first was that re-establishment of rights (restitutio in integrum) would have been less expensive than application of Rule 85a EPC (EPC 1973). In later decisions this choice has been denied. Re-establishment of rights can be only granted if any other remedy is not or no longer available. If for example, the payment of the annuity has been missed, there is still the possibility to pay with a fine. As a consequence, the European patent application is not deemed withdrawn yet, and therefore re-establishment of rights is not (yet) applicable.
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