EPO express
rendered 8 November 2010
As condition for the admissibility of a request for re-establishment of rights, a duly substantiated statement of grounds must be submitted within the time limit for filing the request.
A request for re-establishment of rights which relies on general statements only and contains no specific facts does not satisfy the requirement for a duly substantiated request under Rule 136(2), first sentence, EPC.
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. This desicion was rendered under the provision of EPC 1973. In the current version of EPC 2000, enering into force 13 December 2007, some Articles and Rules have been re-organized and therefore their numbers do not correspond. In order to track the cited provisions we replace the EPC 1973 numbers of the Articles and rules with their EPC 2000 correspondence.
The appeal J 0015/10 is directed against the decision of the Examining Division dated 27 January 2010 which rejected the request of the applicant for re-establishment of rights under Article 122 EPC in relation to the period for payment of the renewal fee for the sixth year in respect of Euro-PCT application No. 03x.
The renewal fee for the sixth year fell due on 30 June 2008. On 4 August 2008, the Office sent the applicant a notice in the usual form drawing his attention to the fact that the renewal fee had not been paid and that payment of that fee, together with an additional fee, could still be validly effected within six months following the due date. However, the EPO received no payment by the expiry of that period. With a communication pursuant to Rule 112(1) EPC dated 6 February 2009, the EPO informed the applicant that, because the renewal fee for the sixth year and the additional fee had not been paid within the time limit according to Rule 51(2) EPC, the application was deemed to be withdrawn under Article 86(1) EPC.
By letter received on 6 April 2009 the representative, on behalf of the applicant, filed a request for re-establishment of rights under Article 122 EPC. He paid the renewal fee for the sixth year, the additional fee and the fee for re-establishment of rights on the same date. In his request, the applicant stated that responsibility for payment of the renewal fees had been transferred to DW International, a company that had the right to use the invention. The applicant further set forth that the fees in question had remained unpaid due to a misunderstanding on the part of the owner of the right.
With notification dated 14 May 2009, the formalities officer acting for the Examining Division informed the applicant that his submissions were not sufficient to assess the request for re-establishment of rights on the merits. He invited the applicant to explain in detail the situation at the time when the loss of rights occurred.
In his response received on 14 July 2009, the applicant maintained that responsibility for payment of the renewal fees had been transferred to a Finnish company, DW International, and to his representative. He argued that he had exercised all due care by delegating this responsibility to a representative and the party being entitled to use the invention. He contended that his representative had been responsible for advising DW International on the due dates and amounts to be paid and that the representative had discharged his duty by sending a reminder for payment on 16 December 2008. A copy of this reminder (sent by e-mail) was submitted.
After a further communication and response, the Examining Division rejected the request for re-establishment of rights by decision of 27 January 2010 on the grounds that the applicant had failed to show that all due care had been taken to comply with the time limit for payment of the renewal fee for the sixth patent year. The Examining Division held that it was the responsibility of the applicant to monitor time limits as long as he had not chosen to delegate his responsibility to a representative. In case of a professional representative acting on behalf of the applicant, the request for re-establishment of rights was allowable only if both the applicant and his representative had exercised all due care in order to observe the time limit. In the present case, the representative had been responsible for ensuring payment of the renewal fees even if the applicant had requested a third party to pay these. A single reminder two weeks before the final deadline for payment was considered to be insufficient to meet the required standard of care.
A notice of appeal against the decision was filed on 26 March 2010. The appeal fee was paid on the same day. The statement setting out the grounds of appeal was filed on 27 May 2010. The facts and arguments relied on in the statement of grounds of appeal can be summarised as follows:
The board were satisfied that the appeal complied with the provisions of Articles 106 to 108 EPC and that therefore the appeal was admissible.
Pursuant to Article 122(2) and Rule 136(2), first sentence, EPC, the request for re-establishment of rights must state the grounds on which it is based and must set out the facts on which it relies. As a condition for the admissibility of the request, a statement of grounds which is sufficiently substantiated must be submitted within the time limit for filing the request for re-establishment of rights (J 19/05). If this requirement has been fulfilled, it is then admissible to supplement the facts on condition that the supplementary submissions do not extend beyond the framework of the previous submissions (J 5/94; J 19/05; T 585/08).
A request for re-establishment of rights complies with the requirement of Rule 136(2), first sentence, EPC if a conclusive case is made, setting out and substantiating the grounds and facts on which the request relies. Thereby it is ascertained that the factual basis for the requested decision is not altered after the expiry of the time limit for the request (cf. J 19/05; T 585/08).
Therefore, the request for re-establishment of rights must
In the request for re-establishment of rights dated 6 April 2009, the applicant merely stated that responsibility for payment of the renewal fees had been transferred to DW International, who had the right to use the invention. The applicant further set forth that the omission (i.e. non-compliance with the time limit for payment of the renewal fee) was due to a "misunderstanding" on the part of DW International.
Although the applicant invoked a misunderstanding as obstacle preventing payment of the renewal fee, he did not give any explanation
Thus, the actual circumstances surrounding the misunderstanding that allegedly led to the omission were not addressed at all in the request for re-establishment of rights. Moreover, there were gaps in the submissions regarding the respective duties and responsibilities of the persons involved in the payment of the renewal fees.
The board cannot gather, from the submissions filed within the time limit for the request for re-establishment of rights, facts or grounds which could be considered as a conclusive explanation for the failure to observe the time limit for the payment of the renewal fee. The request relies on general statements only and contains no specific facts. Given the a priori indefinite number of possible "misunderstandings" as reasons for non-observance of the time limit, as well as the total lack of any specific facts in the request, variable explanations are conceivable as to who had misunderstood what and when this had happened. Since the submissions filed within the time limit for filing the request for re-establishment of rights do not substantiate a set of circumstances allowing to determine whether any subsequent introduction of new grounds or facts in support of the request would make out a new factual case or would as such be a complement to the submissions filed within the time limit, the latter do not satisfy the requirement for substantiation under Rule 136(2), first sentence, EPC.
Neither the applicant's submissions dated 14 July 2009 nor his letter dated 7 December 2009 filed in response to the communications of the first instance (cf. points V and VII above) assist the applicant's case. A failure to submit, within the time limit for filing the request for re-establishment, a statement of grounds containing at least the core facts on which the request relies cannot be subsequently remedied by the addition of further facts, as the case law only allows the applicant to supplement, but not to alter, the facts set out in the submissions made within the time limit for filing the request for re-establishment. Facts submitted only with the statement of grounds of appeal are even less able to remedy a lack of substantiation of the initial request for re-establishment of rights (J 18/98).
But even if the applicant's letters dated 14 July 2009 and 7 December 2009 were to be taken into consideration, these submissions would not remedy, but on the contrary would confirm, the inadequate substantiation of the initial request for re-establishment. In his letter of 14 July 2009, i.e. more than three months after the filing of the request for re-establishment and well after the expiry of the period for requesting re-establishment of rights, the applicant submitted as a new element of fact that his representative had been responsible for giving renewal advice to DW International. The applicant contended that the representative had discharged his duty by sending a reminder for payment on 16 December 2008. In response to the communication pursuant to Article 113(1) EPC dated 28 September 2009, the applicant introduced a further element of fact by arguing that his representative had had no reason to verify payment by DW International at the end of December 2008, because the time limit for payment had been observed by DW International in the previous years. On the other hand, the applicant no longer relied on a misunderstanding on the part of DW International as the reason for non-observance of the time limit. The applicant did not advance any other fact or obstacle that had prevented the payment of the renewal fee by DW International and could be regarded as pertinent for excusing the omission. Instead, he acknowledged in his letter of 7 December 2009 that "the payment of the renewal fee for the EP-application was forgotten by DW International". The variation in the applicant's submissions and the resulting diversity of conceivable explanations for the omission show that the initial request for re-establishment did neither set out or substantiate in sufficient detail the core facts making it possible to consider whether all due care required by the circumstances had been taken to comply with the time limit concerned.
In view of the above the board comes to the conclusion that the submissions filed by the applicant before the expiry of the period for requesting re-establishment of rights neither state grounds nor set out facts in support of such a request as required by Rule 136(2), first sentence, EPC. The request for re-establishment of rights is therefore inadmissible.
For these reasons it is decided:
We file your European patent application
(c) EPO express 2020