EPO express
rendered 07 July 1981
In the earlier decision J005/80 the board of appeal had stated that when a professional representative entrusts an assistant in his office he needs to train and supervise this assistant in order to demonstrate due care. In this decision the professional representative had entrusted a substitute of his accountant with the payment of an appeal fee, because the accountant was on holiday. The substitute failed to pay the appeal fee. The board decided that the professional representative must train and supervise the substitute of an assistant with the same standard of due care in order to be entitled to benefit from a re-stablishment of rights.
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 case is cited in about 35 decision on re-establishment of rights and therefore is one of the most cited decisions.
The appeal J 0016/82 is directed against the Decision of the Receiving Section of the European Patent Office refusing an application the retroactive recognition of a priority. The representative filed a notice of appeal, together with the Statement of Grounds in time to contest the decision of the Receiving Section of the EPO, but no appeal fee was paid at that time.
In response to a letter from the rapporteur of the Board of Appeal drawing the representative's attention to the fact that the appeal fee had not been paid and that therefore, pursuant to Article 108, second sentence, EPC, it was deemed that the appeal had not yet been filed the representative filed an application for re-establishment of rights and enclosed a cheque to cover the appeal fee and the fee for this application. As grounds for the application he stated that he had given his firm's accounts department instructions to pay the fee, but that those instructions had not been carried out. The head of the accounts department had been on holiday and had been replaced by a substitute. That substitute had "since been given notice, also because of further proven instances of unreliability."
The rapporteur pointed out that those facts did not constitute grounds for re-establishment of rights and the representative then further stated that the substitute responsible for the omission had appeared to offer every guarantee of reliability since he had had responsibility, as a holiday replacement, for the whole accounts department of an undertaking employing some 60 staff. The substitute's training and previous experience gave every indication that he would correctly carry out the duties assigned to him."
The substantive appeal submissions can only be considered if it is established that an appeal within the terms of Article 106 EPC et seq. has been filed and is admissible under Article 110(1) EPC.
One of the conditions for a valid appeal is that the appeal fee must be paid within the two-month time limit laid down by Article 108 EPC. Otherwise, pursuant to Article 108, second sentence, EPC the appeal is deemed not to have been filed.
The fact is not disputed that the appeal fee was not paid until three months after the expiry of the two-month time limit, namely not until the rapporteur drew the appellant's attention to the non-payment of the appeal fee and the possibility of re-establishment of rights as regards that time limit.
The application for re-establishment of rights was filed and the relevant fee paid within the prescribed two-month time limit and the facts relied on are set out.
The application will be well-founded only if it puts forward and substantiates facts showing that the applicant and representative have exercised all due care required in the circumstances in order to comply with the time limit for payment. If the applicant or representatives has entrusted tasks he has to carry out vis-à-vis the EPO to an assistant, the former will be held liable for any mistakes on the part of the assistant unless he himself has met very specific criteria: he must have chosen the assistant carefully, properly instructed him in the tasks and exercised reasonable supervision of those tasks (J 0005/80).
These conditions also apply in the case of a substitute replacing an assistant who is on holiday, ill or otherwise absent. It is a commonly experienced fact of life that assistants do have to be temporarily replaced from time to time. Where a qualified assistant is absent, therefore, the applicant or representative must either be able to call on a similarly qualified substitute or else must himself take over the work assigned to the assistant.
In a communication from the rapporteur, the appellant was informed of the requirements for re-establishment of rights. The appellant's submissions do not however show that these conditions were met in the case of the substitute.
In J 0005/80 it was expressly pointed out that these requirements relate not only to the selection but also to the instruction and supervision of the assistant; this does not apply to all work without distinction but specifically to those tasks relating to patent. The employee must in fact have been given comprehensive instruction and must be supervised, particularly in the initial stage. It is not enough that, when entrusted with the work, the assistant appeared reliable in the light of his training and previous experience, for this is a normal condition for engaging an employee.
For those reasons it cannot be held that the representative and joint applicant exercised all the due care required in the circumstances within the meaning of Article 122(1) EPC. The appellant cannot therefore be granted re-establishment of rights in respect of the failure to meet the time limit for paying the appeal fee.
For these reasons, it is decided that:
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