EPO express
rendered 24 November 2006
A request for re-establishment of rights that is based on general statements and does not comprise substantiated facts does not satisfy the obligation of Rule 133 (2) to set out the facts on which the request relies on.
Statements are considered as insufficiently general if the true obstacle for non-compliance with the time limit, and the time and the cause of its occurrence and its removal is not plausibly established for the European patent office. An insufficiently general statement would allow a requester to vary his submission after the expiration of the time limit. This would circumvent the concept of having a time-limit for submitting the grounds for appeal and to set out the facts on which it relies within the same time limit.
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 0019/05 is directed against the decision of the Examining Division dated 2 May 2005 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 fourth year in respect to his European patent application No. 00 xxx.
By letter of 7 May 2003 the European Patent Office informed the applicant that the fourth annuity, which fell due on 31 March 2003 was not paid. In this letter the EPO informed the applicant that the missed fee may be validly paid up to the last day of the 6th month of the due date, provided that an additional fee is paid at the same time.
The renewal fee and the additional fee had not been paid in due time. The European Patent Office informed the applicant with a letter dated 19 November 2003 that the European patent application shall be deemed to be withdrawn.
By letter received at the EPO on 30 December 2003 the applicant stated that he did not pay the renewal fee due to a misunderstanding when preparing the payment. Only after another consultation it became apparent that the application should be continued. He further stated “Consequently we ask for the granting of the above request”. The payment of the fourth renewal fee with the additional fee was received at the European Patent Office on 30 December 2003.
In a telephone call on 15 January 2004 the Examining Division informed the European representative of the applicant that a request for re-establishment of rights has to be requested at the latest at 29 January 2004 and the respective fee has to be paid.
By letter received 24 January 2004 the applicant represented by its European representative requested re-establishment of his rights. As grounds for the re-establishment the representative pointed out that the applicant is a small company and necessarily a plurality of different functions have to be carried out by a same person. In the interest of the company this person has to take often longer business trips. Despite exercising due care, a transfer error may have occurred when the person is working on the back log after returning from a business trip. Such a transfer error may have lead to an error in processing the patent application.
The fee for re-establishment was also received in time.
By letter dated 18 March 2004 the Examining division informed the applicant of the legal conditions for accepting a request for re-establishment of rights and asked the applicant to explain within the next 2 months how the company is organized and which system for monitoring time limits is in place. Further the responsible person should submit a declaration how the alleged misunderstanding had happened.
After a reminder the EPO granted an extension of a further 2 months of the time limit to respond to her letter. As no such response was received the EPO informed the applicant that they intended to reject the request for re-establishment of rights and asked if the applicant wishes to withdraw his request. After the applicant confirmed to pursuit his request on 2 May 2005 the Examining Division rejected the request for re-establishment of rights into payment of the renewal fee including the additional fee.
Although the request for re-establishment was filed too late, the Examining Division did not hold this against the applicant as he was given the wrong time limit of 29 January 2004 in the telephone call by the EPO. However, the Examining Division rejected the request for re-establishment of rights because the applicant did not prove that his European representative had exercised all due care.
The applicant appealed this decision and paid the appeal fee within the pre-scribed time-limit. The applicant asserted that problems arose because the European representative due to his age – 80 years – was striving to relocate his clients to other representatives. Obviously, this made it difficult for him to keep an overview on the status of the files. In his 40 years of exercising his profession he always carried out the totality of processing of the files on his own and never used assistants, and never had any issues.
The board of appeal considered the appeal as admissible.
However the board came to the conclusion that the request for re-establishment of the right to pay the renewal fee was not admissible. According to Rule 136 (2) EPC 2000 the request for re-establishment of rights shall state the grounds on which it is based and shall set out the facts on which it relies. The board of appeal concluded from this that it is not sufficient for the admissibility of a request for re-establishment of rights to file the grounds on which the re-establishment of rights is based on within the time limit of Rule 136 (1) EPC 2000, but it is a pre-requisite condition that the submitted grounds are substantiated within that time limit. The request therefore must specify precisely
This prevents the applicant from circumventing the time limit for requesting the re-establishment of rights as he is not able to alter his facts he is relying on or subsequently submit new reasons after the time limit for requesting the re-establishment of rights has expired.
For this purpose, the required statement of reasons on which the re-establishment of rights is based must therefore be sufficiently substantiated so that a subsequent submission of new reasons after expiry of the time limit for requesting the re-establishment of rights is made impossible.
A request for re-establishment of rights that is based on general statements and does not comprise substantiated facts does not satisfy the obligation of Rule 133 (2) to set out the facts on which the request relies on. Statements are considered as insufficiently general if the true obstacle for non-compliance, and the time and the cause of its occurrence and its removal is not plausibly established for the European patent office.
Or in plain English, the facts must have been substantiated so that the applicant has irrevocably limited himself to “one story”. The purpose is that the applicant should not be able to change “his story” after the time limit for submitting his grounds for appeal and the relevant facts because he deliberately or carelessly was vague in the beginning.
However, case law permits that a timely filed request may be supplemented after the time limit as far as the re-establishment of rights is not put on a new basis (J 5/44). In order to be admissible a timely filed request therefore must present the core facts which caused the non-observance of he missed time limit. A later presentation of the facts can only be taken into account when the later presentation of the facts supplements the core facts, but not when the newly presented facts specify (for the first time) a timely filed (but unsubstantiated) ground for the re-establishment of rights.
In the present case due the lack of substation of the grounds of re-establishment raises severe concerns.
The presentation of facts is very general and does not give specific information to identify a cause for non-observance of the time limit, a timeline of actions and a causal connection of the actions or omission of actions of the persons involved with respect to the non-payment of the renewal fee.
In his request the applicant admitted that the applicant is a small company and the person responsible for patent matters has to take often longer business trips. A transfer error may have occurred when the person was working on the back log after returning from a business trip.
This leaves the cause obscure why the time limit for the payment was missed, as the presentation of the fact covers a variety of different causes. It is not possible to determine if the responsible person missed the time limit because a handling of the back log was delayed or if the back log was the cause for a careless transfer error which occurred before the end of the time limit and if the transfer error would not have occurred the payment of the renewal fee would have been still within the time limit. Nor the nature of the transfer error, the transfer means and who was the sender and who was the receiver of this message is not clear.
The grounds for appeal then argue that the European representative due to his age – 80 years – was striving to relocate his clients to other representatives. And lost the overview of the status of the various files.
The board of appeal interpreted the behaviour of continuously switching between different presentation of facts resulting in different case scenarios is indicative that the grounds provided in the original request for re-establishment were not sufficiently substantiated by facts and did not substantiate a core event. This is however an indispensable prerequisite to be able to determine if the applicant was unable to observe a time and that the applicant had exercised all due care required by the circumstances.
DECISION FORMULA
For these reasons it is decided:
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(c) EPO express 2020