EPO express
rendered 18 June 2004
In case of doubt or legal uncertainty, the applicant must take all those steps which can be reasonably expected from a diligent person. When having encountered difficulties in contacting the current representative, the patent applicant should at least seek advice with respect to the payment of a renewal fee either from his former representative, or from another representative or the European Patent Office before expiry of the deadline.
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. We further deleted information that was not decisive for the decision. We translated dates into relative dates indicating when they happened in relation to a given deadline.
The applicant filed a patent application through his former representative. The only information he received from his former representative with respect to the payment of the third year renewal fee for the present application was a letter headed "Patents: Tax Reminder". The applicant claimed to have been confused by the allegedly ambiguous information contained in this letter concerning the date up to which the fee could still be paid without losing the application. He was therefore misled into believing that he had more time for paying the fee than he actually had.
About 6 weeks before the end of the deadline for paying the third year renewal fee together with the additional fee, the applicant revoked the appointment of his former representative since he intended to entrust the handling of the application to his actual representative. The applicant submitted that for a number of reasons (extensive business travelling of the appellant, change of affiliation and temporary unavailability of the new representative), the actual representative was unfortunately appointed only 4 ½ months after the deadline for paying the third year renewal fee together with the additional fee. The applicant claims that he missed the deadline without personal fault.
By a communication sent to the former representative, after the deadline was missed and before the new representative was appointed, the Receiving Section of the EPO noted a loss of rights (Rule 69(1) EPC) to the former representative. According to the communication the patent application was deemed to be withdrawn under Article 86(3) EPC since the renewal fee for the third year and the additional fee had not been paid in due time.
The applicantnow informed by his new representative that his patent was deemed to be revoked, applied for re-establishment into the time limit for payment of the third year renewal fee. He stated grounds for his request and set out facts on which he relied. At the same date he paid the renewal fee for the third year together with an additional fee and the fee for re-establishment of rights.
After an exchange of communications and letters between the Receiving Section and the appellant and after a consultation by telephone, the request for re-establishment was rejected. In its decision the Receiving Section considered the request to be admissible, but not allowable.
The applicant stated that as an individual applicant, the applicant was not familiar with the requirements of the EPC and had not realised the importance of the matter. He only had some experience with the patent granting procedure before the Italian industrial property office where the third year renewal fee is paid with the filing fee.
The board of appeal was satisfied that all requirements for admissibility of the appeal were met.
The request for re-establishment would be allowable if the appellant was unable to observe the time limit in question despite having taken all due care required by the circumstances (Article 122(1) EPC). In this context, the word "all" is important (T 287/84, OJ EPO 1985, 333, point 2) so that the requirement of all due care has to be regarded as a strict one. The circumstances of the individual case have to be considered in their entirety in order to objectively evaluate whether the observance of the time limit was impossible for the applicant. The duty of all due care applies both to the applicant himself and to his professional representative (J 3/93 of 22 February 1994, point 2.1; T 381/93 of 12 August 1994, point 6).
The appellant is an individual applicant who had entrusted the filing of the present application to a professional representative. About two months before the deadline ended for paying the 3rd annuity without an additional fee, the office of the representative sent him a letter headed "Patents: Tax Reminder". The letter contained information in Italian and English.
The "tax reminder" informed the applicant about the fact that a third year renewal fee had to be paid for the present application and that this fee had already fallen due several months ago. It further informed the appellant about the necessity to instruct the representative prior to an internal deadline in about a month later. The board conceded with the applicant that the tax reminder contained rather ambiguous information concerning the legal consequences of non-payment. The Italian text could be interpreted to mean that a failure to pay within the time limit would only lead to "administrative fines" ("multe governative"), i.e. additional fees, and that a loss of right would only occur 6 months thereafter. Nevertheless, the appellant was clearly warned by the tax reminder that a legally important time period was running and that he should instruct his representative not later than in about four weeks time for payment of the third year renewal fee.
The board further noted that in this situation, the applicant chose to revoke the appointment of the representative. While the appellant was certainly free to change his representative and to handle the matter in the meantime himself, he should have been aware that, as long as the new representative was not yet appointed, he had to take care himself of any time limit connected with the payment of the third year renewal fee. In view of the content of the tax reminder, he could not simply rely on the assumption that the payment of renewal fees under European law followed the same rules as applicable under the Italian patent grant procedure.
The board interpreted the standard of all due care enshrined in Article 122(1) EPC requires that, in case of doubt or legal uncertainty, the applicant has to take all those steps which can be reasonably expected from a diligent person. Having apparently encountered difficulties in contacting the current representative, the appellant should at least have sought advice with respect to the payment of the third year renewal fee either from his former representative, or from another representative or the European Patent Office before expiry of the internal deadline indicated in the tax reminder. However, the appellant did not undertake any steps at all before appointing the current representative. In view of these circumstances, the Board has come to the conclusion that the requirement of all due care was not met by the applicant. Thus the request for re-establishment into the time limit for payment of the third year renewal fee was not allowable and the appeal had to be dismissed.
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