EPO express
rendered 31 October 1989
According to the principle that everyone is presumed to know the law, especially if advised by qualified persons, the failure to interpret the law correctly cannot excuse an applicant or a proprietor of a patent.
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 curren 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.
In J 0031/89 we have a first applicant who filed an international application PCTxxx on 13 February 1985 claiming the priority of a national patent application filed in Great Britain on 14 February 1984.
In a letter dated 15 April 1988, the Receiving Section notified the first applicant that the renewal fee for the fourth year fell due on 29 February 1988, and had not been paid in due time. However, it could be validly paid within six months of the due date, provided that within this period the additional fee was also paid.
The first applicant, having financial difficulties, negotiated with the later second applicant, his brother, to become a co-proprietor of his patent application. A partial assignment of rights between the first and the second applicant was signed on 31 August 1988, by virtue of which the second applicant became co-applicant in the application. The fee paid by the applicants was received by the EPO on the same day.
On 21 September 1988, the Receiving Section informed the first applicant that the patent application was deemed to be withdrawn, since the payment of the renewal fee had not been made in due time.
By letter of 28 September 1988, the first applicant filed a request for re-establishment of rights. In support of his request he set out the difficulties he had had in negotiating an agreement with his brother, which was intended to avoid the loss of the application. This agreement was not signed until 31 August 1988, owing to problems of communication between the parties, due -inter alia - to a public holiday in England.
By decision dated 17 April 1989, the Receiving Section rejected the request for re-establishment on the grounds that, under established EPO practice, financial difficulties having prevented the applicant from paying fees in time do not meet the necessary criteria of due care. The basic principle of ability to pay in connection with the provisions of Article 122 EPC would require that the applicant was able to pay the necessary fees at any time within the course of the European patent procedure. The other circumstances described in the request, such as the problems of communication between the parties concerned as a cause of the delayed arrangement, also were not suitable as grounds for the restoration of rights.
The applicants filed an appeal against that decision on 15 June 1989. In their statements of grounds, received on 15 and 26 July 1989, they mainly argued that the time limit as stated by the Receiving Section was incorrect and therefore the payment of the renewal fee was in due time. Without prejudice to this contention, the applicants referred to the grounds submitted in the First Instance. The necessary level of care and attention to time limits had been paid by the first applicant and his representative, having regard to the circumstances set out in the application for re-establishment and having regard also to the fact that re-establishment had been allowed, for example, on the grounds that a renewal fee had been overlooked because the applicant's representative had been acting single-handed under conditions of acute personal stress.
The appeal complies with Articles 106 to 108 and Rule 64 EPC and therefore is admissible.
The Board agreed with the Receiving Section's opinion that the renewal fee in respect of the fourth year fell due on 29 February 1988, and that the last date on which payment validly could have been made was 29 August 1988. According to Article 86(1), read in conjunction with Rule 51(1) EPC 2000, renewal fees for a European patent application in respect of the coming year shall be due on the last day of the month containing the anniversary of the date of filing of the European patent application. The application in question was filed on 13 February 1985; therefore the last day of the month of February in 1988, the 29th, was the day on which payment of the renewal fee should have been effected.
Furthermore, the late payment of the renewal fee on 31 August 1988, is not to be considered as a payment in due time. According to Rule 52(2) EPC 2000, the (new) time limit starts on the "due date", which, in the present case, is 29 February 1988. Therefore, the Receiving Section correctly concluded that in accordance with Rule 131(4) EPC 2000 the expiry date was the day in August corresponding to the same number of the day in February. The opinion of the applicants, expressed in their letter of 24 July 1989, is based on an erroneous interpretation of the EPC. It is true that the cited commentary of the Chartered Institute of Patent Agents referring to the late payment of renewal fees may be misleading. However, as set out above, the relevant Article and Rule of the EPC are very clear on that point. According to the principle that everyone is presumed to know the law, especially if advised by qualified persons, the failure to interpret the law correctly cannot excuse the applicants.
The Board had sympathetically considered the information presented by the applicants in their statements of grounds of appeal about the social, technical and business difficulties suffered by the first applicant. Those difficulties certainly gave rise to problems in the course of the negotiations between the two applicants causing also stress to all parties involved. However, the Board concludes that this situation - being typical in such negotiations - were not really the cause of the failure to pay the fees on time. It is apparent from the statements of grounds of appeal that during the discussions on the agreement between the two applicants, everyone, including their representative, was aware of the necessity for payment of the renewal fee. However, they failed to determine correctly the last date for valid payment of the renewal fee.
As a general principle everyone is presumed to know the law, especially if advised by qualified persons.The board obviously considered a mistake in applying the law correctly the same as not knowing the law. For that reasons the board came to the conclusion that this was not a circumstance that justified a re-establishment of rights.
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