EPO express
rendered 25 April 2017
The word "unable" in Article 122(1) EPC implies an objective fact or obstacle preventing the action required from being taken. Unawareness of the expiry of a time limit must be distinguished from a deliberate course of actions taken by the applicant due to tactical or strategic considerations. Article 122 EPC is an exceptional means of judicial remedy, not a usual way of extending an initial 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. The facts and submission in this case are confusingly large. The original decision comprises 54 pages. For this annotated version we consequently deleted all information that had no impact and was not necessary to understand the decision of the board of appeal.
An International application No. PCT/NZ2006/xxx, on which the present European patent application was based, was filed in the name of Mr S, a resident of New Zealand. After the application's entry into the regional phase before the European Patent Office (EPO) on 9 May 2008, the then applicant's name and address were duly entered in the European Patent Register, as also was the name and address of the European professional representative appointed at that time. On 4 March 2013, the EPO was informed of a change of representative and of the termination of the previous representative's authorisation. The new European professional representative representing Mr S (henceforth "the representative") was accordingly entered in the European Patent Register.
In accordance with Art. 97(2) EPC the Examination Division rejected the European patent application because the Examining Division was of the opinion that the European patent application did not meet the requirements.
The representative duly filed a notice of appeal on 2 December 2013 and stated inter alia: "In the event that it is intended to refuse this application, or before any adverse decision is taken, the applicant hereby requests, in order of preference, a telephone interview, a personal interview, or oral proceedings under Article 116 EPC."
The appeal fee was paid on the same day.
By a letter dated 10 January 2014 and received at the EPO on 17 January 2014, Mr S (not his European representative!), filed a request for extension of the time limit for filing the statement setting out the grounds of appeal, together with submissions on the matter. In that letter, he wrote inter alia the following: "After consideration I have decided that it is not an ideal situation having my current patent attorney represent me. ... So why I am writing, is to ask if there is some facility that can provide me with more time to find a patent attorney and prepare an appeal application."
By an email reply dated 21 January 2014, a patent formalities expert of the EPO informed Mr S as follows: "There is no possibility to extend the time for filing the grounds for appeal in the above mentioned application. The time limit for doing so expires on 05.02.2014."
In a reply received at the EPO on 14 February 2014, Mr S argued inter alia that he disagrees with a technical interpretation of his European representative and he would need time to find and instruct a new representative. He claimed that "The way you (the EPO) are interpreting this situation you are taking away the right of the inventor/owner to change representative; I am sure that can't be correct." Mr. S asked the EPO to reconsider their decision, it would just get even more bureaucratic; an appeal to reverse an extension for an appeal."
Mr. S obviously understood that if he is not given an extension of time and he would fail to file the grounds for appeal his appeal would be rejected. Being not legally trained Mr. S apparaently had the wrong undeerstanding of law that after having deliberately provoked the rejection of his appeal he could use a legal remedy (another appeal) to overcome this rejection.
Mr. S obviously did not file the grounds of appeal. In a communication from the registrar of the board dated 15 July 2014 and notified to the representative on 22 July 2014, it was noted that it appeared from the file that the written statement of grounds of appeal had not been filed, and that it was therefore to be expected that the appeal would have to be rejected as inadmissible pursuant to Article 108, third sentence, EPC in conjunction with Rule 101(1) EPC. The communication also contained the information that any observations had to be filed within two months of notification of the communication.
The board sent a communication of 15 July 2014 to Mr Stanimiroff, informing him as follows:
By a letter dated 2 September 2014 and received on 8 September 2014, Mr S filed a statement setting out the grounds of appeal together with claims, description pages, drawings and an abstract. In a letter dated 10 September 2014 and received at the EPO on the same day, the representative endorsed the letter of Mr. S
By letter dated 22 September 2014 and received at the EPO on the same day, the representative requested re-establishment of rights pursuant to Article 122 EPC and stated the following: "The Applicant submits that, in spite of all due care required by the circumstances having been taken, he was unable to observe the time limit to file a statement setting out the grounds of appeal in accordance with Article 108 and Rule 99 EPC. The Applicant wishes to make the enclosed submissions to the European Patent Office, setting out the facts on which he relies. A plurality of documents were attached to this letter as proof for the due care taken by Mr. S"
The fee for re-establishment of rights was paid on 22 September 2014.
On 17 October 2014, the representative filed with the EPO his withdrawal from representation for the present application. This was registered with effect from that date.
By communication dated 22 October 2014, the EPO informed Mr S that the representative he had authorised had withdrawn from representing him, with the result that the authorisation was terminated vis-à-vis the EPO and the requirements of Article 133(2) EPC were no longer met. Mr Stanimiroff was also reminded that he had to be represented by a European professional representative and act through him in all proceedings established by the EPC. He was invited to give notice of appointment of a professional representative within two months as from notification of said communication, and his attention was drawn to the legal consequence under Article 94(4) EPC if he failed to reply in due time.
The present application was transferred to Mrs H, a resident of the United Kingdom. This transfer took effect vis-à-vis the EPO on 19 December 2014 and the registration of this transfer was accordingly entered in the European Patent Register. The appellant has not appointed a representative.
Being a resident in one of the EPC states, Mrs H as the new patent application proprietor did not need a European representative to represent her patent application at the EPO.
In a letter dated 17 July 2015 and received on 21 July 2015, Mrs H referred to the request for re-establishment of rights dated 22 September 2014 and the documents related thereto and asked what the status of the application was. She also filed a statement of grounds of appeal with attachments (claims, abstract and description) according to a "MAIN REQUEST", which essentially corresponded to the statement and attachments filed on 10 September 2014. Two further letters filed by Mrs H repeated her earlier reqeust and made further submissions with regard to said request.
Finally the board held oral proceedings on 25 April 2017 in the absence of the duly summoned Mrs H.
A lot of arguments had been submitted by Mr. H and had to be taken into account. However, as they were aguments of a layman, they had only low significance and we do not repeat them here.
Inter alia the board discussed the following issues:
The right to file an appeal against a decision of a first-instance department is afforded to all parties who were involved in the proceedings before the first-instance department and who were adversely affected by the contested decision (Article 107, first sentence, EPC).
Since the contested refusal decision mentioned Mr S as applicant and adversely affected him, the right to appeal against the decision was afforded to Mr S.
The present European patent application had been transferred to the appellant, whose residence is in the United Kingdom and thus within the territory of an EPC contracting state. This transfer took effect vis-à-vis the EPO on 19 December 2014 and thus after the notice of appeal and the request for re-establishment of rights had been filed. From that date on she has therefore been entitled to exercise the rights to the present application and to act in the present appeal proceedings. The appellant's letters dated 14 December 2016 and 17 March 2017 refer to "the organisation". According to the documents on file, however, no organisation is party to the present proceedings, but only Mrs H as applicant and appellant. It follows from this that, as from 19 December 2014, the appellant became party to the present appeal proceedings and, consequently, they had to be continued with her.
Article 133 EPC lays down the general principles of representation in proceedings established by the EPC. Article 133(1) EPC stipulates that, subject to Article 133(2) EPC, no person is compelled to be represented by a professional representative in proceedings established by the EPC. However, according to Article 133(2) EPC, natural persons not having their residence in an EPC contracting state must be represented by a professional representative (Article 134(1) EPC) or a legal practitioner (Article 134(8) EPC) and act through him in all proceedings established by the EPC, other than in filing the European patent application.
It follows that, according to Article 133(2) EPC, Mr S, whose residence is in New Zealand and thus not within the territory of an EPC contracting state, had to be represented by a professional representative (Article 134(1) EPC) or a legal practitioner (Article 134(8) EPC) and act through him in all proceedings established by the EPC, other than in filing the European patent application. Therefore, also in appeal proceedings, Mr S had to be represented by and act through a professional representative (or a legal practitioner).
The representative was duly appointed when the EPO was informed of a change of representative on 4 March 2013. Rule 152(1) EPC provides that the President of the EPO determines the cases in which a signed authorisation must be filed by representatives acting before the EPO. Since the EPO had been notified that the previous representative's authorisation had terminated, the filing of an authorisation of the representative was not required (Rule 152(1) EPC and Article 1(2), first sentence, of the decision of the President). The board concludes from this course of action that Mr S knew how a change of representative takes place in proceedings before the EPO.
The board then discussed in all details when the representaive of Mr. S changed. Although Mr. S had indicated in his letter his intention to replace his representative, he never explicitely communicated the termination of his authorisation to the EPO. According to the legal fiction of Rule 152(8) EPC, a representative is deemed to be authorised, if or for as long as the termination of an authorisation is communicated to the EPO. Therefore, the representative was deemed to be authorised until the termination of his authorisation had been communicated to the EPO by the representative himself in his letter dated 17 October 2014.
The board further stated that Mrs H, the appellant has her residence in the United Kingdom and thus within the territory of an EPC contracting state and therefore, under Article 133(1) and (2) EPC, she does not have to be represented by a European professional representative (or by a legal practitioner) and act through him in proceedings established by the EPC. Consequently, unlike Mr S, she herself had the right to act in the present appeal proceedings, but only as from 19 December 2014.
Mr S had to act through a representative in the present appeal proceedings. Therefore, the board cannot take into account requests and submissions filed in these appeal proceedings before 19 December 2014, which were made neither by the representative nor endorsed by him. This of course does not apply to submissions which exclusively concern the appointment or change of a representative or the filing of an authorisation or of any information that the representative's authorisation has terminated.
Regarding the appellant's submission that the EPO could not "legally communicate with applicants outside the European Union" without the representative's consent, the board notes that there is nothing in the EPC which prevents the EPO, without such consent, from communicating with or notifying communications to parties not resident in an EPC contracting state. In particular, Article 133(2) EPC does not prevent the EPO from doing that. Article 133(2) EPC solely concerns whether and to what extent these parties can act in proceedings established by the EPC. Moreover, under Rule 152(3) and (2) EPC, if a party whose residence or place of business is not in an EPC contracting state has not appointed a representative as required by Article 133(2) EPC, the EPO must invite it to do so within a specified period. It goes without saying that, if a representative is appointed, the EPO has to keep him informed, e.g. by sending him a copy, as it did in the present case, of any communications it sends direct to the party.
In view of the above, the board has considered all requests and submissions presented in the present appeal proceedings by the representative or endorsed by him before 19 December 2014. The board also takes into account requests and submissions made by Mr H as from 19 December 2014.
The board noted that in case of decision T 0578/14 the notice of appeal was filed and the appeal fee was paid in due time.
The board further noted that for an appeal to be admissible, it is also necessary that, within four months of notification of the decision, a statement setting out the grounds of appeal be filed in accordance with Article 108, third sentence, and Rule 99(2) EPC. Under the EPC, this four-month period is not extendable because it is fixed by the European Patent Convention itself, namely its Article 108, third sentence. This conclusion is in line with the provisions of Article 120(b) and Rule 132(2) EPC because they only allow extension of periods specified by the EPO. Decisions T 79/99 and J 12/07, cited by the appellant, do not exclude it, since both decisions concern periods specified by the EPO.
In the present case, the four-month period expired on 5 February 2014 (Article 120(b) and Rule 131(4) EPC).
Neither the notice of appeal nor any other document filed during said four-month period contains anything that could be regarded as a statement of grounds of appeal pursuant to Article 108 EPC and Rule 99(2) EPC. A statement setting out the grounds of appeal was filed on 10 September 2014 and thus not in due time. The appeal therefore has to be rejected as inadmissible pursuant to Article 108, third sentence, EPC in conjunction with Rule 101(1) EPC, unless the appellant's request for re-establishment of rights is allowed or the board sees in the present case a breach of the appellant's legitimate expectations.
In the present case, the representative filed the request for re-establishment of rights and the statement of grounds of appeal. It is only after filing this request that the transfer of the present European patent application took effect vis-à-vis the EPO. So Mrs H, as Mr S legal successor, may pursue the request for re-establishment of rights as if it were her own, provided that she gives notice to this effect. Mrs H did indeed do so several times.
However, for establishing whether the requirements of re-establishment of rights are fulfilled, the party concerned is Mr S, since the transfer of the present application took effect vis-à-vis the EPO on 19 December 2014 and therefore after the four-month period under Article 108, third sentence, EPC had expired. According to established EPO jurisprudence, the duty of due care under Article 122(1) EPC applies first and foremost to the applicant himself and then, by virtue of the delegation implicit in his appointment, to the professional representative (see for example decisions J 3/93, J 0017/03; J 7/12, point 3 of the Reasons; T 1401/05 of 20 September 2006, point 13 of the Reasons). In considering it, the boards of appeal have ruled in numerous decisions (for example, T 287/84, OJ EPO 1985, 333) that the circumstances of each case must be looked at as a whole. The obligation to exercise due care must be assessed in the light of the situation as it stood before the period concerned expired. This means that the steps the applicant took to observe the time limit have to be judged solely on the basis of the circumstances as they were at that time (T 667/92 of 10 March 1994, point 3 of the Reasons; T 381/93 of 12 August 1994, point 3 of the Reasons).
According to Article 122(1) EPC, an applicant can have his rights re-established upon request if, in spite of all due care required by the circumstances having been taken, he was unable to observe a time limit vis-à-vis the EPO.
The word "unable" in Article 122(1) EPC implies an objective fact or obstacle preventing the action required from being taken. Unawareness of the expiry of a time limit must be distinguished from a deliberate course of action taken by the applicant due to tactical or strategic considerations. Article 122 EPC is an exceptional means of judicial remedy, not a usual way of extending an initial time limit. In decisions T 413/91 and J 2/02, the boards have also taken this approach on the legal interpretation of the term "unable" in Article 122(1) EPC. The board considers these decisions relevant for the present case, and therefore does not share the appellant's view that they are irrelevant.
It is clear from the submissions on file and in particular from the EPO's email sent to Mr Stanimiroff on 21 January 2014 (see copy annexed to EPO's communication dated 22 January 2014 and sent to the representative) that Mr Stanimiroff was aware of the exact date of expiry of the four-month period for filing a statement of grounds of appeal.
In view of the foregoing, the board concluded that Mr S, who had the same representative throughout the appeal proceedings until 17 October 2014, deliberately refrained from instructing his representative to file the statement of grounds of appeal before the expiry of the four-month period and thus intentionally allowed this period to expire. He decided to instruct his representative to file the statement of grounds of appeal only with the request for re-establishment of rights under Article 122 EPC dated 22 September 2014. Since Mr S had an authorised representative at the relevant time, the argument that he "did not have enough time to resolve the situation" is not convincing.
However, even assuming that Mr S had no authorised representative at the relevant time and intended to entrust the matter to a new representative, he deliberately did not undertake any steps necessary for filing a statement of grounds of appeal in due time. While Mr S was certainly free to change his representative - as he had already done in 2013 during the examination proceedings - he should have been aware that he could not handle the matter himself in the meantime, and that under Article 133(2) EPC he had to appoint a new representative. He should have also been aware that he had to arrange to appoint a new representative promptly, and at the latest before expiry of the four-month period, so that the new representative could file the statement of grounds of appeal in due time. However, according to the submissions on file, he deliberately chose not to appoint a new representative.
A party, however, cannot deliberately choose not to fulfil the conditions for a valid appeal, and then achieve an appellate review through the back door of a request for re-establishment of rights (see also decision T 413/91, point 4 of the Reasons). Not instructing a representative for strategic or tactical reasons falls however outside the scope of Article 122 EPC, and deprives the applicant from the possibility of invoking this article (see also decision J 2/02, point 7 of the Reasons). Consequently, Mr S has not fulfilled the first condition under Article 122(1) EPC. It follows that, on that ground alone, the request for re-establishment of rights has to be rejected.
The board further stated that an individual applicant such as Mr S cannot rely on his ignorance of European patent law. He therefore should have familiarised himself with the relevant EPC provisions and the jurisprudence on the possibility of extending the period for filing a statement of grounds of appeal, or should at least have sought advice about it from his existing representative or a new one. As set out above, the relevant articles and rules of the EPC make it very clear that the four-month period under Article 108 EPC is non-extendable. Moreover, in its email dated 21 January 2014 the EPO had clearly informed him that there was no possibility of extending it. Therefore, there was no excusable basis for any such erroneous interpretation of the EPC on the part of Mr Stanimiroff.
The board also discussed in great detail the other issues raised by Mr S, such as disporportianality and lack of good faith of the EPO, but considereded them as not founded.
In view of the above, the appellant's request for re-establishment of rights has to be rejected and the board sees in the present case no breach of the legitimate expectations of the appellant. Thus the statement setting out the grounds of appeal was not filed in due time. The appeal therefore has to be rejected as inadmissible pursuant to Article 108, third sentence, EPC in conjunction with Rule 101(1) EPC.
For these reasons it is decided:
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(c) EPO express 2020