The application relates to a method and apparatus for forming a formwork for a ribbed or waffle concrete slab.
Brief outline of the case
The application was deemed withdrawn for non-payment of the renewal fee for the 6th year with surcharge.
The applicant filed a request for re-establishment. The ED rejected the request for re-establishment.
The applicant appealed this decision.
The board confirmed the rejection of the request for re-establishment.
The case is interesting in view of the responsibility of the professional representative for monitoring time limits and for the moment in time at which he was made aware of a loss of rights in order to timely file a request for re-establishment.
The applicant from New Zeeland was represented before the EPO by a qualified representative under Art 134 residing in the UK. The applicant had as well a non-European representative residing in Paris.
The applicant’s point of view
Referring to point 2 of the catchword of J 1/20 the applicant argued that, that awareness of an error within the meaning of J 1/20 required actual knowledge by the professional representative that it had been unintentional on the part of the applicant not to pay the renewal fee. This was so because the non-payment of that fee could also have been intentional, in which case it would not have been an error. Thus, the professional representative had only become aware of the error on 18.07.2020.
Mere knowledge of the missed payment itself was not awareness of an error. The professional representative, had been the person responsible for the patent application and had not become aware of the error, i.e. that the renewal fee had not been paid even though the applicant wanted it to be paid, until receipt of an email from the non-European representative. The appellant’s request for re-establishment had been filed within two months from 18.07.2020and was therefore admissible.
The board’s decision
Date of the removal of the cause of non-compliance
The removal of the cause of non-compliance with a time limit under R 136(1) is to be established on a purely factual basis and occurs, as a rule, on the date on which the person responsible for the application vis-à-vis the EPO becomes aware of the fact that the time limit has not been observed, for example by receipt of a loss of rights communication under R 112(1). The board referred to a series of decisions: T 1547/20, Reasons 4.1; T 1995/19, Reasons 6; see also J 27/90, Reasons 2.3, and T 1570/20, Reasons 3.
If a professional representative is appointed, the representative is the person responsible for the application vis-a-vis the EPO, cf. J 1/20, Reasons 2 to 2.2. The removal of the cause of non-compliance in principle occurs with the actual receipt of a communication under Rule 112(1). The board referred to T 1995/19, Reasons 6; T 2251/12, Reasons 10; T 812/04, Reasons 2.1.1; see also T 1678/21, Reasons 4.4.1 (a), sixth paragraph, applying the rationale underlying J 1/20 to the assessment of when an error under R 139 was detected, and referring to a communication having reached “the area of responsibility of the professional representative”.
Time limit for the payment of fees
Regarding time limits for the payment of fees, an appointed professional representative remains the person responsible for the application vis-a-vis the EPO, and thus the person whose knowledge matters in assessing when the cause of non-compliance was removed, irrespective of whether a third party other than the representative is responsible for the payment of fees.
Regardless of which contractual arrangements a party chooses for the payment of fees, an appointed professional representative remains the EPO’s single point of contact.
In the present case, the loss of rights communication was received by the professional representative’s firm, on 07.02.2020. The professional representative denied that his colleagues presented this communication to him before 18.07.2020.
From the documents on file, the representative in charge gained actual knowledge of the missed time limit and the associated loss of rights at the latest on 02.07.2020. This triggered the two-month time limit under R 136(1).
The removal of the cause of non-compliance does not require any additional knowledge on the part of the professional representative about possible reasons for missing the time limit, such as whether the non-payment of renewal fees had been intentional or not. It was sufficient that the representative in charge became aware of the fact that the time limit for paying the renewal fee for the 6th year with surcharge – had not been complied with, this including awareness of the fact that the fee had not been paid, see T 1570/20, Reasons 13.
This knowledge objectively enabled the professional representative to take appropriate action, for example by filing a request for re-establishment of rights within two months of having gained that knowledge.
There were no exceptional circumstances in the present case according to which the cause of non-compliance persisted despite the representative’s actual knowledge of the missed time limit (see T 1995/19, Reasons 8, with reference to J 1/20, Reasons 3.7.1).
As to the term “error” in the catchword of J 1/20, the board considers that this term must not be read in isolation but in the context of the facts of the case underlying that decision.
In J 1/20, the applicant was supported by a domestic agent who monitored a P.O. Box in respect of notifications from the EPO. The domestic agent informed the applicant neither of the EPO’s communication under Rs 70(2) and 70a(2) nor of the loss of rights communication pursuant to R 112(1).
As no professional representative had been appointed, the applicant remained the person responsible for the application vis-à-vis the EPO. Hence, it was the applicant’s knowledge – and not the domestic agent’s knowledge – which mattered for assessing when the cause of non-compliance was removed.
Comments
The present decision makes it clear if a representative has been appointed, it is the professional representative which is responsible for monitoring the time limits for different actions vis-à-vis the EPO.
If no representative has been appointed, it is the applicant which is responsible for monitoring the time limits for different actions vis-à-vis the EPO.
In both cases, it is possible to determine a date at which the person responsible has become aware of a missed time limit. In case of a loss of rights, this is in principle the date of receipt of the communication under R 112(1).
As far as the payment of renewal fees is concerned, it remains the responsibility of the professional representative to insure that the renewal fees are paid, possibly with a surcharge, within the required time limits, irrespective of whether a third party other than the representative is responsible for the payment of fees.
It is also irrelevant whether the non-payment of the renewal fee was unintentional or not.
https://www.epo.org/en/boards-of-appeal/decisions/t230231eu1
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