Application EP 4 039 997 relates to a tilting pad bearing, an assembly of a construction element and such a bearing as well as a method of providing a journal opening with a desired cross-section. .
Brief outline of the case
The Receiving Section rejected the applicant’s request for further processing and deemed the application to be withdrawn. The applicant appealed the decision of the RS.
The RS granted interlocutory revision and the applicant’s request for reimbursement of the appeal fee was considered not allowable and was therefore remitted to the Legal Board of Appeal, cf. R 103(6).
The applicant’s position
The applicant asserted that a SPV arose from the fact that he had submitted neither a request for further processing under Art 121 nor a request for a decision under R 112(2) and that the decision under appeal therefore lacked any legal basis.
The applicant further argued that the fact that the RS had not replied to one of his and had wrongly stated that a reply had been given in two notifications constituted a SPV.
The applicant also submitted that the notification of loss of rights was disregarded by his representative because he considered it to have been generated automatically, since the notification did not refer to a submitted request
The applicant further stated that his representative had inserted a reminder in his administration system to check whether he had received a reply to this request and that he had therefore filed a request for reaction.
The applicant also relied on legitimate expectations from the side of the EPO.
The board’s decision
The Board considered that the requirements for a reimbursement were not met
The board noted that, the applicant not only repeated his request for the late payment of fees to be regarded as having been made in time, but also as an auxiliary measure submitted a request for further processing, without paying the respective fee in due time, as notified in a subsequent communication.
According to Arti 7(3) and (4) RFees, a fee is considered to have been paid in due time if evidence is provided that the payment was effected in an EPO contracting state within the prescribed period, which, however, the applicant did not assert here.
Apart from that, there is the option to apply for a decision under R 112(2) if the party affected by a notification of loss of rights considers that the finding of the EPO is inaccurate. These statutory remedies were also indicated in the underlying notification of loss of rights.
In the appealed decision, the RS pointed out that the examination fee and the designation fee had been paid outside the time limit and that the application was therefore deemed to be withdrawn, thus implicitly refusing the applicant’s request for the late payment to be considered as having been made on time.
Contrary to the applicant’s assertion in his statement of grounds of appeal, the decision also stated that the notification of loss of rights pursuant to R 112(1) responded to the applicant’s letter.
The Board observed that the RS refused the applicant’s request for further processing on the correct legal basis of Art 121(2) and R 135, considering that the fees due had not been paid in time and that no valid request for further processing had been filed.
For the board, the last request was filed outside the time limit of two months under R 135(1) and 112(2) triggered by the notification of loss of rights.
The board held the principle of the protection of legitimate expectations does not give carte blanche to the person relying on it. For their part, it is the responsibility of users of the European patent system to take all necessary procedural actions to avoid a loss of rights It is also inherent in the principle of the protection of legitimate expectations that a person can only successfully invoke an expectation on which they could rely on an objective basis,
The board considered that even if a substantial procedural error was assumed, which it did not recognise, reimbursement of the appeal fee would at least not be equitable within the meaning of Rule 103(1,a), since the behaviour of the applicant had contributed to the situation. The board referred to Case Law of the Boards of Appeal, 10 th edidition, V.A.11.7.2.a.
The applicant is to be regarded as having behaved inappropriately because he did not avail himself of the opportunity to take all necessary measures to avoid a loss of rights in the initial proceedings.
A SPV justifying reimbursement of the appeal fee does not arise either from the fact that the RS had considered the appellant’s request for re-establishment of the right to further processing not valid and had not decided on it in separate proceedings.
In order to render the reimbursement of the appeal fee equitable, there must exist a causal link between the alleged procedural violation and the appealed decision that necessitated the filing of an appeal. This was neither the case here.
The handling by the RS of the applicant’s request for re-establishment was not the reason necessitating filing an appeal against an earlier decision that had already been issued. Said decision, rejecting the request for further processing and deeming the application to be withdrawn could only be set aside by filing an appeal against it, irrespective of the treatment of the subsequent request for re-establishment.
Therefore the requirement of equity is not met here either..
Comments
The present decision is interesting as it reminds users of the EPO system
- A notification of loss of rights might be automatically generated, but it has the effect of triggering some time limits to observe.
- The attitude of an appellant can result in the rejection of the request for reimbursement of the appeal fee, even in case of a SPV.
- The reimbursement of the appeal fee is only equitable if there exists a causal link between the alleged procedural violation and the appealed decision that necessitated the filing of an appeal.
- The principle of the protection of legitimate expectations does not give carte blanche to the person relying on it. All necessary procedural actions to avoid a loss of rights have to taken by the user.
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