EP 3 270 749 B1 relates to device for foaming a liquid, in the present case milk.
Brief outline of the case
The opponent filed a notice of opposition on the last day of the 9 months opposition period. The opposition fee was however not paid within the 9 months opposition period.
The OD issued a communication noting loss of rights under R 112(1).
The opponent replied to this communication, confirming that the opposition fee had indeed not been paid on time but requested that the opponent be allowed under Art 122 to still pay the fee for opposition and that his rights to have this patent re-examined in opposition be re-established. The fee for re-establishment of rights and the opposition fee were paid with the reply.
On 21.05.2021, the OD informed the opponent that that re-establishment of rights was not available as a means of redress for the opponent.
At the end of the OP summoned by the OD, the opposition was deemed not filed and rejected. The opponent appealed.
The appeal was dismissed.
The decision is interesting as it deals with the notion of legitimate expectations.
The opponent’s point of view before the OD
The opponent had received no warning on filing that the payment method had not been specified.
The opponent’s representative held a deposit account with the EPO which should have been debited.
The OD’s communication of 21.05.2021 had created legitimate expectations that the opposition was deemed filed.
The opponent’s point of view before the board
In its 21.05.2021 communication, the OD shared the opinion of the opponent by coming to the conclusion that “the opposition fee was in fact paid in due time, i.e. on 20.09.2020″. It also refused the request for re-establishment.
This [fee paid] finding superseded the earlier loss of rights finding and became a legally binding legal fact that was not open to later reconsideration, unlike a decision which can be challenged in appeal.
Any other interpretation of the communication of 21.05.2021 would deprive the opponent of filing an appeal against a decision to the opposite, including challenging the division’s finding on re-establishment. The division’s finding that the fee was paid on time was not “a preliminary view”, nor conditional or provisional so it must be considered to be a final and irrevocable legal fact.
The subsequent steps taken by the division, treating the opponent as a legitimate party and inviting the proprietor to file observations confirmed that the opposition was to be treated as having been filed.
Relevant to the case is T595/11 in which legitimate expectations arose because the EPO had given no warning but remained silent for years about an appeal fee that had not been paid. The present case is stronger because the OD confirmed the opposition fee had been timely filed.
J14/95 is also relevant because it found that an applicant cannot suffer a disadvantage because it relied on a misleading communication and the EPO cannot later reverse its position without violating good faith.
The board’s decision
The principle of the protection of legitimate expectations is a general principle well established in EU law and generally recognised in the EPC contracting states and boards of appeal case law (see CLB III.A.1).
The protection of the legitimate expectations of users of the European patent system has two main principles.
- It requires that the user must not suffer a disadvantage as a result of having relied on erroneous information or a misleading communication received from the EPO.
- It also requires the EPO to warn the applicant of any loss of right if such a warning can be expected in good faith. This presupposes that the deficiency can be readily identified by the EPO (see CLB, ibid).
In the present case no legitimate expectations were created.
The OD did not conclude that the opposition fee was “in fact paid on time”. Rather it concluded that the “opposition fee is considered deemed to have been paid due in time, but it merely treated the fee as if it had been paid on the last day of the 9 month opposition period.
The OD’s communication of 21.05.2021 was not a decision refusing re-establishment, it merely contained a statement to the effect that re-establishment was not available to an opponent. Rather it concluded. that the opposition fee is considered deemed to have been paid in due time, i.e. on the last day of the 9 month opposition period.
The opponent did however not dispute that it paid the opposition fee much later.
The board did not consider the information that the opposition fee was deemed timely paid, to have been “a legal fact”, neither final nor irrevocable.
Whatever the rights or wrongs of the information in the division’s communication of 21.05.2021, it appears not to be disputed that it was not an appealable decision under R 112(2). It was merely a communication of information.
The board as not aware of any provisions in the EPC which might render the division’s communication of 21.05.2021 a legal fact which was irrevocable and final, in other words a final decision on any matter.
Since the communication deemed the opposition fee to have been timely paid, it did not terminate the opposition proceedings with a decision adversely affecting the opponent at that stage, but allowed them to continue.
In this regard, the board noted that the continuation at that stage did not deprive the opponent of the possibility of filing an appeal.
On the contrary, the OD went on to issue an appealable final decision on the case, which dealt with both the issue of timely payment of the opposition fee and the issue of re-establishment.
T 595/11 is not relevant to the present case, as in that case, a formal check that the correct appeal fee had been paid had not been carried out four years after the filing of the appeal. After such a long time, a legitimate expectation that the fee had been correctly paid was created.
The present case is not similar to J14/94 where, during a long period of time the EPO, by its conduct led the parties and the public to the legitimate belief that no loss of rights had taken place through the non-payment of a renewal fee.
Comments
It is manifest that the OD committed an error by declaring in its communication of 21.05.2021 that the opposition fee was paid in due time. The error was however rectified and therefore no legitimate expectations were created. The proprietor was even invited to take position before the OP.
In general, if an opposition is deemed not admissible, the OD has to summon to OP if the potential opponent files a corresponding request. The OP will then begin with examining the admissibility of the opposition. If the OD concludes that the opposition is not admissible, it announces this decision, issues a decision and the opponent can file an appeal. No discussion on the substance of the opposition will take place.
It is never pleasant for a representative to have to owe up vis-à-vis his client that the opposition fee was not paid in due time. Mistakes can happen, even in large firms of representatives, but it should be clear for any professional representative that Art 122(1) does not apply to the opponent.
G 1/86, only allows re-establishment for the opponent if he has failed to observe the time limit for filing the statement of grounds of appeal.
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