EP 3 211 049 B1 relates to coating compositions, coated substrates and processes for preparing the coated substrate.
Brief outline of the case
The OD decided that claim 1 as granted infringed Art 123(2).
The proprietor was notified of the filing of an opposition (letter 1=L1)
The proprietor was invited to reply to the opposition (L2). As the proprietor never replied to the opposition, the patent was revoked.
The decision of the OD was notified to the proprietor (L3)
No notice of appeal was filed within the two-month time limit of Art 108.
The OD issued a communication concerning the termination of opposition proceedings since no appeal against the decision had been timely filed (L4).
The proprietor changed representative.
The new representative filed a request for re-establishment of rights under Art 122 and paid the required fee. On the same day the new representative filed a notice of appeal and the appeal fee was paid accordingly.
With the request for re-establishment of rights, the new representative submitted a declaration of the former representative of the proprietor
The request for re-establishment of rights was rejected.
The case is interesting as it deals with two aspects
- Are we in presence of a single mistake in a normally satisfactorily working system of keeping trace of time limits for the original representative
- Determination of the time limit to for filing the request for re-establishment.
The proprietor’s point of view
The failure of the proprietor to observe the time limit for filing the notice of appeal and paying the appeal fee occurred in spite of all due care. The failure to observe the time limit was due to an isolated fault within a normally satisfactory system in which the former representative adequately monitored time limits using an Excel sheet docketing system.
Specifically, the letter notifying the decision of the opposition division was not received by the former representative. It was argued by the new representative, and confirmed by the former representative in an affidavit that the former representative held office in Switzerland where he was at least once a month to collect the mail.
Whenever he was not present, mail was collected on his behalf by his landlady, who informed the former representative when registered mail was received. The letter notifying the decision of the opposition division was not received, nor was a collection note, normally left by the Swiss post in the event that a registered letter cannot be delivered, found in his letter box.
During this time, the former representative was on holiday. Hence, despite all due care, the former representative was not able to meet the time limit for filing an appeal against the decision of the opposition division to revoke the patent.
Date of removal of the cause for non-compliance
The new representative argued that it had only become aware of the decision under appeal on 15.05.2023 when it discovered that upcoming renewal fees could not be paid, as the patent had been revoked.
This came as a complete surprise to the proprietor and the former representative. After being informed of the loss of rights, the proprietor requested the new representative to submit a request for re-establishment along with a notice of appeal.
The proprietor referred to J 1/20, and argued that the removal of the cause of non-compliance was a question of fact; it related not to the point in time at which the responsible person should have become aware of the non-compliance, but rather when it actually became aware.
Since the request and the grounds for re-establishment of rights along with the submission of the notice of appeal had been filed within 2 months of 15.03.2023, the requirements of R 136(1) were fulfilled. This argumentation was presented for the first time during OP.
The board’s decision
Re-establishment
The board did not consider further the fact that the request for re-establishment of rights was filed by the new representative, whereas it was the former, and duly appointed representative who was at the time responsible for the patent.
The proprietor submitted for the first time during OP before the board that none of the communications of the EPO sent to the appellant during opposition proceedings had reached the former representative.
If the statement that none of said communications were received is accepted, it cannot at the same time be accepted that the non-reception by the former representative of the decision notifying the revocation of the patent was an isolated fault within a normally satisfactory system.
Without any explanation, let alone proof concerning reasons explaining why four consecutive communications from the EPO were not received, it must be assumed that not one isolated fault, as argued by the proprietor, but a consecutive series of faults in the former representative’s system must have occurred. Therefore the requirement of all due care set out in Art 122(1) was not met.
Date of removal of the cause for non-compliance
Even if the requirement of all due care under Art 122(1) were to be ignored, the requirements of R 136(1) were not met.
Even accepting the proprietor’s position for the sake of argument, this does not necessary mean that said date must correspond to that alleged by the appellant, in the present case 15.03.2023.
Rather, as with any other fact, the evidential burden of proof lies with the person alleging said fact, in the present case the proprietor. Whether the alleged date can be accepted as the date on which the responsible person became aware depends on the evidence on file and the circumstances of the case. This understanding also emerges from J 1/20.
The letter of the EPO concerning termination of opposition proceedings (L4) was sent to the proprietor at the correct address. Hence, it must be assumed that the proprietor has been aware of the non-compliance at this moment.
Furthermore, if not at that point in time, the proprietor must have become aware of the non-compliance at the latest when the revocation of the patent appeared in the European Patent Register or when the revocation of the patent was published in the European Patent Bulletin.
Since the request for re-establishment of rights dated 15.03.2023 was submitted more than 2 months after any of these dates, the requirements of R 136(1) were not fulfilled.
Comments
Re-establishment
Having an abode in Switzerland, going there from time to time (at least once a month to collect the mail!), and banking on the landlady to collect the post in one’s absence, is showing a great distance to the duties of a qualified representative. Did the original representative have a Swiss residence for tax reasons?
What on earth did the new representative expect when he came with the flabbergasting statement, that none of the EPO’s letters in the ongoing procedure have ever reached the proprietor?
Beginning of the time limit to file the request in restitutio
It is too easy to claim as beginning of the time limit under R 136(1) the moment at which the proprietor, or its representative, actually became aware of the removal of the cause of non-compliance.
Although it is stated in J 1/20, that creating a presumption of knowledge which is almost impossible to rebut is not acceptable, the present board made clear that the proprietor should have been aware of the non-compliance well before 15.03.2023.
Using the wording of J 1/20, the date of removal of the cause of non-compliance is indeed a question of fact, but the legal requirement of due care has been assessed in the context of the merits of the request for re-establishment.
Comments
4 replies on “T 1029/23 – Re-establishment of rights –Beginning of the time limit to file the request in restitutio”
Undelivered registered mail is not a theoretical case.
I work from an office centre without easy access to the offices, but with street side letter boxes. I am the only one with a key to the letter box and empty it every day. The national postal service normally leaves a collection note for registered mail, but occasionally does not (I estimate between 2 and 3% of the cases).
No landlady, no unrealiable intermediates, no sketchy instructions or irregular collection intervals, just me and the national postal service are concerned, and yet I have missed registered letters , more than once
This could have happened to me. And it would be a fault, isolated or not, in a system that I have no control over (and can’t even get info from, because the EPO is the client and is exclusively entitled to complain or enquire)
@ BJ,
I understand your point of view, but I would first observe that specific situations should not be generalised.
If after receiving a communication of loss of rights in form of a registered letter with acknowledgement of receipt, it is normally for the EPO to show that the letter has not been received. The absence of the receipt in the file is in general considered that the letter has not arrived. Then the onus of proof lies with the EPO, which is not really possible. There are numerous decisions on this topic.
In the case at stake, the representative claimed that he never received any letter relating to the opposition procedure. This is far fetched to say the least. Noting time limits on an Excel sheet is by far insufficient.
Being aware of case law in matters of re-establishment, your system with an external letter box, and with only you having access to it, I am not sure that, in case of a request for re-establishment, it would be accepted that all necessary measures have been taken and that your system normally works.
I know a case in which a representative was located in a small town in Spain and regularly registered letters would not arrive in time. With the stamp of the post authorities, it has never proved difficult to extend the then valid 10 days delay.
With the introduction of My EPO, such situations, or yours, should not any longer occur. But then it requires a regular and careful look in the electronic letter box.
What I meant by only me having the key is that at least the risk that a co-worker/assistant/housekeeper emptied the letter box and mis-processed the contents is reduced. Other risks (in particular the consequences of me becoming incapacitated) are indeed increased.
So I suppose an assessment of whether the system normally works would depend on what exactly went wrong
An assessment of whether the system normally works does indeed depend on what exactly went wrong, but prima facie the odds are against you.
Next to the key problem and generally speaking, to satisfy the requirement of all due care, a system for monitoring time limits must not leave time-limit monitoring in the hands of just one person, but must incorporate at least one effective cross-check. See e.g. T 2336/10.