EP 3 265 656 B1 relates to a mixing box for an exhaust gas system of an internal combustion engine.
Brief outline of the case
The patent was revoked by decision dated 02.06.2023. The time limit for filing a notice of appeal ended on 13.03.2023 and for filing a statement of grounds of appeal on 12.05.2023. At the time of the decision, the 10 days rule was still applicable.
The OD informed the parties on 17. 04. 2023 that no notice of appeal had been filed.
On 23.06.2023, the proprietor filed a notice of appeal and requested reestablishment in the time limit for filing a notice of appeal and paid the fee for reestablishment.
The proprietor argued that the representative only became aware on 24.04.2023 of the failure to meet the deadline and the failure to meet the deadline was caused by a one-time oversight in an otherwise properly functioning system
The board further noted on 07.08.2023 that the time limit for filing the statement of grounds of appeal was also was also missed.
On 05.09.2023, the proprietor filed a statement of grounds of appeal and requested reestablishment in the time limit for filing a statement of grounds of appeal and paid the fee for reestablishment.
In a communication dated 28.06.2024, the board informed the parties of its preliminary view that neither of the two requests for reestablishment appeared to be allowable, so that it was to be expected that the appeal would be deemed not to have been filed or that the appeal would be dismissed as inadmissible.
During said OP, the proprietor requested the reimbursement of the fees for reestablishment.
Eventually both requests for reestablishment were not granted, the appeal deemed not filed, and the requests for reimbursement of the fee for reestablishment rejected.
The proprietor’s argumentation for reestablishment for filing a statement of grounds of appeal
The proprietor’s argued first, that the first request for reestablishment of 23.06.2023 already constituted an implicit request for reestablishment of rights within the time limit for filing the statement of grounds of appeal.
The proprietor argued secondly that a decision on the request for reestablishment in the time limit for filing a notice of appeal would first have to be made before the time limit for filing the grounds of appeal could begin to run.
The board’s decision on the requests for reestablishment
Request of reestablishment in the time limit for filing a notice of appeal
The board did not query the moment at which the representative became aware of the missed timed limit, i.e. on 24.04.2023. The board therefore held the request for reestablishment, in the time limit for filing a notice of appeal, admissible.
The board did however hold that the request for reestablishment was not duly founded. The board held that the representative did not exercised the necessary due care in view of the circumstances, as the well-known cross-check procedure not having been followed.
The request for reestablishment within the time limit for filing a notice of appeal was rejected. Consequently, the appeal had not been filed within the prescribed time limit, so that it is deemed not to have been filed, cf. G 1/18, Headnote 1.b. Accordingly, the appeal fee was to be refunded, cf. Headnote 2.
Request for reestablishment in the time limit for filing a statement of grounds of appeal
The request for reestablishment for filing a statement of grounds of appeal has not been filed in writing within two months of the removal of the cause of non-compliance, cf. R 136(1).
For the board, it must be assumed that the representative knew or should have known on 23.06.2023 that the time limit for filing the statement of grounds of appeal had already expired. The request for reestablishment of rights 05.09.2023 was therefore filed outside the two-month period under R 136(1) and was therefore inadmissible.
The board did not agree with the proprietor’s position as, under R 136(1), a request for reestablishment of rights is not deemed to have been filed until the prescribed fee has been paid. However, the relevant fee was not paid until 05.06.2023.
Furthermore, the board considered that, although the time limits for filing the appeal and for filing the statement of grounds of appeal are triggered by the same event, namely the notification of the first instance decision, the time limits run independently of each other.
For the board, Art 108 does not provide for a “dependence” of the requirement to file the statement of grounds of appeal on the fact that the notice of appeal has been filed or that reestablishment of rights within the time limit for filing the notice of appeal has been granted.
If reestablishment of rights is granted for filing the notice of appeal, the legal consequences of this failure to observe the time limit are deemed not to have occurred, but this does not mean that the requirement to file the statement of grounds of appeal or the requirement to file a request for reestablishment of rights would only exist thereafter.
Request for reimbursement of the fees for reestablishment
Fee for the reestablishment for filing an appeal
The proprietor considered that the fees for reestablishment had been paid without justification, as the reestablishment of rights to file the notice of appeal appeal was not granted and the appeal was therefore deemed not to have been filed.
The board held that in the specific case, both deadlines were missed, so that the appeal proceedings would only have had to be continued if the legal consequences of missing these deadlines had been lifted, i.e. if both requests for reestablishment had been granted.
Fee for the reestablishment for filing grounds of appeal
The proprietor did not substantiate its request for reimbursement of the fee for reestablishment of the time limit for filing the appeal. The board was also unable to discern any reasons from the contents of the file that would support a refund of this fee.
Conclusion of the board
Both fees were not paid without legal justification, so that a refund of the fee for the request for reinstatement of the deadline for filing the statement of grounds of appeal was also out of the question
Comments
The request for filing the notice of appeal was deemed admissible but not well founded. A reimbursement of the fee for reestablishment seems excluded for this reason alone.
The situation with resoect of the fee for reestablishment for filing grounds of appeal is not fundamentally different. The request was not admissible and a reimbursement seems excluded for the non-admissibility. G 1/18 would not apply as there is no question of the request not having been filed.
The present case illustrates a domino effect. If, in the absence of due care, the time limit for filing an appeal is not respected, the same will most probably apply to the request for filing a statement of grounds of appeal. In principle the reestablishment for filing a noticce of appeal does not dispense the appellant to file the statement of grounds of appeal within 4 months from the notification of the decision to be appealed.
According to T 1882/23, commented on this blog, the time limit for objectively determining the time limit for reestablishment of rights should have started on 17.04.2023, i.e. when the OD informed the parties that no notice of appeal had been filed.
In T 1882/23, it was held that the beginning of this time limit is the result of a communication informing that some needed action had not been carried out. In the present case, it would not have changed a lot as the delay was only one week, and due care was not given.
However, by accepting that the delay for filing a request for reestablishment starts with the representative becoming aware of the non-carrying out of an action, here of an appeal, it would actually allow a representative to claim that it became aware much later.
It shows once more that the boards have diverging views in procedural matters. This should not happen as similar situations should be dealt with in a similar manner. T 11882/23 seems the decision to follow and not the present one.
Comments
1 reply on “T 1278/23 – On reestablishment of rights and the reimbursement of the fee for reestablishment”
I am at a disadvantage as I don’t read German, but is there really a difference in calculation of the 2-month period as between T 1882/23 and this case?
As I understand it, the same question of fact has been asked, it has just been answered differently. The question is when did the representative become aware that the necessary action has not been carried out.
In T 1882/23 didn’t the representative admit that happened on the date of the notification of loss of rights, but try to argue that the period should only start running once the applicant’s “IP person” became aware?
In this case it appears that the representative said they only became aware a week after the date on the notification, and the EPO accepts that as fact.
To my mind nothing has changed and this has been the case for as long as I have been practising, one always needed to be aware that removal of the cause of non-compliance was a matter of fact, and that the 10-day fiction did not apply.
Now, regardless of whether there is a divergence, in a situation where you are already on the backfoot (i.e. requesting re-establishment), opening a new front on which you could lose, by relying on a later date as the date on which the cause of non-compliance is removed, seems foolhardy. Clearly you are correct that it is advisable to file the re-establishment request within 2-months of the date of notification.