EP 3 753 049 B1 relates to a silver-indium transient liquid phase method of bonding a semiconductor device and a heat-spreading mount, and a semiconductor structure having a silver-indium transient liquid phase bonding joint.
Brief outline of the case
The patent was granted an published without drawings.
The appeal was directed at the ED’s decision to grant the patent.
In a communication under R 71(3), the ED informed the applicant about its intention to grant.
The international application WO 2020/226626 A1 on which the European application was based contained Figures 1 to 7 as drawings. No drawings were listed as part of the application to be granted in the communication under R 71(3) and the annexed text intended did not contain any drawings either.
The applicant approved the text communicated by the ED and submitted translations of the claims into German and French. On the same day, it paid the fee for grant and publication.
The applicant filed a notice of appeal against the ED’s decision, paid the appeal fee and provided a statement of grounds of appeal so that the case be remitted to the department of first instance with the order to grant a patent based on the application documents including the complete set of Figures 1 to 7.
Noting a loss of rights under R 112(1), the board drew the applicant’s/proprietor’s attention to the fact that in view of the non-respect of the time limit under Art 108, the appeal was deemed not to have been filed under Art 108.
The applicant/proprietor requested re-establishment of rights under Art 122 and paid one fee for re-establishment of rights.
The request for re-establishment was deemed not admissible for two reasons and the appeal deemed not filed.
The applicant’s/proprietor’s point of view
The applicant/proprietor submitted that:
The ED’s communication under Art 94(3) already did not list the drawings and was only based on the claims and the description.
The ED’s communication under R 71(3) was entered into the docketing system of the professional representative’s law firm with a one-month period for the text intended for grant to be reviewed by the patent attorney responsible.
The law firm’s procedures for reviewing the text intended for grant were followed but a mistake was committed by not noting the absence of figures.
The applicant/proprietor instructed the professional representative, and a response to the communication under R 71(3) was filed including the approval of the text intended for grant.
One day after the decision to grant had been issued, instructions were sent to the professional representative’s validation partner for the patent to be validated in Spain and Italy. The administrative work was handled by a paralegal.
The applicant/proprietor was informed about the missing drawings after the representatives in charge had learned about the issue from the Italian Patent Office, and they immediately filed the appeal.
The applicant/proprietor concluded:
“In spite of all due care required by the circumstances having been taken, we were unable to observe the time limit to appeal, since we were unaware of the missing drawings which could not be reasonably expected from the ED’s intention to grant a European patent on the basis of its application.”
The board’s decision
Neither the notice of appeal nor the payment of the appeal fee were carried out within the time limit under Art 108. This also applied to the filing of the statement of grounds of appeal.
Taking notice of existing case law, the board noted that since two time limits had been missed, two fees for re-establishment could be due, but it was also accepted in case law that only one fee was due since re-establishment in respect of both periods has to be examined together and the result will inevitably be the same.
Whether one or two re-establishment fees are required in the circumstances in hand was left undecided.
Substantiation of the request for re-establishment
A request for re-establishment of rights complies with the requirement of R 136(2), if a conclusive case is made, setting out and substantiating the grounds and facts on which the request relies.
In the letter requesting re-establishment of rights, the applicant/proprietor did not present any core facts to make it possible for the board to consider whether the applicant/proprietor had taken all due care required by the circumstances in order to comply with the time limits under Art 108.
The mere statement that it “could not be reasonably expected” that the drawings were missing in the ED’s communication under R 71(3) is not sufficient. Moreover, the statement of grounds of appeal did not (explicitly or implicitly) set out any facts relating to the question of whether the applicant/proprietor complied with the “all due care” criterion.
It was only with the letter of reply to the board’s communication that the applicant/proprietor went into more detail for the first time on possible facts regarding whether the appellant had taken all due care required by the circumstances.
Consequently, the request for re-establishment of rights was inadmissible for lack of substantiation.
Inability to observe a time limit vis-à-vis the EPO
In the case in hand, the board could not see any objective fact or obstacle that prevented the applicant/proprietor from observing the time limits under Art 108.
The facts relied on by the applicant/proprietor do not relate to an error in the carrying out of a party’s actual intention to meet a specific time limit, but only to an error in relation to the intention to use a legal remedy entailing a time limit.
Therefore, the applicant/proprietor was actually able to file an appeal in due time but failed to do so because of a previous error as to motive, i.e. because it was unaware of the need to file an appeal to rectify the absence of the drawings in the patent specification. This situation differs from those governed by Art 122 where a party did intend to observe a time limit but failed to do so due to objective obstacles.
In the case in hand, the applicant/proprietor was always in a position to file an appeal in due time, to have the error rectified by a board of appeal. The only reason why the applicant/proprietor did not file an appeal was because it did not recognise the need to do so. Yet if re-establishment were to be allowed in this situation, the time limits under Art 108 would be unduly circumvented.
Consequently, the board found that the applicant’s/proprietor’s request for re-establishment of rights is also inadmissible on the ground that the applicant/proprietor was not unable to observe the time limits under Art 108.
The question of whether the applicant/proprietor complied with the “all due care” criterion under Art 122(1) EPC was thus irrelevant.
Comments
The applicant is fully responsible for any consequences of approving the text submitted by the ED in the communication under R 71(3). Whether an amendment of the application was suggested or not by the ED becomes irrelevant in post-grant procedures like an opposition. Not only in view of amendments of the patent carried out in the communication under R 71(3) by the ED, applicants are well advised to check the whole application before approving the text intended to grant.
An appeal (actually very rare) against the ED’s decision to grant can be filed, but only within two/four months from the notification of the grant.
The decision is interesting in that it shows that re-establishment is excluded if the obstacle relied on by the party does not relate to an error in the carrying out of the party’s actual intention to meet a specific time limit, but only to a previous error as to motive in relation to the intention to use a legal remedy entailing a time limit. In other words, the propietor did not see upon receipt of the notification of grant that the drawings were missing and an appeal should be filed at this moment.
It could be argued that the ED did not work properly, as neither the second member nor the chair of the ED noticed the absence of the drawings in the communication under R 71(3). The last person able to spot the absence of the drawings would have been the formalities officer sending out the communication under R 71(3). But the latter is only acting upon instructions from the ED.
However, already in the first communication of the ED after entry in the regional phase before the EPO, the examiner in charge did not mention the drawings, but only the amended description and the amended claims both filed when entering the regional phase.
The applicant can also be considered to have been aware early enough that somehow the drawings had “disappeared”.
T 178/23
https://www.epo.org/en/boards-of-appeal/decisions/t230178eu1
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