EP 3 205 139 A1 relates to a network testing for telecommunications.
Brief outline of the case
The ED rejected the applicant’s request for re-establishment of rights in respect of the time limit for paying the renewal fee for the fourth year and the additional fee, and deemed the patent application to be withdrawn.
The ED considered the request to be inadmissible because it had been filed late, and not allowable because the applicant had failed to observe all due care required by the circumstances.
The applicant appealed the ED’s decision.
The board confirmed the rejection of the request for reestablishment and the refusal of the application.
The applicant’s point of view
The applicant argued that, in the present case, the person responsible for the application vis-à-vis the EPO should be the “IP person” of the applicant. As a consequence, this person’s awareness should be decisive, and not that of the professional representative.
According to the applicant, the present circumstances illustrate the problems associated with a “hybrid” system, where the representative is not fully responsible for all actions relating to the application, but where other persons, in this case the in-house IP person, are responsible for the patent portfolio and for managing the payment of renewal fees.
In addition, the authorised firm of representatives was specifically told that they were not responsible for paying the renewal fees. Since the professional representative was not responsible for the payment, the representative’s awareness was not decisive. Instead, the awareness of the person with actual responsibility for the specific task, in this case the payment of renewal fees, should be decisive. This was the IP person.
The applicant also referred to T 942/12. In that decision, it was held that, where a European representative has been expressly instructed that they are not obliged to monitor the payment of renewal fees, the duty of due care does not require them to nevertheless do so, in particular because it cannot be expected that the European representative will monitor the payment of renewal fees at their own expense and because the client may have had good reasons for giving such instructions, e.g. to avoid receiving reminders from different sources which would lead to additional work and expense.
The board’s decision
The request for re-establishment of rights under Art 122(1) was not filed within two months of the removal of the cause of non-compliance within the meaning of R136(1), first sentence.
The removal of the cause of non-compliance is to be established on a purely factual basis. It occurs, as a rule, on the date on which the person responsible for the application vis-à-vis the EPO becomes aware of the fact that a time limit has not been observed.
This awareness is typically the result of the actual receipt of a communication under R 112(1) noting a loss of rights.
For the board, the question of who is responsible for which task within the applicant’s sphere of responsibility cannot be decisive for the issue of determining the point in time when the cause of non-compliance with the period was removed.
Legal certainty requires that the starting point can be clearly and objectively determined and it cannot depend on the circumstances of how the appellant has organised its tasks and representation, whether internally or with the help of external providers.
The present board agreed with the current case law on this matter, which is as follows.
The board referred to J 1/20, Reasons 2.2. Where a professional representative is appointed, it is that representative who is the “person responsible for the application vis-à-vis the EPO“. The representative is the person whose awareness is relevant for assessing when the cause of non-compliance with the period was removed, irrespective of whether a third party other than the representative is responsible for the payment of fee.
The board held that T 942/12 is not relevant to the question at hand. The findings in said decision concern solely the question of whether the representative exercised “all due care“, i.e. the merits of the request for re-establishment of rights. That is not at issue here. The present case deals exclusively with the question of whose awareness was relevant for the removal of the cause of non-compliance. This question is independent of the question of whether all due care was taken.
The professional representative received the notice of loss of rights on 04.06.2019. The removal of the cause of non-compliance with the period thus occurred on that date.
The request for re-establishment of rights was filed on 10.09.2019 and, therefore, it was not filed within the two-month time limit laid down in R 136(1), first sentence.
Comments
The present decision is interesting in that it makes clear that a distinction has to be made
- whether “all due care” was exercised and
- who is responsible vis-à-vis the EPO.
Where a professional representative is appointed, it is that representative who is the “person responsible for the application vis-à-vis the EPO“.
An instruction that the professional representative is not in charge of all renewal matters is not a reason for the cause of non-compliance to persist despite the appointed professional representative’s actual awareness of the non-compliance.
That in matters of payment of renewal fees, applicants use a hybrid system when it comes to the payment of renewal fees is not infrequent, be it only for costs reasons, the present decision should be a warning.
The principle set out in the present decision appears applicable to the compliance to any time limit set in the EPC, its Implementing Regulations, or by the EPO and is not limited to the time limit for the payment of the renewal fee.
As far as time limits are concerned, it is the appointed representative which is responsible for adherence to the time limits. This is actually independent of the fact whether the representative is a professional representative according to Art 134(1), a legal practitioner under Art 134(8) or even an employee of the applicant/proprietor under Art 133(3).
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