This appeal was against the refusal of a request for re-establishment by the Examining Division (ED).
On August 30, 2008, the ED had sent a communication pursuant to R 71(3) inviting the applicant to pay the grant fee and to file the translations of the claims. As the applicant did not react, the ED, on March 16, 2009, sent a communication stating that the application was deemed to be withdrawn.
On January 29, 2010, the representative of the applicant requested re-establishment into the time limit under R 71(3) and completed the omitted acts. The formalities agent called him and explained that re-establishment was excluded because further processing was available. On February 10, 2010, the representative then requested further processing. This request was refused.
The applicant then filed an appeal.
The applicant explained that there had been an error by an experienced employee of its representative. She had received the file because another patent attorney working for the applicant had requested not to receive any reminders for annuities payments any more. Because of another letter contained in the file, the employee had drawn the erroneous conclusion that this other law firm would take over the representation and had closed the file without consulting the representative. As a matter of fact, she had acted as if the attorney had already checked the file, as usual.
The applicant went on to explain that communications relating to closed files were only added to the file wrapper, without further inspection. They were not shown to the representative in charge of the file, nor were they transmitted to the applicant, because it was assumed that the client did not wish to pursue the proceedings; once an applicant had decided to let rights go abandoned, it did not wish to receive further communications. Why exactly the file had been closed was not questioned when communications were received because the attorney had examined this matter when closing the file. Only letters sent by clients were transmitted to the attorney in charge.
Because of the erroneous indication on the file wrapper (that the file was closed), it was believed that nothing had to be done. The communications under R 71(3) and the notification of loss of rights had simply been filed and had not been transmitted to the representative. It was only after receipt of the letter of the applicant that the error was discovered.
As you might have guessed, the Board did not allow the request. Here are the reasons:
*** Translation of the German original ***
[1] The appeal is directed at the re-establishment of the legal situation that would have occurred if the time limit for further processing of the European patent application […], which had been triggered by the communication pursuant to R 112(1) of March 16, 2009, had been met. The basis for this is the request for re-establishment of January 29, 2010, which had been amended, together with the submission of February 10, 2010, in that re-establishment into the time limit for requesting further processing was requested rather than re-establishment into the time limit pursuant to R 71(3) (for which re-establishment is not available). On the very same day, the omitted act was carried out by paying the fee for further processing. The Board approves the formalities officer who has interpreted and treated the submission of January 29, 2010, together with the letter dated February 10, 2010, as a request for re-establishment into the time limit for requesting further processing.
[2] According to R 136(3) all re-establishment of rights shall be ruled out in respect of any period for which further processing under A 121 is available and in respect of the period for requesting re-establishment of rights. Conversely, re-establishment is available for time limits that are excluded from further processing, unless re-establishment into this time limit is explicitly excluded. As, pursuant to A 121(4), inter alia, the time limit for requesting further processing is excluded from further processing, it follows e contrario from R 136(3) that re-establishment into the time limit for requesting further processing is admissible. The travaux préparatoires to the revision of the EPC confirm this interpretation. As can be seen from the basic proposition for a revision of the EPC of October 13, 2000 (MR/2/00, Number 6, A 122), the lawmaker wanted to keep the possibility of re-establishment into the time limit for further processing, which had been acknowledged by the case law (J 12/92 [3.2.2]; J 29/94 [3], J 902/87 [2.2-4]). Therefore, the request for re-establishment of the appellant concerns a time limit for which this legal remedy is available. As a consequence, the Board has not challenged the admissibility of the request for re-establishment of January 29, 2010, together with the letter of February 10, 2010, from this point of view.
[3] However, it had to be examined whether the time limit for filing the request for re-establishment into the time limit for requesting further processing, i.e. within two months of the removal of the cause of non-compliance (R 136(1)) had been complied with.
[4] The removal of the cause of non-compliance is a fact that has to be determined taking into account the circumstances of the particular case (J 27/90 [2.4]). In the present case, the appellant was of the opinion that the cause of non-compliance consisted in the erroneous conviction that nothing had to be done for patent application 02 797 893.1. The reason was that an employee of the law firm (Kanzlei) of the representative had marked as completed (Erledigungsvermerk) and brought to the room in which completed files were stored.
[5] According to the established case law of the Boards of appeal, when a time limit has been missed because of an error regarding facts, the cause of non-compliance is removed on the day on which the person in charge of the patent application (i.e. the proprietor of the right or its authorised representative) should have noted the error. As a rule, this is the day on which he/she receives a communication pursuant to R 112(1) because – provided there are no exceptional circumstances – one may expect that as a consequence of this communication, the person in charge is aware of the fact that the time limit has been missed and has to notice the error. However, this does not exclude that other events may lead to the discovery of the error and trigger the time limit for requesting re-establishment. In individual cases, it has to be examined whether one has to assume a removal of the cause of non-compliance because the responsible person has not discovered (erkannt) the error, as a consequence of a lack of due care for which he/she is to be held responsible, but would necessarily have discovered it if he/she had taken all due care (J 27/90 [2.4]).
[6] In the present case it is decisive for the question whether the time limit for requesting re-establishment into the time limit for further processing, i.e. within two months of the removal of the cause of non-compliance (R 136(1), first sentence), has been complied with, whether the representative would necessarily have discovered the error if he had taken all due care required by the circumstances. It may be left open whether all due care has been taken regarding the closure (Schließung) of the file and whether the way in which the employee of the law firm acted may not be attributed to the representative because it was a single error of a well-trained and appropriately supervised employee, because this question concerns the allowability of the request for re-establishment, which did not have to be dealt with in view of the outcome of the proceedings.
[7] The appellant points out that the erroneous closure of the file did not have to be noticed, neither when the notification of loss of rights of March 16, 2009, was received, nor when the communication pursuant to R 71(3) of September 29, 2008 [was received]. These communications had not received any attention because of the erroneous marking that the file was completed. In compliance with the processes implemented in the law firm, as soon as these communications had been received, they were identified, by the employees responsible for the incoming letters, as belonging to a file that was completed and, as a consequence, deposited in the archived file wrapper without having been presented to a patent attorney. This way of proceeding was usual in law firms. It was not necessary to present official communications related to closed files because it could be expected that the client was not interested in maintaining the rights any more. In particular, this was the case when there were written instructions on behalf of the client according to which the client did not wish to maintain the rights. In such a situation, the fact that an attorney noticed the official notification would not make any difference in view of the closure of the file and the order of the client. The same was true when the attorney decided to close the file because he had not received requested instructions of the client in spite of repeated requests. Also, when there was a change of representative, an attorney gave the clearance for the administrative completion of the file only when the process of transmission was completely terminated. As the completion (Erledigung) of a file always had to be agreed upon beforehand by the attorney in charge, the representative could rely on the fact that when a file was marked as completed, no further examination by a patent attorney was required. Official communications concerning closed files were not transmitted to the clients either because the latter did not wish [to receive such letters] and many law firms handled this situation in the same way.
[8] The arguments of the appellant are not persuasive. The Board is of the opinion that the duty of due care required of a patent attorney is not satisfied by an organisation of procedures where official communications regarding closed files, which are received at a later stage by registered mail are filed in the file wrapper without any examination as to their contents and are not transferred to the client either. This also holds true when the representative has fulfilled his duty of ascertaining the client’s will before the file is closed. Although in particular cases official notifications of loss of rights that are received after the closure of a file may correspond to legal consequences desired by the client, it is not acceptable to generalise this and to base the internal organisation of the work processes on it such that the contents of official communications is not even considered any more. As a matter of fact, the organisation [of processes] based on [such a view] cannot do justice to the great variety of cases and in fact hinders errors that might be committed during the closure of the file from being discovered.
[9] This is also true for the case – which has been expressly referred to by the appellant but which does not correspond to the present case – where the representative has received the order to let the right go abandoned by non-payment of the renewal fees. If, for instance, a communication pursuant to R 71(3) is received afterwards, it is not acceptable to assume without any verification that the will of the client to abandon the right, which is expressed in its earlier instruction, has remained unchanged. It cannot be excluded in such a case that the applicant had committed an error or that it has made up its mind and, for example, has given instructions to pay the renewal fees. This is true in particular when the payment of the renewal fees is made by a third company and not by the representative. If there are internal instructions in the law firm not to present an official communication pursuant to R 71(3) [which has been received] after the file has been closed, to the representative and not to transmit it to the client either, then it is not possible to verify the intention of the client. The withholding of official communications deprives the client of the possibility to investigate a possible error, to become aware of it and to act accordingly in order to avoid a loss of rights. Moreover, it is hindered from reconsidering the instructions it may have given, for example in view of the reference to the legal remedy of further processing. The same reasoning applies for official communications concerning a loss of rights, to which the appellant mostly referred. The instruction not to examine official communications after a file had been closed and to withhold them deprives the representative of all means of control that would allow to discover without undue effort a possible discrepancy that occurred when the file was closed.
[10] As far as the facts are concerned, it has to be noted that according to the submissions of the appellant the fact that the file of European patent application 02 797 893.1 was closed was not due to an instruction not to pay the renewal fee. Rather, the file was marked as completed in view of a change of representative. As explained by the representative of the appellant, in such cases the law firm awaits the publication (Anzeige) of the change of representation before the file is closed under the supervision of a patent attorney. Later on, however, such a file is treated in the very same way as files that have been closed for a different reason. In this case also the employee who is responsible for incoming letters files the official communication in the file wrapper in the archive without previously presenting it to the representative. This way of organising internal work processes is also to be considered as a fault on behalf of the representative in the context of a transfer of representation. First, in the case of a change of representation, which, in view of an orderly treatment, necessarily leads to a situation of overlapping responsibilities, it is not appropriate to delimit the individual responsibilities [of each of the representatives] according to formal aspects such as the access to the publication of the transfer (see T 338/98 [8]). Secondly, official communications that are received afterwards necessarily have to raise suspicions because they suggest that errors have been committed in the treatment of the transfer of representation. In the present case, the representative would have found surprising the communication pursuant to R 71(3), which arrived about 15 months after the file had been closed, and the notification of loss of rights of March 16, 2009, which was received another 6 months later, if he had become aware of their existence. As far as the communication pursuant to R 71(3) was concerned, there was an obvious discrepancy with respect to the fact that the file had been marked as completed: that an application that has been found to be allowable is not to be pursued should not have been presumed without verification. Moreover, the presumption of a change of representative could not have explained the receipt of the communication either, and this also applies to the notification of loss of rights. All in all, these communications should have triggered a verification of the legal situation. Because of the instruction not to transmit official communication concerning closed files to the client, the representative deprived the appellant or its patent attorney who allegedly had taken over representation, respectively, of the information on the on-going proceedings contained in these communications and also deprived them of the opportunity of becoming aware of an oversight or a misunderstanding.
[11] For the above reasons the Board comes to the conclusion that the representative, had he taken all due care, would have discovered the error when he received the communication pursuant to R 71(3) of September 29, 2008. Therefore, it is this moment that is relevant for the removal for the cause of non-compliance and the start of the time limit for filing a request pursuant to R 136(1), first sentence.
[12] However, it has to be noted in the present case that what was requested is re-establishment into the time limit for requesting further processing. According to R 135(1), further processing under A 121(1) shall be requested by payment of the prescribed fee within two months of the communication concerning either the failure to observe a time limit or a loss of rights. In the present case what is relevant for the time limit for filing a request for further processing is the notification of the loss or rights, which was posted on March 16, 2009. Therefore, it is obvious that the time limit for requesting further processing ended after the moment of removal of the cause of non-compliance, because the representative should have become aware of the error already when receiving the official communication of September 29, 2008 […]. It is a fact that the error continued to exist after that, but the representative was not prevented – within the legal meaning of A 122 – from requesting further processing in due time any more. The appellant has not pointed out any further cause of non-compliance hindering it from filing a request for further processing in due time.
[13] The existence of an obstacle that is causally related to the failure to meet a time limit is a procedural requirement or a requirement for admissibility (Verfahrens- bzw. Sachurteilsvoraussetzung) and has to be checked when the admissibility of the re-establishment is to be examined. It cannot make any difference for such an attribution (Zuordnung) whether in a particular case the reason for there not being any obstacle hindering [a party] from meeting a time limit within the meaning of A 122 at the moment when the missed time limit has expired is that the invoked circumstances did in fact not make it impossible to carry out the missed procedural actions in due time, for instance when a party knowingly let a time limit expire (T 413/91 [4]) or because one has to conclude, for legal reasons, that there was no obstacle, as in the present case, where an error because of which a procedural action that had to be made within a time limit was not performed should have been discovered if all due care had been taken. The fact that this [aspect] is part of the procedural requirements does not mean that considerations of due care are not appropriate because such considerations are inherent to the examination of the procedural requirement of whether the time limit for requesting re-establishment into the time limit for further processing, i.e. within two months of the removal of the cause of non-compliance (R 136(1), first sentence) was met when the party invokes an error as the cause of non-compliance. If the cause of non-compliance [by the requesting party] in its request for re-establishment, which consists in an error, is eliminated as a consequence of a violation of the duty of due care that has to be attributed to the responsible person, then this elimination leads to the request for re-establishment being inadmissible. For this reason alone the request for re-establishment cannot be allowed. There is no need for further justifications. […]
The appeal is dismissed.
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