J 0041/92 (Restitutio) 27-10-1993

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and therefore is admissible.

2. The first issue to be decided concerns the admissibility of the application for re-establishment of rights.

Pursuant to Article 122(2) EPC, an application for re- establishment of rights must be filed in writing within two months from the removal of the cause of non- compliance with the time limit. It shall not be deemed to be filed until after the fee for re-establishment of rights has been paid (Article 122(3) EPC).

2.1 The Legal Board of Appeal agrees with the first instance that the letter of the authorized representative, dated 2 January 1992, was clearly recognisable as an application for re-establishment of rights, even if it was not explicitly identified as such.

2.2 The first instance, however, considered this application to be inadmissible on the ground that the fee for re- establishment was not paid within the two month period provided for in Article 122(2) EPC. The two month period under Article 122(2) EPC is calculated from the moment the cause of non-compliance with the time limit is removed, i.e. normally, from the date on which the person responsible for the application becomes aware of the fact that a time limit has not been observed (cf. e.g. decision J 27/90 of the Legal Board of Appeal, OJ 1993, 422). This date, in the present case, is the date on which the authorised representative received the communication pursuant to Rule 69(1) EPC, i.e. 16 November 1991 at the latest. Since the representative is considered to be entitled to undertake procedural steps in the interest of the applicant, the alleged absence of the Appellant, at that time, is not important. Incidentally, there was no need for any instructions to be given by the Appellant, since the renewal fees had already been paid. The two month period of Article 122(2) EPC, therefore, ended on Monday, 17 January 1992.

2.3 The application for re-establishment was received at the EPO on 3 January 1992, i.e. 14 days before the end of the two month period under Article 122(2) EPC. The application, however, gave no indication that the representative intended to pay the fee for re- establishment. Instead, the representative asked the EPO to let her know "whether any fine or additional fee ought to be paid". This made it quite clear to the Receiving Section that the professional representative was not aware that a fee for re-establishment had to be paid. Taking into account that there were still 14 days until the end of the two month period, the deficiency could have easily been corrected, if the EPO, in accordance with the representative's request, had issued a warning.

2.4 In the Board's view, the users of the EPC cannot, by merely asking the EPO to warn them of any deficiency that might arise in the course of the proceedings, shift their own responsability for complying with the provisions of the Convention to the EPO. If, however, a deficiency is readily identifiable by the EPO and can easily be corrected within the time limit, the principle of good faith requires the EPO to issue a warning (following the decisions T 14/89, OJ EPO 1990, 432, and J 13/90, published in the special edition of the Official Journal 1993, page 59). The Legal Board of Appeal, therefore, accepts that the representative, in the circumstances of the present case, could legitimately have expected that, in response to her express request, the EPO would have warned her of the outstanding fee for re-establishment.

2.5 If a warning can be expected but is not issued to the applicant within the time limit to be observed, the EPO must set a period in which the applicant can correct the deficiency and perform the procedural acts in time (cf. decision J 13/90). This is no longer necessary in the present case since, after having been informed of the outstanding fee for re-establishment of rights by the communication of 10 February 1992, the Appellant paid the fee within the time limit set by this communication for filing observations.

2.6 For the above reasons, the request for re-establishment is, contrary to the contested decision, considered to be admissible.

3. As a result, the Legal Board of Appeal could remit the case to the department of first instance for examination of the request for re-establishment on the merits. The Board, however, in exercising its discretionary power under Article 111(1) EPC, has decided not to do so for the following reasons. The first instance, in its decision of 19 June 1992, confined itself to a brief discussion of the issue whether, pursuant to Article 122(1) EPC, all due care required by the circumstances had been taken (cf. page 5 of the decision of 19 June 1992). It, nevertheless, emerges from the communication of 10 February 1992, that the Appellant was given sufficient opportunity to comment on this issue. Moreover, it follows from the file that the first instance duly considered the Appellant's arguments but came to the conclusion that they were not sufficiently substantiated. The Board is, therefore, satisfied that the Appellant was given the opportunity to argue his case before two instances.

4. Hence, the Legal Board of Appeal, hereafter, considers the issue whether all the due care required by the circumstances had been taken to comply with the time limit for the payment of the renewal fee for the third year (Article 122(1) EPC).

4.1 According to the representative's statements, the non- observance of the time limit was due to the combination of two events: the frequent absences of the Appellant and the severe illness of the professional representative between June and October 1991.

4.2 With regard to the absences of the Appellant, no detailed information or proof was submitted. The Appellant, obviously, had to do a lot of business- related travelling. His trips were an ordinary part of his occupation. The frequent absences did not, therefore, occur surprisingly. In these circumstances, a diligent and careful applicant may be expected to make arrangements so that prolonged interruptions in communication with the authorised representative can be avoided. Alternatively, the applicant would have to instruct the representative to take, until further notice, every procedural step necessary in order to maintain his patent application. No evidence was submitted showing that any of these measures was taken by the Appellant.

4.3 Even if such measures had been taken, the failure to comply with the time limit would hardly have been avoided since the representative, due to her illness, did not even try to contact the Appellant within the critical three months before 2 October 1991. Hence, it appears to be unimportant whether or not the Appellant could have been contacted at that time.

4.4 In the Board's view, the illness of the professional representative is, therefore, the actual cause for the non-observance of the time limit of 2 October 1991. The professional representative was forced to interrupt her professional activities from June until the beginning of October 1991. On inquiry by the Board she stated that, because she was a professional in practice alone, nobody had been available to handle the time monitoring system or to comply with the time limits during her illness. Therefore, the issue arises, whether, in view of the representative's illness, all due care had been taken to avoid a loss of rights during the critical period. According to the jurisprudence of the Boards of Appeal, it must normally be expected that, in a large firm, where a considerable number of deadlines have to be monitored, at least an effective system of staff substitution in the case of illness and for absences in general is in operation (decision T 324/90; OJ 1993, 33). The Board concedes that, in the case of a professional working alone and having a much smaller number of time limits to comply with, less strict standards, in this respect, may be applied. However, a careful and diligent professional representative must, in any case, be expected to take into account that he or she might fall ill and be prevented, for some time, from taking care of time limits. Therefore, if a professional representative runs a one person office, appropriate provisions should be made so that, in the case of an absence through illness, the observance of time limits can be ensured with the help of other persons. If there is no substitute or assistant at the representative's office, cooperation with colleagues or with a professional association could e.g. be sought for this purpose.

In the present case, it is admitted that no precautions were taken to ensure the observance of time limits during the representative's illness. The time monitoring system was left to itself for about three months. Even though the professional representative was only handling a few European patent applications she had to reckon with the possibility of time limits falling within this period.

4.5 From the foregoing, the Legal Board of Appeal must conclude that, in the circumstances of the present case, all due care was taken neither by the Appellant nor by his professional representative. The request for re- establishment of rights is, therefore, refused.