J 0013/93 (Re-establishment) 05-07-1995

I. The European Patent application No. 87 310 640.5, filed on 3 December 1987 and claiming priority from two German applications dated 22 December 1986 and 12 June 1987 respectively, was published on 20 July 1988 (publication No. 0 274 853).

II. By registered letter dated 20 April 1990, the EPO sent the applicant a communication pursuant to Article 96(2) and Rule 51(2) EPC, indicating that the application did not meet the requirements of the EPC and giving the applicant a period of four months from the date of notification of the communication in which to file observations and remedy the deficiencies. The applicant contends that this communication was never received.

III. On 5 October 1990, the EPO sent a further communication by registered mail to the applicant informing him that the application had been deemed withdrawn for failure to reply to the communication of 20 April 1990.

IV. On 10 January 1991, not having had any reply to its communication of 5 October 1990, the EPO closed the procedure in respect of the application with legal effect from 31 August 1990. The fourth renewal fee, which had been paid on 11 December 1990, was not refunded.

V. On 9 December 1991, the fifth renewal fee was paid; the EPO refunded the fee on 10 January 1992.

VI. By letter filed on 23 March 1992, the applicant's representative applied for re-establishment of rights and paid the respective fee. At the same time, the applicant filed a reply to the invitation to file observations contained in the communication of 20 April 1990 from the Examining Division. In the request for re- establishment, the applicant submitted that the failure to reply in due time to the communication dated 20 April 1990 was due to the following circumstances.

There was no record that this particular communication had ever been received by the applicant's representative. At the time, the representative in charge of the case had been Mr Geldard. He had retired on 30 April 1991, since when Mr Orr had taken over the case. The present application was one of two applications filed by sister companies, this being filed by the applicant, J I Case GmbH and the other by J I Case Company (no. 88 301 717.0). The latter application had been expressly abandoned and the file at the representative's office closed on 8 December 1988. It now was apparent that the two communications from the EPO dated 20 April 1990 and 5 October 1990 bore the representative's file reference for the abandoned application instead of that for the present application. According to the evidence of Mr Geldard, the communication of 5 October 1990 was received and marked for filing with communications concerning abandoned cases, it being understood to relate to the abandoned application.

It was not therefore until the repayment of the fifth renewal fee was received on 5 February 1995, that Mr Orr realised that anything was amiss with the present application. After he took over the case in May 1991, the file had been routinely inspected at intervals to check that no examination report or other communication from the EPO remained unanswered. Following a file inspection on 8 July 1991, when it was noted that the latest document on file was an authorisation to pay the examination fee on 10 January 1989, it was assumed the first examination report had not yet issued, the period of two and a half years since payment of the fee not being thought to be an excessive or unusual delay such as to cause enquiry to be made at the EPO. The next routine file inspection had been set therefore in computer records to take place on 20 July 1992.

As soon as the repayment of the fifth-year renewal fee had been brought to Mr Orr's attention on 5 February 1992, he made enquiries at the EPO and was duly supplied with a copy of the communication dated 20 April 1990 on 6. February 1992. The applicant submitted that this date represented the first actual notification of the examiner's report to the applicant and represented the date of the removal of the cause of non-compliance with the time limit for reply thereto, within the meaning of Article 122 (2). The request for re-establishment had been filed within two months of that date together with the reply to the examiner's report, so that the omitted act had also been completed within the two months period as required likewise by Article 122 (2). Evidence was also supplied concerning the efficiency of the systems operating at all times in the offices of the applicant's representatives and the due care taken by them in relation to this case and generally.

The applicant's representative argued alternatively that the delay in filing a request for re-establishment of rights had been due to the failure of the EPO to refund the fourth-year renewal fee. Had it done so, the facts of the case would have come to light one year earlier and steps would have been taken to file the request in time.

The applicant's representative subsequently on 19 February 1993 wrote to the EPO concerning the uncertainty whether the examination report of 20 April 1990 had ever been received at its office and asked the EPO if it could confirm that the letter had been received in view of the fact that it had been despatched by registered mail. The EPO responded on 4 March 1993, stating that it was no longer possible to initiate an enquiry with the postal authorities as almost three years had elapsed since the despatch of the communication in question.

VII. By decision dated 30 April 1993, the Formalities Section of the Examining Division held that the application for re-establishment of rights was inadmissible because it had been filed outside the period of one year immediately following the expiry of the unobserved time limit provided for by Article 122(2), third sentence. According to the decision, the unobserved time limit in question was the deadline for responding to the communication dated 5 October 1990 (effective date 15. October 1990) containing the notification that the application had been deemed withdrawn, i.e. 17 December 1990 (15 December being a Saturday). Moreover, the Examining Division stated that, even if the request for re-establishment had been admissible, it would not have been allowed because not all the due care required by the circumstances had been taken by the applicant's representative. The failure of the EPO to refund the fourth renewal fee did not affect that situation.

VIII. On 12 June 1993, the applicant filed a notice of appeal against the decision of the Examining Division. The appeal fee was paid on 22 June 1993 and the statement of grounds of appeal was filed on 6 September 1993.

IX. In the grounds of appeal, the appellant argued essentially as follows:

The period for replying to the examiner's report dated 20. April 1990 did not begin to run until 6 February 1992, the date when a copy thereof had been faxed to the representative by the EPO and he became aware of the cause of non-compliance with the time limit for the first time. The application for re-establishment had therefore been made in time and the steps taken by the EPO leading to the closure of the application in August 1990 should be treated as a nullity.

The decision under appeal proceeded on the assumption that the examiner's report was in fact notified to the appellant's representative on or about its effective date (30 August 1990). However, there was no evidence that the report had in fact been received at the time. On the contrary, the appellant had submitted evidence to show that the communication would appear not to have been received. The appellant submitted therefore that it could not be criticised for failing to reply to a document until it was shown that it had actually received the communication in question, referring to Rule 83 (2) and J 15/84 of 4 June 1985 (EPOR 1979-1985 A 226).

Alternatively, the appellant argued that, even if the communication had been received, which was disputed, it was likely that it would have been allocated to the wrong file because the EPO had used the incorrect reference number. It was submitted, therefore, that a communication with a wrong reference number was misleading and should be treated as void, relying on J 2/87 (OJ EPO 1988, 330), J 3/87 (OJ EPO 1989, 3) and J 1/89 (OJ EPO 1992, 17).

The appellant argued also that the subsequent communication dated 5 October 1990 should be treated as a nullity in view of the fact that the earlier communication to which it related had not been received. Moreover, the notice of 5 October also bore an incorrect reference resulting in it having been misfiled. It was submitted that a communication with a wrong reference was misleading and therefore void.

The appellant also submitted that, if contrary to its submissions, the Board were to accept the Examining Division's finding that the request for re-establishment was inadmissible because it should have been filed within one year of the deadline for replying to the communication of 5 October 1990 (ie by 17 December 1991), then the appellant relied on the failure of the EPO to refund the fourth-year annuity fee paid on 11. December 1990. Had that refund been made early in 1991, it would have been clear to the appellant that something had gone seriously wrong and he would have taken steps, as he had done following repayment of the fifth-year renewal fee, to remedy the situation. Accordingly, the application for re-establishment would have been made twelve months earlier and been in time. It was submitted in this connection that the appellant should not be prejudiced by a default of the EPO.