J 0002/98 27-11-2002

1. The appeal is admissible. Indeed, both the notice of appeal, filed on 22 August 1997, and the statement of grounds, filed on 24 November 1997, are to be considered as filed in due time, since the decision under appeal has been notified pursuant to Rule 80 EPC (public notification) by means of publication in the European Patent Bulletin No. 26/97 of 25 June 1997. Since, pursuant to Rule 80(2) EPC and according to the Announcement by the President of the EPO of 11 January 1980 concerning public notification, the decision has to be deemed to have been notified one month after the date of publication in the European Patent Bulletin, the terms provided for in Article 108 EPC for the filing of the notice of appeal (two months) and the statement of grounds (four months) start running from 25. July 1997. The same applies for the appeal fee which has been paid on 22 August 1997.

2. The first issue to be decided upon is the appellant's main request that the Board declare that the proceedings had been interrupted because of legal incapacity of the former representative and that, accordingly, the 5th renewal fee and the additional fee had been paid in due time.

3. The appellant has supported this request maintaining that the behaviour of Mr H. during the relevant period, characterized by a considerable number of omissions and procedural failures, shows that he was in a situation of legal incapacity deriving from health problems (in particular of psychic origin). Medical certificates have been also filed in order to give evidence of said health problems. Finally documents have been filed showing that he was cancelled as authorized German patent attorney.

In particular, as to the first submission above the appellant refers to the number of failures characterizing the former representative's professional activity starting from the beginning of the year 1996, failures concerning not only the application in suit, but also other cases of the same client. In particular, with reference to the application under discussion: Mr H. omitted to pay the renewal fee for the 5th year notwithstanding the fact that he had been specifically instructed to do so by the Norwegian representative of the applicant; he omitted to answer in due time (within four months after the receipt of the communication) to the letter of the EPO sent pursuant to Rule 51(4) EPC referring to the approval of the text of the application, nor did he inform the Norwegian representative of the applicant thereof; he let the time limit provided for in Article 86(3) EPC (for the case of late payment of the renewal fee) elapse. Moreover with letter to the EPO sent on 8 November 1996 the representative himself admitted that starting from the end of the year 1995, due to increasing pain in the abdominal region, he was not able to perform his professional activity "wie erforderlich". With reference to the other cases of the same client, the appellant submitted that an investigation concerning these cases has shown that over eleven cases a total loss of rights had occurred for five of them; moreover also in the remaining six cases the former representative had failed to observe several time limits.

With reference to the allegation that the former representative suffered from health problems and in particular from psychic problems the appellant filed copies of a medical certificate dated 30 January 1997 signed by an internist and, following a communication of the Board, a second certificate dated 10 September 1999 signed by a specialist in neurology and psychiatry.

4. Pursuant to Rule 90(1)(c) EPC proceedings before the European Patent Office shall be interrupted ... in the event of ... legal incapacity of the representative of an applicant for or proprietor of a European patent ...

According to the EPO Boards of Appeal case-law, legal incapacity referred to by this provision refers to the representative's incapacity to carry out professional work before the EPO on behalf of a client. Moreover, since there is a unified European profession of representatives before the EPO, there has to be a uniform standard of judging such legal incapacity in order to avoid differences in the application of Rule 90(1)(c) EPC depending on the nationality or domicile of the representative (J../85 OJ EPO 1985, 159). According to this case-law a reasonable basis for decisions in the matter by the EPO is given by testing if the representative concerned was in a fit mental state to do the work required of him at the material time or if he lacked the capacity to make rational decisions and to take necessary actions. In this context a reliable medical opinion is necessary, as well as all available reliable information about the representative's conduct at the material time. The mental state from which legal incapacity of the representative can be derived has to be such that the representative is so totally or nearly totally unable to take rational decisions that all his professional duties, and not just an isolated case, are affected by his mental state (J 7/99 unpublished). Said legal incapacity must be of a persistent nature (J../86 OJ 1987, 528); moreover, it has been decided (J ../87 OJ 1988, 323) that for the purpose of Rule 90(1)(c) EPC the EPO must establish whether and if so when the representative was legally incapable, and in the light of its findings specify the time limits which may have been interrupted. The latter decision also stated that EPO must apply Rule 90 EPC of its own motion.

5. The Board agrees with the principles as set out in the above quoted cases. Moreover it has to be pointed out that, since the declaration of legal incapacity of a patent representative has very serious consequences for his professional life, it needs to be based on factual circumstances and not on mere conjectures.

6. The application of the above principles to the facts of this case leads to the conclusion that the applicant's main request cannot be granted.

As can clearly be inferred from the summary of facts, the period to be considered as relevant for the request of interruption begins in January 1996 (the time limit for the payment of the renewal fee for the 5th year expired on 31 January 1996). Even if the appellant has not specified the termination date of such interruption, it seems appropriate to fix this term in the month of October 1996, since in this month (more precisely on 10 October 1996) the former representative paid the above quoted renewal fee and the additional fee. Indeed, since, according to the appellant's request, both the renewal fee and the additional fee have to be considered as paid in due time because the proceedings were interrupted due to the representative's legal incapacity, it would be illogical not to infer that the interruption ceased at the time the payment was made. Of course the previous and subsequent behaviour of the representative can be taken into account too, but only for the purpose of the assessment of his legal incapacity during the above specified period.

7. According to the case-law quoted under paragraph 4, a medical opinion is necessary in order to assess the representative's mental state. In the case in suit the medical certificates cannot be considered as a sufficient evidence of the alleged mental sickness of Mr H. in the period under consideration. The Board agrees wholly with the statement in J../85 according to which, since it may be difficult to determine how disturbed the mind of a person was at any particular date if he was not under medical care, it is necessary to consider very carefully all available reliable information about his conduct at the time and it may be helpful, though it should not be regarded as conclusive, if a medical opinion given at a later date takes into account such information. However it has to be pointed out that in the case in suit the first medical certificate, dated 30 January 1997, shows only that the patient was "depressive", "verzweifelt" and "ohne jeden Antrieb". It can be inferred from this certificate that the mental status of the representative was not so seriously damaged, since the doctor (an internist) who visited the patient did not suggest that he go to a specialist (such as a psychiatrist) but invited him to learn and to practice "autogenes Training". The second medical certificate gives evidence of a serious mental illness ("schwere schizoide Persönlichkeitsstörung mit erheblicher Beeinträchtigung der Kritik- und Einsichtsfähigkeit bei reaktiv-depressiven Versagungzuständen und mangelnder Krankheit bedingter Selbsteinschätzung) and supports the conclusion of legal incapacity. However, it has to be pointed out that said medical certificate has been written in September 1999, and is based on an ambulant medical treatment started in August 1998. In the Board's opinion the temporal distance between the period considered in the certificate and the period relating to which the interruption of the proceeding has been requested is so great that that certificate cannot be treated as satisfactory evidence of mental illness during the relevant period in 1996. On the other hand, the first certificate above quoted can be relied on as showing that till the beginning of 1997 the mental condition of Mr H. was not seriously impaired.

8. Nor can the behaviour of the representative in his professional activity be considered as sufficient evidence of the alleged legal incapacity. Though it is true that a number of failures occurred in the period under consideration, it is also true that during the same period Mr H. was able to take adequate measures on some of the applications he dealt with for his client (see, for example, European application No. 95 ... where Mr H. paid the Examination fee on 21 March 1996, and German application No. P 39 ..., where he filed a request for examination on 1 April 1996) as can be inferred from the written evidence (Appendix III) submitted by the appellant. Moreover also with reference to the case in suit, he filed a request for restitutio in integrum (16 September 1996), a request for further processing under Article 121 EPC (23 October 1996) and completed the omitted act (approval of the text); furthermore he paid the fee for re-establishment of rights, the renewal fee for the 5th year and the additional fee as well as the fee for further processing (24 October 1996).

All these circumstances show that in the period under consideration the representative was not in the situation, considered as a necessary requirement for the request of interruption under Rule 90(1)(c) to be granted, that he was totally or nearly totally unable to take rational decisions related to his professional duties.

9. Nor, in the Board's view, can it be considered as evidence supporting the assumptions of the appellant that Mr H. has been cancelled as authorized German Patent Attorney by the President of the German Patent Office pursuant to Section 181(1) No. 3 of the German Patentanwaltsordnung. Said cancellation has taken effect starting only from 24 December 1998 and has no retroactive effect. That he is considered unfit to practice as a German Patent Attorney from 24 December 1998 onwards, cannot be taken as having any bearing on his being in a state of legal incapacity in 1996.

10. Therefore the main request of the appellant cannot be granted. The Board is aware that a different decision (J 5/99 unpublished) has been taken by the same Board, in a different composition, with reference to the same representative. However, since the different solution adopted derives only from the different evaluation of the evidence available and to be considered in the two cases, and not from a different interpretation of the law, no reason exists for a referral to the Enlarged Board of Appeal pursuant to Article 112 EPC.

11. With reference to the request for restitutio in integrum submitted by the appellant as auxiliary request, it has to be pointed out that the crucial question for deciding on the allowability of the request is whether or not the conduct of the appellant himself and/or of his representative throughout the whole relevant period amounted to the exercise of all due care required by the circumstances. Moreover, by all due care is meant all reasonable care, that is to say, the standard of care that a reasonably competent patentee/representative would employ in all relevant circumstances (see T 30/90).

12. Whereas as a general rule the negligence of a European professional representative will prevent a finding that all due care was taken, here the acts of Mr H. are not, in the Board's view, due to an isolated act of carelessness or negligence, but to his health condition, as emerging from the above quoted available evidence.

Indeed Mr H.'s health condition, while not allowing a conclusion of legal incapacity (for the reasons under paragraphs 6 to 8), has to be taken into consideration when assessing the requirements for the request of restitutio in integrum, since it definitely played an important role in determining Mr H.'s professional behaviour with reference to the omissions under consideration. In particular both the medical certificate dated 30 January 1997 (see paragraph 7 above), showing the existence of some health problems relating also to the mental sphere, and the number of professional failures occurred in the period under consideration (see paragraph 8 above) must be considered as sufficient evidence that Mr H., for reasons beyond his control, was not capable to run properly some of the cases under his responsibility, although he took every effort to fulfil his duties. It follows that under these special circumstances the more restrictive criterion of isolated mistake generally used in the case-law of the Boards of Appeal does not apply and that the representative's negligence cannot be considered as a reason to refuse the request for restitutio in integrum. The latter finding prevents the applicant from suffering from this negligence unless he or his Norwegian representative had reason to suspect that Mr H. could not be relied on.

13. Evidence has been given that the Norwegian representative of the appellant explicitly invited Mr H. to pay the 5th annuity fee (see letter dated 24. January 1996) and that receipt of this instruction had been confirmed by Mr H. with facsimile dated 29. January 1996. After such request it seems logical that he could rely on a correct exercise of Mr H.'s professional duties, when the following considerations are also taken into account: in the period under consideration Mr H. had not completely ceased to work but was taking some pertinent actions relating to the appellant (see paragraph 6 above);(b) the Norwegian representative of the appellant had been working with Mr H. for many years and before the period under consideration Mr H. had handled his activity in a careful and reliable way.

For these reasons the Norwegian representative of the appellant had no reasons to suspect that his instructions relating to the payment of the 5th annuity fee would not be complied with and therefore it must be inferred that the above quoted requirement of all due care has been fulfilled by the appellant.

14. In conclusion, taking into account that the omitted act was completed within the time limit, the appealed decision is to be set aside and restitutio in integrum under Article 122 EPC is to be granted according to the appellant's auxiliary request.