T 1764/08 02-12-2010

1. The present decision has been taken after the revised European Patent Convention (EPC) entered into force on 13 December 2007. At that time, the present European patent application was pending. The board therefore applies the transitional provisions in accordance with Article 7(1), second sentence, of the Revision Act of 29 November 2000 and the decisions of the Administrative Council of 28 June 2001 (Special edition No. 1, OJ EPO 2007, 197) and 7 December 2006 (Special edition No. 1, OJ EPO 2007, 89). Articles and Rules of the revised and former texts of the EPC are cited in accordance with the Citation Practice (see the 14th edition of the European Patent Convention, page 6).

2. The provisions to be applied in the present case with regard to the admissibility of the appeal are those of Articles 106 and 108 and Rules 99 and 101 EPC, and the general provisions of Chapter I of Part I of the EPC Implementing Regulations (in particular Rule 2 EPC), since the time limits for complying with the conditions for filing an appeal started running and expired after the revised EPC entered into force. Accordingly, the time limits for requesting re-establishment of rights started running and expired after the revised EPC entered into force and, therefore, the provisions of Article 122 and Rule 136 EPC apply in the present case (see Decision of the Administrative Council of 28 June 2001 (supra), Article 1, point 5).

3. According to Article 108, third sentence, EPC, within four months of notification of the appealed decision, a statement setting out the grounds of appeal has to be filed in accordance with the Implementing Regulations. In the present case the decision under appeal was issued on 3 April 2008 and deemed to be delivered on 13 April 2008. Thus the period specified in Article 108, third sentence, EPC expired on 13 August 2008 (Rules 126(2) and 131(4) EPC). On 13 August 2008, and therefore on the very last day of said period, the statement setting out the grounds of appeal was filed in electronic form.

4. In proceedings before the EPO, documents may be filed by delivery by hand, by post or by technical means of communication (Rule 2(1), first sentence, EPC). The details and conditions and, where appropriate, any special formal or technical requirements for the filing of documents are laid down by the President of the EPO (Rule 2(1), second sentence, EPC). On 13 December 2007, the Decision of the President of the European Patent Office dated 12 July 2007 concerning the electronic filing of patent applications and other documents (Special edition No. 3, OJ EPO 2007, A.4.) entered into force (Article 13 of the afore-mentioned Decision) and previous EPO notices and the previous Decision of the President concerning the electronic filing of patent applications and other documents ceased to have effect (Article 12 of the afore-mentioned Decision).

According to Article 2(3) and (1) of the above-mentioned Decision, documents in appeal proceedings may not be filed in electronic form. Thus the electronic filing of a statement of grounds of appeal was not permitted until 5 March 2009, the date on which the Decision of the President of the European Patent Office dated 26 February 2009 concerning the electronic filing of documents (OJ EPO 2009, 182) entered into force and allowed the electronic filing of documents in appeal proceedings.

5. In view of the above, the electronic filing of the present statement setting out the grounds of appeal does not comply with Rule 2(1) EPC and Article 2 of the above-mentioned Decision of the President dated 12 July 2007. There is no provision in the EPC or in said Decision of the President which stipulates the legal consequence of the impermissible electronic filing of a document in appeal proceedings. The board, however, concludes that the statement of grounds of appeal was not filed in time (see also T 1090/08, Reasons of the decision, point 18) with the consequence that the present appeal does not comply either with Article 108, third sentence, EPC.

6. In the appellant's view it could not be denied that the statement of grounds of appeal had actually been filed, in particular, in view of the internal EPO Form "Processing of an appeal", which was accessible in the epoline on-line register and explicitly confirmed inter alia that the statement of grounds of appeal had been filed. In addition to that, it was submitted that the presence of this document in the epoline register entitled the appellant to believe that the appeal had been duly filed. The appellant argued that the appeal should be considered admissible on the basis of the principle of good faith.

7. The board notes that, whereas in cases T 781/04, T 991/04, T 395/07 and T 514/05 the notice of appeal was already filed via epoline, in the present case the notice of appeal was filed on 13 June 2008 by fax, which was at that date an acceptable means (see Decision of the President of the European Patent Office dated 12 July 2007 concerning the filing of patent applications and other documents by facsimile (Special edition No. 3, OJ EPO 2007, A.3)). Therefore, with the payment of the appeal fee on the same day, the present appeal was in existence as of 13 June 2008. Consequently, as the statement of grounds of appeal was filed via epoline, the only possible legal consequence is that, if this statement is treated as not filed, the present appeal would become inadmissible (see also T 1090/08, Reasons of the decision, point 17).

8. According to the jurisprudence of the boards of appeal, the duties of the EPO according to the principle of good faith are limited in that the EPO can only be expected to warn a party of a deficiency if the deficiency is readily identifiable by the EPO and the party can still correct it within the relevant time limit (see for example decision G 2/97, OJ EPO 1999, 123). In the present case, however, the appellant filed its statement setting out the grounds of appeal via epoline on 13 August 2008, and therefore on the very last day of the period specified in Article 108, third sentence, EPC. Accordingly, even if the EPO had warned the appellant, the warning would not have allowed the appellant to re-file the statement of grounds of appeal by an acceptable means within said period. Therefore, under the principle of good faith, there was no duty of the EPO to warn the appellant. To that extent, the present case differs from cases T 781/04, T 991/04, T 514/05 and T 395/07, where the deficiency could have been identified in good time before the expiry of the relevant period.

9. The appellant further submitted that it was led to believe that the appeal had been duly filed because of the information in the epoline register and referred to T 781/04.

In decision T 781/04, the board referred to decision J 14/94 (OJ EPO 1995, 824) and found that, since the appellant was misled into believing that the appeal had been duly filed, the principle of good faith demanded that the appellant's error in filing via epoline be in principle rectifiable (see T 781/04, Reasons, points 10.4 and 10.5). J 14/94 concerned a case in which a loss of rights due to non-payment of a renewal fee became apparent several years after it had occurred and in the meantime the EPO had led the parties and the public to the legitimate belief that no loss of rights had taken place by continuing the examination procedure after the loss. The Legal Board of Appeal held that if, during a long period of time, the EPO by its conduct leads the parties and the public to the legitimate belief that no loss of rights has taken place, the EPO cannot later refer to a loss of rights which occurred several years previously without offending against the prohibition of "venire contra factum proprium" and therefore contravening the principle of good faith.

In the present case, however, the board informed the appellant about the deficiency in question in its very first communication, posted on 13 January 2009, and therefore a few months after the statement of grounds of appeal was filed via epoline. It is the board's view that this period cannot be considered "a long period of time". Moreover the board did not indicate that it had started the examination of the allowability of the present appeal. Hence the board did not behave in such a way that the appellant could legitimately believe that no loss of rights has taken place. Thus decision J 14/94 is not pertinent in the present case. It is true that, in decision T 781/04, the board concluded that the appellant was misled and applied the principles of decision J 14/94. However, as already stated above, the present case differs from the case underlying T 781/04, in which the appellant could have expected a warning since the deficiency could have been identified in good time before the expiry of the relevant period.

10. With regard to the appellant's argument that at the relevant time the EPO document submission system was unnecessarily complicated due to the fact that the electronic submission system could not be used for appeal proceedings contrary to the vast majority of submissions to the EPO, reference is made to the established jurisprudence of the boards of appeal according to which ignorance or an erroneous interpretation of the EPC owing to a mistake of law cannot be excused (see Case Law of the Boards of Appeal, 6th edition, 2010, section VI.E.7.4.2.b)). Moreover it is the board's view that, at the time of filing of the statement of grounds of appeal, it was clear from the relevant legal provisions and the case law that documents relating to appeal proceedings should not be filed electronically. According to the relevant legal provisions the same applied to documents relating to opposition, limitation, revocation proceedings or any proceedings for review. In this context it is also noted that the wording of the "Statement" on the cover sheet of the statement of grounds of appeal filed on 13 August 2008 (see point II above) contained a clear warning for the appellant that in appeal proceedings documents could not be validly filed in electronic form. Hence the situation was not unnecessarily complicated. Thus there is no need to look into the provisions of the TRIPS Agreement cited by the appellant.

11. In view of the above the board concludes that, because of the electronic filing of the statement setting out the grounds of appeal, the present appeal does not comply with Article 108, third sentence, EPC. Thus, in accordance with Rule 101(1) EPC, the present appeal will have to be rejected as inadmissible, unless the appellant's request for re-establishment of rights is allowed.

12. Regarding the requirements for re-establishment of rights laid down in Article 122 and Rule 136 EPC, the only question is whether or not the conduct of the appellant's representative (including his assistant) amounted to the exercise of "all due care required by the circumstances".

13. According to Article 122(1) EPC an appellant can only have his rights re-established if he was unable to observe the time limit for filing the statement of grounds of appeal in spite of all due care required by the circumstances having been taken. In accordance with the established jurisprudence of the Boards of Appeal, re-establishment of rights is intended to ensure that an isolated mistake within a normally satisfactory monitoring system does not result in an irrevocable loss of rights. In such a case the relevant party must show that the system normally worked well (see references in Case Law of the Boards of Appeal of the European Patent Office, 6th edition, 2010, VI.E.7.3).

In a case of a culpable error on the part of an assistant, this criterion is considered to be met if the professional representative is able to show that he has chosen for the work a suitable person properly instructed in the tasks to be performed, and that he has himself exercised reasonable supervision over the work (see Case Law of the Boards of Appeal of the European Patent Office, 6th edition, 2010, section VI.E.7.4, and in particular J 5/80, OJ EPO 1981, 343).

14. The question therefore is whether or not the conduct of the appellant's representative amounted to the exercise of "all due care required by the circumstances".

15. Regarding the submissions made and evidence filed by the appellant, an appellant relying on a special set of circumstances is obliged to present proof that the facts alleged have indeed occurred. According to the established jurisprudence, evidence in support of a party's request for re-establishment of rights can, if necessary, be presented after expiry of the two-month period pursuant to Rule 136(1) EPC (see e.g. T 324/90, OJ EPO 1993, 33, Reasons of the decision, point 5). In view of this jurisprudence and in the absence of any specific reason against the admission, the board, exercising its discretion under Article 13 RPBA, admitted all the evidence filed by the appellant into the appeal proceedings.

16. However, the board takes the view that the submissions and evidence on file do not indicate that the failure to file the statement of grounds of appeal by an acceptable means within the prescribed period resulted from an isolated mistake within a normally satisfactory system for monitoring the filing of appeals in the firm of the appellant's representative.

17. Taking into account the submissions and evidence on file, the board has difficulty in acknowledging that, at the relevant time in question, the representative's firm had an established system of checks to ensure that mistakes such as happened in the present case were avoided. It appears to the board that, although the assistants were generally instructed to use fax or regular mail for filing documents in appeal proceedings, there was no check or monitoring foreseen in the organisation of the firm as to whether these instructions were followed. It is clear from the representative's submissions that the assistant relied merely on the representative's instructions and, if the assistant did not receive any instruction, she "did what she was used to do, viz. send the letter to the EPO through epoline" (see the appellant's letter dated 6 March 2009, page 2). This, however, speaks against a normally satisfactory system for monitoring the filing of appeals.

18. It is also the board's view that filing an admissible appeal is not a routine task, but rather a complicated task which needs clear instructions from the professional representative to his assistant. In the present case, however, there is no evidence on file whether the assistant received instructions from the appellant's representative for sending the statement of grounds of appeal to the EPO, and if so, what instructions. In particular a copy of the email allegedly sent together with the draft statement could not be provided to the board.

19. The board also considers that the assistant's work should have been monitored as far as filing documents in appeal proceedings was concerned since at the relevant time the legal situation differed from that for filing documents in other proceedings before the EPO and the legal consequences for any failure were severe. In the board's view the professional representative whose electronic signature was on the cover sheet should have checked whether the attached document could have validly been sent via epoline and should have instructed the assistant accordingly, in particular in view of the exceptional personal circumstances of the appellant's representative, which were known within his office.

20. Finally the board turns to the appellant's argument that no other appeal case had gone wrong. The mere allegation that the present case was the first instance of unintended failure in filing an appeal does not show that all due care was normally observed and does not prove that a satisfactory system was in place in the representative's office.

21. For the foregoing reasons, the board is not satisfied that "all due care required by the circumstances" was taken in the present case. Thus the requirements of Article 122(1) EPC are not fulfilled and the appellant's request for re-establishment of rights must be rejected in accordance with Article 122(2), second sentence, EPC. Since this request is rejected, the statement of grounds of appeal is deemed not to have been filed within the period provided by Article 108, third sentence, EPC. The appeal must, therefore, be rejected as inadmissible in accordance with Rule 101(1) EPC.