T 0250/89 (Due care) 06-11-1990
1. Whilst Board of Appeal practice allows the grounds for appeal to be presented in a notice of appeal which has been produced in due time, the grounds presented must still include the legal or factual reasons why the appeal should be allowed and the decision under appeal set aside (T 220/83, OJ EPO 1986, 249 and J 22/86 OJ EPO 1987, 280).
2. When trying to establish that he was not in a position to observe the time limit laid down in Article 108, third sentence, EPC, an appellant may not invoke the late production of a document necessary to enable him to develop his case but held by a third party, where it emerges from his correspondence that despite not having said document in his possession he had sufficient information available within the time limit to file a statement setting out the grounds of appeal in accordance with the requirements of the EPC.
Admissibility of appeal (rejected)
Re-establishment of rights (refused)
Due care required by the circumstances (lacking)
I. The Opposition Division of the European Patent Office, in a decision dated 1 February 1989, rejected the opposition filed against European patent No. EP-B-0 093 654, which had been granted on the basis of application No. 83 400 831.0 filed on 27 April 1983.
II. On the same date the decision was communicated to the appellants (opponents) in a registered letter with acknowledgement of receipt. Pursuant to Rule 78(3) EPC the notification is deemed to be delivered to the addressee on the tenth day following its posting. Hence the time limit for appeal started to run on 11 February 1989.
III. On 29 March 1989 the appellants filed an appeal and paid the appropriate fee.
IV. The notice of appeal requests that the contested decision be set aside and the patent revoked. It also says that "the written statement setting out the grounds of appeal will be produced subsequently within the time limit allowed".
V. The written statement dated 30 June 1989 did not reach the EPO until 14 July 1989, in other words after the time limit laid down in Article 108, third sentence, EPC had expired, which happened on 12 June 1989, 11 June 1989 being a Sunday (Rule 85(1) EPC).
VI. On 24 July 1989 a communication was sent to the parties inviting them to submit their observations, if any, on the fact that the written statement had not been produced in due time and that under Rule 65 EPC the appeal could be declared inadmissible.
VII. In a letter dated 11 September 1989, received at the EPO on the 14th of the same month, the appellants maintained that in their view pursuant to the case law derived from Decision J 2/87 of 20 July 1987 (OJ EPO 1988, 330) the notice of appeal received at the EPO on 29 March 1989 satisfied the minimum requirements of Article 108 EPC. Alternatively they requested re-establishment of rights and paid the appropriate fee.
VIII. In support of the latter request the appellants submit that:
- the decision to appeal was taken in March 1989;
- they had to base the grounds on information contained in documents held by ECE, a company unknown to the Board;
- not having said documents in their possession, the appellants requested them from ECE at the end of March 1989, pointing out that they were urgently required and had to be submitted to the EPO before 2 June 1989;
- before expiry of the time limit for producing the written statement the appellants contacted ECE on several occasions urging them to take prompt action;
- nevertheless, they did not receive the documents until 14 June 1989.
The appellants therefore consider they have exercised all due care required by the circumstances.
IX. In a communication dated 2 April 1990 the Board of Appeal advised the parties that after preliminary examination of the case it intended to reject both the main request, because the notice of appeal did not contain any grounds, and the alternative request for re-establishment, because the appellants had failed to exercise all due care. The parties were invited to file their observations.
X. In a letter received on 23 May 1990 the respondents concurred with the contents of the communication. On 30 May 1990 the appellants reiterated their views concerning the minimum requirements of Article 108 EPC and repeated their arguments as to the due care required by the circumstances, in support of which they submitted evidence that they had contacted ECE with a view to obtaining within the time limit the documents they considered essential for them to be able to draw up the written statement.
The main request:
1. The admissibility of the appeal depends principally on whether or not the time limit for filing the written statement laid down in Article 108 EPC has been observed. The Board accepts that the other requirements for admissibility are satisfied.
2. In point of fact, since the document setting out the grounds of appeal was received at the European Patent Office on 14 July 1989, i.e. over a month after expiry of the time limit in Article 108, last sentence, EPC, the issue to be resolved is whether, as the appellants claim, the notice of appeal dated 29 March 1989 contains sufficient information to constitute a statement of grounds and thereby satisfy the minimum requirements of Article 108, last sentence, EPC.
3. According to Rule 64 EPC, which defines the essential contents of the notice of appeal, it must contain a statement identifying the decision which is impugned and the extent to which amendment or cancellation of the decision is requested. In the present case the notice of appeal allows the contested decision to be identified unequivocally. It requests revocation of said decision and of the patent; the requirements of Rule 64(2) EPC are therefore satisfied. Apart from this, the notice of appeal merely says that the appropriate fee has been paid and that the statement setting out the grounds of appeal will be produced subsequently within the time limit allowed.
4. Over the years, requirements in respect of the statement of grounds have been laid down and subsequently confirmed in EPO practice and case law.
4.1 Thus Decision T 13/82 OJ EPO 1983, 411 established that if the notice of appeal did not contain anything that could be regarded as a statement of grounds, the appeal was inadmissible unless a written statement of grounds was received by the EPO within the time limit set in Article 108, third sentence, EPC. Brought to bear on the present case, while this does allow the Board to look for grounds in the notice of appeal, it nevertheless has to find at least something "that can be regarded as a statement of grounds". The Board observes that on the evidence in the present case there is nothing in the notice of appeal which can be regarded as a statement of grounds.
4.2 Decision T 220/83 OJ EPO 1986, 249 adds that "grounds for appeal may not be confined to an assertion that the contested decision is incorrect". Rather they must state "the legal or factual reasons why the decision should be set aside". The more recent Decision J 22/86 OJ EPO 1987, 280 is even stricter: "in order to comply with Article 108 EPC, the written statement should set out fully the reasons why the appeal should be allowed and the decision under appeal should be set aside".
5. In Decision J 2/87 OJ EPO 1988, 330, cited by the appellants, the Board observed (see point 2 of the Reasons of said Decision) that in the notice of appeal the applicants had approved the form of the text in which the Examining Division intended to grant the patent; that this rendered the contested decision unjustified; that consequently the notice of appeal could be construed as a request for said decision to be set aside and that the notice of appeal hence satisfied the minimum requirements of Article 108 EPC. It appears that in that case the Board inferred from the grounds of appeal (applicants' approval of the text proposed by the Examining Division) that the applicants were seeking to have the contested decision set aside. This is the reverse of the present case where it has been established (see point 3 above) that the notice of appeal contains a request that the contested decision be set aside but nothing that can be regarded as a statement of grounds.
6. It is therefore clear to the Board that while it is permissible for the grounds to be set out in the notice of appeal, they must nevertheless be subject to the same requirements as if they were submitted as a separate statement. Case law has established that if the grounds for appeal are unequivocally inferrable from the notice of appeal, the notice itself constitutes the statement of grounds, in which event the submission of a "statement" within the time limit set in Article 108, third sentence, EPC is no longer necessary to render the appeal admissible, for the obvious reason that this requirement has been satisfied in that the grounds have been set out in the notice of appeal.
7. Consequently, having established that no grounds for the appeal were produced within the time limit allowed by Article 108, third sentence, EPC, the Board, pursuant to Rule 65(1) EPC, finds the appeal inadmissible, subject to the outcome of the request for re-establishment of rights. The request based on Article 122 EPC:
8. The request for re-establishment of rights satisfies the requirements of Article 122(2) and (3) EPC and is therefore admissible.
9. However, to determine the validity of the request it must be examined whether:
(a) in accordance with the provisions of Article 122(1) EPC the appellants have exercised all due care required by the circumstances, the word "all" being of overriding importance, as stressed in T 287/84, OJ EPO 1985, 333 (see point 2); (b) assuming they have exercised all due care, the failure to observe the time limit is not actually their fault but attributable to a simple oversight (see point 1 of the Reasons for the Decision of the Enlarged Board of Appeal G 1/86, OJ EPO 1987, 447).
10. The Board does not dispute that the appellants took action on several occasions to obtain the documents in the possession of ECE. It considers, however, that from mid-March 1989 the appellants and their representative had enough information to draw up a statement.
Decision T 220/83, OJ EPO 1986, 249 (see point 4 above), clearly stipulates that to be admissible the statement must set out "the legal or factual reasons why the contested decision should be set aside". In the present case, once the appellants had taken the decision to appeal, i.e. from mid-March 1989, they were in a position to submit initial grounds - in the notice of appeal or in a written statement filed before 12 June 1989 - on the basis of documents already in their possession (as they did in paragraphs 2 and 3 of the statement dated 30 June 1989) and to state that they sought revocation of the patent on the grounds that, in their opinion, the invention was neither novel nor inventive and lastly that they would produce other documents, once in their possession, relevant to the development of their case. Set out in this manner, the statement would have been perfectly admissible.
Conversely, by choosing to wait for a document, the production of which depended entirely on the good will of a third party (the company ECE), before filing the grounds the appellants demonstrated a lack of care which is at variance with the requirements of Article 122(1) EPC.
11. Furthermore, the failure to file the statement of grounds in due time in the present case cannot be qualified as an oversight. The appellants - duly represented and therefore informed of the procedures before the European Patent Office - could not fail to be aware of the absolute necessity of complying with Article 108, third sentence, EPC. That they were so aware is confirmed by their undertaking in the notice of appeal to produce the statement "subsequently within the time limit allowed". Thus, by missing a time limit even though they were in a position to observe it, the appellants have failed to comply with the conditions for invoking Article 122(1) EPC.
For these reasons it is decided that:
1. The request for re-establishment of rights for the purpose of enabling the statement of the grounds of appeal to be deemed to have been lodged within the relevant time limit is refused as unfounded.
2. The appeal is rejected as inadmissible.