J 0001/89 (Courtesy service) of 1.2.1990

Summary of Facts and Submissions

I. The appellant filed a Euro-PCT application on 30 September 1983.

II. In a letter dated 3 June 1986, headed "Notice drawing attention to Article 86(2) EPC and Article 2, item 5 RFees - Payment of renewal fee with additional fee", the applicant was informed that the renewal fee for the third year had not been paid by the due date of 1 April 1986. Under Article 86(2) EPC it could still be validly paid with an additional fee within six months of the due date. The total amount payable was DEM 506. The applicant thereupon paid the renewal fee for the third year in the form of a cheque for DEM 506, which he enclosed with his letter of 24 September 1986.

III. In a communication pursuant to Rule 51(4) EPC dated 22 September 1987 the applicant was informed that the Examining Division intended to grant a European patent. Within the four-month period allowed for this purpose, the applicant indicated his approval of the text notified, submitted English and French translations of the claims and paid the fees for grant and printing.

IV. In a letter dated 29 September 1987, referring to the communication dated 3 June 1986, the applicant remitted a cheque for the sum of DEM 671, representing payment of his renewal fee for the fourth year plus an additional fee of 10% for late payment.

V. In a communication pursuant to Rule 69(1) EPC dated 3 November 1987 the applicant was informed that since he had not paid the renewal fee for the fourth year plus the additional fee in due time, his European patent application was deemed to be withdrawn under Article 86(3) EPC. Under Article 86(2) and Rule 37 EPC, the renewal fee for the fourth year could have been paid without an additional fee up to 30 September 1986 or with an additional fee up to 30 March 1987. The fact that the applicant had not been sent a reminder concerning the renewal fee for the fourth year payable in accordance with Article 86(2) EPC was irrelevant since, in communicating such information, the Office was merely providing a courtesy service (decision of the Legal Board of Appeal dated 25 January 1985, OJ EPO 1985, 108). The due date in the communication of 3 June 1986 had been calculated in accordance with Article 40 PCT and Article 150(2), third sentence, EPC and applied only to the renewal fee for the third year, whereas the normal provisions of Article 86(2) in conjunction with Rule 37 EPC applied to the due date for payment of the renewal fee for the fourth year.

VI. In a communication dated 7 December 1987 the applicant was informed that the renewal fee for the fifth year had become due on 30 September 1987 but that it could still be paid with an additional fee within six months of that date. The applicant paid the renewal fee for the fifth year (DEM 770) plus the additional fee (DEM 77) by cheque, enclosed with his letter dated 23 December 1987.

VII. In a letter dated 21 December 1987 the applicant applied for a decision under Rule 69(2) EPC. He asked to be excused for failing to observe the time limit and requested that the processing of his application be continued. He had not failed to exercise due care since he had relied on the due date given in the notice of 3 June 1986. He had received reminders concerning the due dates for the renewal fees for the third and fifth years but not for the fourth. The applicant should have been able to rely on the Office providing the same courtesy service for the fourth year as for the third and fifth years. This followed from the PCT Applicant's Guide, July 1986 edition, which stated under EP.12 that where an applicant failed to pay by the due date he would receive a reminder from the EPO. The payment on 29 September 1987 had in essence been a request for re-establishment of rights. The DEM 125 fee for re- establishment of rights had not been paid because the applicant had a credit of DEM 160 with the PCT receiving Office.

VIII. A decision was given on 29 July 1988 to the following effect:

1. The application was deemed to be withdrawn because the renewal fee for the fourth year had been paid late, and

2. the application for re-establishment of rights in respect of the time limit under Article 86(2) EPC was deemed not to have been made because the relevant fee had not been paid.

IX. The applicant appealed in due form and time against this decision, pointing out that his letter of 21 December 1987 did not constitute an application for re-establishment of rights. The case should be remitted for a decision under Rule 69(2) EPC. While the notices drawing attention to Article 86(2) EPC were issued by the EPO as a courtesy service, the appellant should in accordance with the principle of good faith have been able to rely on this service being continued. However, for some inexplicable reason, the Office had not notified the applicant of the due date for the fourth-year renewal fee. It could make good its omission by a decision under Rule 69(2) and by granting the applicant's request for further processing.

Reasons for the Decision

1. The appeal is admissible.

2. The contested decision correctly states that the fourth-year renewal fee was not paid within the time limit laid down in Article 86 EPC. Since the filing date of the EURO-PCT application was 30 September 1983 the fourth-year renewal fee was due under Article 86(1), second sentence, EPC on 30 September 1986. Under Article 86(2) EPC it could still have been validly paid with an additional fee up to 30 March 1987. However, the renewal fee and additional fee were not paid until 1 October 1987.

3. Under Article 86(3) late payment results in the European application being deemed to be withdrawn. In the present case however the Office's actions were partly the cause of payment being late.

4. The present case relates to a Euro-PCT application for which the due date of the third-year renewal fee is calculated in accordance with the special provisions of Article 40 PCT and Article 150(2), third sentence, EPC. Under these provisions and unlike the situation where Article 86 EPC applies, the third-year renewal fee was not due until the expiry of 30 months after the filing date of 30 September 1983, i.e. on 1 April 1986. Consequently in this case the fee for the third year could still have been paid with an additional fee up to 1 October 1986.

5. The Office's communication of 3 June 1986 correctly points out that the third-year renewal fee was due on 1 April 1986. However, it makes no mention of the fact that the due date for payment of the fee for the third year is an exceptional case. Indeed, it does not even mention the legal provisions in accordance with which this exceptional due date is calculated. On the contrary, by referring to Article 86 EPC, it gives the impression that the date given is the normal due date for a European patent application. The applicant was not notified of the fact that the due date of 1 April 1986 mentioned in the communication of 3 June 1986 was an exceptional case coming under Article 40 PCT and Article 150(2), third sentence, EPC until after he had paid the renewal fee for the fourth year when he was sent the communication pursuant to Rule 69(1) EPC of 3 November 1987 informing him that the European patent application was deemed to be withdrawn. The Board is therefore of the opinion that the applicant cannot be blamed for using the communication of 3 June 1986 concerning the due date for payment of renewal fees as a basis for remitting the fourth-year renewal fee, particularly since he was not sent any reminder concerning the due date for payment of the fourth- year renewal fee, which would have given the normal due date under Article 86 EPC, i.e. a different date from that for the fee for the third year.

The Board would however like to emphasise that it stands by its existing case law, according to which an applicant cannot rely on the Office systematically providing courtesy services - in this case reminding him of the due date for payment of renewal fees - and that he is therefore not entitled to base a claim on the omission of a reminder for the fourth year (confirmation of J 12/84, OJ EPO 1985, 108). The case law does not however invalidate the principle that an applicant can rely on the accuracy and completeness of any communication sent to him regarding the due date for payment of a renewal fee. As explained above, the communication of 3 June 1986 was not worded in such a way as to rule out any misunderstanding on the part of a reasonable addressee as to the due date for payment of renewal fees. The applicant is therefore not to be blamed if he relied on the due date communicated to him.

6. The Board has already stressed on more than one occasion that the principles of good faith governing relations between the EPO and applicants require communications to be clear and unambiguous to the applicant (cf. decisions J 2/87 dated 20 July 1987, OJ EPO 1988, 330 "Motorola", and J 3/87 dated 2 December 1987, OJ EPO 1989, 3 "Membranes/MEMTEC"). Communications must be worded so as to rule out any misunderstanding on the part of a reasonable addressee. As shown above, the communication dated 3 June 1986 did not satisfy these requirements.

7. An applicant must not suffer a disadvantage as a result of having relied on a misleading communication (decision J 3/87, OJ EPO 1989, 3). On the contrary, if his actions were based on a misleading communication, he is to be treated as if he has satisfied the legal requirements. Since the reminder concerning payment of the renewal fee for the third year gave the impression that the due date for payment of renewal fees was 1 April, the applicant was entitled to assume that he could still validly pay the fourth-year renewal fee up to 1 October 1987 under Article 86(2) EPC. Since this is in fact what he did, the fourth-year renewal fee is deemed to have been paid in due time and the European patent application not to have been withdrawn under Article 86(3) EPC.

ORDER

For these reasons it is decided that:

1. The communication pursuant to Rule 69(1) EPC dated 3 November 1987 and the decision of 29 July 1988 are set aside.

2. The fourth-year renewal fee is deemed to have been paid in due time and the European patent application therefore not to have been withdrawn.

3. The case is remitted to the department of first instance for continuation of the grant procedure.