T 0853/90 () of 11.9.1991

Summary of Facts and Submissions

I. European patent application No. 82 901 056.0 was filed on 12 February 1982. Following its examination, a decision dated 16 May 1990 was issued in which the application was refused. The reason given for the refusal was that the subject-matter of the claims did not involve an inventive step.

II. On 6 July 1990 the Appellant filed a Notice of Appeal against that decision. The appeal fee was paid on 10 July 1990.

III. On 5 December 1990, the Registrar of the Board of Appeal sent to the Appellant a communication pursuant to Article 108 and Rule 65(1) EPC informing him that as the Statement of Grounds had not been filed within the time limit of the four month period provided for in Article 108 EPC it was to be expected that his appeal would be rejected as inadmissible and drawing his attention to the remaining possibility of filing an application for re- establishment of rights.

IV. On 5 February 1991, the Appellant filed by fax an application for re-establishment of rights and paid the corresponding fee on 8 February 1991. The Statement of Grounds of Appeal was filed together with the said application.

V. In the grounds filed in support of the application for re- establishment, the Appellant's Agent (professional Representative) said that "in missing the date for putting in appeal grounds I treated this matter as one where further processing would be available". Moreover he stated that the Appellant in no way was at fault in missing the original due date for the Grounds of Appeal. The Appellant had relied upon the advice of the Representative and had given the latter instructions to go on with the case.

VI. In a communication pursuant to Article 11(2) of the Rules of Procedure of the Boards of Appeal, dated 10 July 1991, and sent on behalf of the Board, the Rapporteur expressed the opinion that the application for re-establishment of rights complied with the requirements of Article 122(2) and (3) EPC, but it appeared that the requirements of Article 122(1) EPC were not met in that the Appellant had not taken "all due care required by the circumstances". It was said that the reason given by the professional Representative that led to the said missing of that date (see under V above) could not seriously be considered as a ground on which the application of re-establishment could be based. Additionally it was suggested that the reason given probably indicated that the professional Representative did not have a satisfactory reminding system and that therefore it appeared that the Appellant had not taken "all due care required by the circumstances".

VII. In preparation for oral proceedings set out to be held on 11 September 1991 the Appellant filed a letter on 9 August 1991 together with a sworn declaration giving details of the professional Representative's time-limit monitoring and checking system. The said declaration did not only concern the present appeal T 853/90 but also a related appeal T 69/91 (European application No. 82 901 057.8) as in the meantime the Board had agreed to hold oral proceedings for both cases at the same time. Also in said related appeal T 69/91 the Appellant applied for re-establishment of rights, since also in that case the Representative had "treated the matter as one where further processing would be available" and had noticed that he had not filed the Grounds of Appeal within the time limit when he in the proceedings of the present appeal got the said communication pursuant to Article 108 and Rule 65(1) mentioned under III above.

VIII. In the said sworn declaration and said oral proceedings the professional Representative submitted that the reminding system at his Manchester office as well as at the main office in London were satisfactory ones. He explained the different routines and the working tasks of the staff of the Manchester office. In fact in both appeal cases concerned the Manchester office alone was responsible for the monitoring and checking of the time- limits. Also Appellant's US Attorney had fully relied on that checking system and apparently had not had the said applications in his own system. The Representative said that the said system always had worked satisfactory and therefore the mistake made should be considered as an isolated mistake.

The Representative pointed out that the system at the Manchester office for both applications had included the treating of the four month period for written grounds of appeal as a date that must be met. However, he said, he had made a mistake he afterwards could not fully explain. His mistake had been to recategorise in the present proceedings (appeal T 853/90) the due date as one to which further processing would apply and also to do so for the related appeal (T 69/91) concerned. Yet, in the Notice of Appeal in the present appeal proceedings, he had emphasised that written grounds were to be produced within the required four-month period. The professional Representative was the senior person at Manchester office at that time and had been taking special interest in records work and had the ultimate responsibility. The long-time head Records clerk had retired and been replaced by the previous head Accounts clerk who relied on the "correction".

The Representative had been fully aware that the said two applications must be "maintained and fully prosecuted, including traversing the full appeal procedure". From the very beginning he had tried to coordinate the treatment of the said applications and later also the treatment of the corresponding appeals. That was particularly aimed at ultimate oral proceedings being at the same time or consecutive so that only one trip from California to Munich would be required for the US Attorney and the Applicant. Telephone contact between the Representative and the instructing US Attorney at that time had been frequent and often had included reference to progress.

Once the Representative himself had made the said recategorisation of the first appeal, it was therefore also applied to the related appeal, as these two appeals were tried to be held together. Thus the Representative himself had written on the corresponding chits of the two appeal cases, which chits were attached to incoming letters, that further processing was allowed, although on the covers of the corresponding dossiers, the correct time limits were given.

The system thus required that the required dates were introduced manually into the system by the staff of the office. A box system had never been used (placing a cross into a box corresponding to a certain measure - e.g. a time limit to be held), which according to the experience of the Representative would have been still more complicated. The Representative was of the opinion that the staff and he himself were part of the system and that he in fact always had the time limits concerned and the corresponding routines in his head.

Reasons for the Decision

1. Since a Statement of Grounds of Appeal has not been filed within the time limit set by Article 108, taking into account Rule 78(3) EPC, the appeal should be rejected as inadmissible in application of Rule 65(1) EPC, unless the application for re-establishment of rights, filed by the Appellant, is granted.

2. The application for re-establishment of rights fulfils the conditions of Article 122(2) and (3) EPC.

3. Article 122(1) EPC, provides, as a prerequisite for the re-establishment of rights, that the Applicant for or the Proprietor of a European patent has taken "all due care required by the circumstances". If an Applicant is represented by a professional Representative the latter also has to show that he has taken all due care required by the circumstances according to the jurisprudence of the Boards of Appeal in conformity with the general principles of representation (Articles 133 and 134 EPC), see J 05/80, OJ EPO 1981, 343.

4. In the Notice of Appeal in related case T 69/91, filed on 10 October 1990, (see under VII above) the Representative writes:

"Whilst efforts here will not be spared to present cases on both applications by the due (four month) date for the other application (thus the application of the present case - the Board's remark), it would undoubtedly help avoid presenting arguments in illogical order if the date for that application (No. 82 901 056.0) is extended to correspond with the four month date for this application (thus the date of the related case T 69/91 - the Board's remark)."

From this paragraph the Board draws the following conclusions:

a) The Representative was aware of the four months' time limit.

b) However, he thought that this time limit was extensible.

c) Moreover he had not observed that the four months' time limit for the present appeal T 853/90 at that time had expired - he still thought that it was possible to file the Grounds of Appeal within the time limit.

5. The Board notes that in the grounds filed in support of the application for re-establishment (filed on 5 February 1991) the professional Representative admitted that in missing the date for putting in appeal grounds, he treated this matter as one where further processing would be available (see under V above).

Thus the professional Representative confirmed that, as he had submitted in the Notice of Appeal in related case T 69/91, he had not been aware of the fact that the time limit for the filing of the Grounds of Appeal was not extensible. This was also confirmed in the oral proceedings.

6. In the Board's view, in the present case, non-observance of the time-limit for filing of the Grounds of Appeal was caused merely by lack of knowledge of the Law (here the European Patent Convention) on the part of the professional Representative. As the Disciplinary Board of Appeal already decided, "neither ignorance of the provisions applicable nor a mistake as to the resulting legal position can justify re-establishments of rights. The obligation to take "all due care required by the circumstances" means that persons engaged in proceedings before or involving the European Patent Office must acquaint themselves with the relevant procedural rules" (D 6/82, OJ 1983, 337, 341).

7. The Board is of the opinion that in the present case, the reasons given under 5 and 6 above demonstrate that the requirement of taking "all due care required by the circumstances" has not been fulfilled, and that therefore the application of re-establishment of rights must be refused.

8. Under these circumstances there is no need for the Board to consider the professional Representative's reminding system (see under VI and VIII above) and the appeal has to be rejected as inadmissible.

ORDER

For these reasons, it is decided that:

1. The application for re-establishment of rights is rejected.

2. The appeal is dismissed as inadmissible.