T 1882/23: Cause of non-compliance removed when representative receives the notice of loss of rights

EPO Case Law Summary: T1882/23

Background

The European patent application No. 15 784 742.7 was deemed withdrawn since the renewal fee had not been paid within the time limit for paying the renewal fee together with the additional fee. The notice of loss of rights was issued on 28 May 2019, and received by the professional representative on file on 4 June 2019.

The Applicant (Appellant, A) filed a request for re-establishment of rights on 10 September 2019.

The Examining Division (ED) rejected A’s request for re-establishment of rights. ED found the request inadmissible due to having been filed too late, more than two months after receiving the notice of loss of rights, and not allowable because A had failed to observe the required all due care.

The Appeal

A filed an appeal against ED’s decision to reject the request for re-establishment of rights. A requested that the decision be set aside and that its request for re-establishment of rights in respect of the time limit for paying the renewal fee with surcharge be allowed.

The Board considered that the request for re-establishment of rights under Art. 122(1) EPC was not filed within the time limit of two months of the removal of the cause of non-compliance within the meaning of Rule 136(1) EPC. According to the Board, the removal of the cause of non-compliance occurs on the date on which the person responsible for the application vis-á-vis the EPO becomes aware that a time limit has not been observed, which generally occurs by the actual receipt of a communication under Rule 112(1) EPC noting a loss of rights.

A argued that in the present case, the person responsible for the application vis-á-vis the EPO should not be the professional representative, but the person employed by A to manage its patent portfolio (“the IP person”), since the IP person, not the professional representative, was responsible for managing the payment of renewal fees. Therefore, the date on which the IP person became aware of the loss of rights should be the decisive date. The IP person had been on extended sick leave and therefore only became aware of the notice of loss of rights on 10 July 2019. On 10 September 2019, i.e., two months after the IP person became aware of the loss of rights, A filed the request for re-establishment of rights.

The Board was not convinced by these arguments. The Board held that since the date on which the cause of non-compliance with the due date is removed is the starting point of the two-month time limit for requesting re-establishments of rights under Rule 136(1) EPC, legal certainty requires that this date can be clearly and objectively determined. It cannot depend on the details of how A has divided the responsibilities internally and/or externally.

The Board confirmed that when a professional representative is appointed, this professional representative is responsible for the application vis-á-vis the EPO and is the EPO’s single point of contact, as decided by current case law. The date of removal of non-compliance with the period for payment of fees, under Rule 136(1) EPC, is therefore the date on which the appointed professional representative receives the communication of loss of rights. This holds true also in situations as in the present case, where the professional representative has been instructed by their client that all renewal matters are handled by others. The date on which the IP person receives the notice of loss of rights is therefore irrelevant.

Other Case Law

The Board referred to T 231/23, Reasons 3, 5 and 8, and to J 1/20, Reasons 2, and confirmed the date of removal of the cause of non-compliance with a time limit is the date of actual receipt of the notice of loss of rights communicated under Rule 112(1) EPC and received by the appointed professional representative.

Decision of the Board (of Appeal)

The Board decided that the appeal is dismissed.


Summary written by the NLO EPO Case Law Team.