In several decisions the boards considered the question of the responsible person who could or should have detected the omission.
In T 812/04 the board held that the person to be taken into account for the purposes of establishing the point in time when the appellant was no longer prevented from carrying out an unperformed act was the duly appointed representative.
In T 32/04 the board considered that in the absence of a duly registered transfer of the application, the person responsible for the purpose of the EPO remained the applicant or his representative. Hence an alleged assignment of the application to a third party in the absence of such a registration was "res inter alios acta", i.e. outside the ambit of the legal relationship between the applicant and the EPO.
In T 191/82 date: 1985-04-16 (OJ 1985, 189) the board held that in a case in which non-compliance with a time limit was discovered by an employee of a representative, the cause of non-compliance, i.e. failure to appreciate that the time limit had not been complied with, could not be considered to have been removed until the representative concerned had himself been made aware of the facts, since it had to be his responsibility to decide whether an application for re-establishment of rights should be made and, if it was to be made, to determine the grounds and supporting facts to be presented to the EPO (see also J 7/82, OJ 1982, 391; J 9/86; T 381/93 of 12 August 1994 date: 1994-08-12).
In J 1/13 the Legal Board considered that within a law or patent attorney's firm the relevant person was the representative and not his or her employee (T 191/82 date: 1985-04-16); however, it was not up to the representative to extend the time period of R. 136(1) EPC at will by keeping him- or herself intentionally uninformed (see T 1985/11, where the board found it irrelevant that the representative had not read the letter when acknowledging its receipt). In addition, although most cases regarding the removal of the cause of non-compliance deal with the point in time when a representative discovered (or ought to have discovered) the error, the Legal Board stated it was recognised that the person whose knowledge was relevant might also be the applicant himself (see J 27/88; J 27/90, OJ, 1993, 422; T 840/94, OJ 1996, 680; T 32/04).
In T 840/94 (OJ 1996, 680) the board held that if a party instructed the authorised representative not to pass on any further communication from the EPO, it could not then rely on the fact that information notified to the representative and necessary for continuing the proceedings was lacking. See also T 1908/09.
In T 1588/15 the finding of the board differed from the line taken by J 1/13. The board saw no good reasons for the representative being uninformed and not taking immediate action in the knowledge (or merely belief) of being uninformed. It held that an applicant had a specific duty to positively inform its representative about an intended abandonment of an application. The board held that even when a representative was explicitly exempted from looking after a fee payment, at least he could be expected to be informed at all times about the applicant's intention as to whether or not the application was to be maintained. It decided that receipt of the noting of loss of rights by the representative triggered the time limit of two months foreseen in R. 136(1) EPC.
In J 27/88 the Legal Board held that the responsible person in the case at issue was neither the appellant nor the European representative but the US patent attorney who was the authorised agent of the appellant and was duly empowered to take all necessary measures. The date of removal of the cause of non‑compliance was the date on which the US patent attorney became aware of the omission.
In J 27/90 (OJ 1993, 422) the applicant, a US company, properly appointed a European professional representative. For the payment of renewal fees it used a computerised service firm, a so-called "renewal fee payment agency". The Legal Board held that in the absence of circumstances to the contrary a communication under R. 69(1) EPC 1973 to the professional representative removed the cause of non-compliance. This also applied when parties instructed the (European) professional representatives via their (national) patent attorney. The appointment of an independent service firm for the payment of renewal fees did not constitute circumstances to the contrary.
In T 1908/09 the board observed that if there was more than one applicant the co-applicants had to name a common representative (Art. 133(4) and R. 151(1) EPC). If they failed to do so and one of the applicants was obliged to appoint a professional representative under Art. 133(2) EPC, this representative was deemed to be the common representative. In the case at issue, with the notification of the loss of rights (R. 126(2) EPC) to their common representative (Rule 130(3) EPC) both applicants were made aware of the fact that the time limit had expired.
In J 16/93 the Legal Board held that in the event of exceptional circumstances the cause of non-compliance with a time limit may persist even though the applicant's representatives were duly informed of the loss of rights resulting therefrom. This is the case when a combination of circumstances, which cannot be blamed on either the applicant or its representatives, and which arose in particular from the fact that they had both moved to new addresses and from the illness of a director of the company applying for a European patent, made it impossible for the professional representatives to contact the applicant in due time. This combination of circumstances prevented the representatives from performing the omitted act – i.e. paying the renewal fee for the third year – since they had not received any advance. A representative whose authorisation is silent in this respect and who has not received any funds for this purpose is not expected to advance moneys on behalf of his client out of his own pocket.
Date retrieved: 17 May 2021