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T1304/07: Appeal or re-establishment of rights?

Rule 126(1) EPC reads:

(1) Decisions incurring a period for appeal or a petition for review, summonses and other such documents as determined by the President of the European Patent Office shall be notified by registered letter with advice of delivery. All other notifications by post shall be by registered letter.

(2) Where notification is effected by registered letter, whether or not with advice of delivery, such letter shall be deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the European Patent Office to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be.

(3), (4) Not shown.

In this case the Opposition Division had sent an invitation to file observations to the patent proprietor. The proprietor did not respond to this invitation and the patent was revoked as not complying with Art. 84. The proprietor filed an appeal arguing that he did not receive the communication in question, so that it was not his fault that the time limit for answering this communication was missed. The EPO provided evidence that the letter in fact was delivered to the adressee, thereby fulfilling its duty under R126(2) last sentence. As a consequence the appeal was dismissed.

The Board in R4: As the piece of mail containing the official communication was provably placed in the addressee's PO box, it is irrelevant for the validity of the notification, whether the communication then also reached "the sphere of responsibility" of the addressee's internal post services [..].

The communication that was apparently not received was dated 08/02/2007 and the decision by the Opposition division was dated 21/06/2007. Based on this information I wonder if the proprietor could also have requested re-establishment of rights under Art. 122 EPC. (Removal of cause of non compliance then being the notification of the decision by the Opposition Division).

By doing so he would have had support by established case law in respect of the "all due care" criterium.

J2/86: An isolated mistake of an otherwise properly functioning administration is an admissible ground for re-establishment.

From reading the decision of the Board of Appeal this might have been the situation in this case.

Just a thought, please feel free to comment ....

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  1. The suggestion to maybe request re-establishment seems to overlook the fact that a condition for re-establishment is that the non-observance of the time limit must have the direct consequence of ... revocation of the patent or the loss of any other right or means of redress.

    Did the patentee lose any right as a direct consequence of not replying to the (non-received) communication from the opposition division?

    Generally, its useful to use Case Law to learn from others mistakes. In this case the patentee made at least two "mistakes" that led to the patent being irretrievably revoked:

    - they did not request oral proceedings as soon as the opposition was filed (maybe they were lulled into a false sense of security because the (ex)-opponent was a related company)

    -they limited the appeal to the formal point, with the result that when the formal point was decided against them, the substantive aspect that could have been appealed was never considered.

    So I don't feel any compassion for the patentee, and suggest that it would be a waste of time to consider how they might vainly have attempted to re-establish their rights.

  2. I think I found the answer myself ...

    R.8: The EPC does not make the time limits set by the Opposition Division for filing observations (Article 101(2) EPC, now Article 101(1) EPC2000) subject to an immediate loss of rights. The same applies to the time limit for making a statement (Article 102(3)(a), now Article 101(3)(a) EPC2000); Rule 58(4) now Rule 82 EPC2000) and to the time limit for performing procedural acts when the patent is maintained as amended [..]

    Thus, since there is no immediate loss of rights, the revocation is not the direct consequence of failing to meet the time limit in the sense of Art. 122.


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