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New EPO Legal Board of Appeal Decision J0001/20

New EPO Legal Board of Appeal Decision J0001/20

News 05/07/2021

J 0001/20 is the latest decision handed down from the European Patent Office’s (EPO) Legal Board of Appeal (‘the Board’), which hears appeals primarily concerning procedural matters in respect of European patent applications and, more generally, whether EPO practices comply with the actual legal text of the European Patent Convention (EPC). Published on Monday, 9 August 2021, the decision shows that the Board dismissed the appeal of the appellant-applicant to have their application reinstated under Article 122 EPC on the grounds that, although the matter was admissible before the Board, the evidence demonstrated a lack of due care on the part of the applicant, LIFTRA ApS, a company that develops lifting and transport services for wind turbines.

The case concerns a European patent application for which a Rule 70(2) and 70a(2) EPC Communication was issued on 11 July 2014. The Communication requested that the Applicant indicate if they wished to proceed with the application and, if so, respond to the European search opinion. As no response was duly filed a notice of loss of rights pursuant to Article 112(1) EPC was issued on 27 March 2015. This notice of loss of rights therefore set a final date of 27 May 2015 (excluding the 10-day mailing rule of Rule 126(2) EPC) for the applicant to proceed with the application by completing the omitted act, a response to the initial Rule 70 EPC Communication, and paying the flat-rate amount of the further processing fee twice. Again, this deadline was allowed to pass without action by the applicant, who had up to now been representing themselves without representation or counsel from a European patent attorney, also known as a European ‘professional representative’.

After some time, a professional representative was appointed and that new representative filed a request for the re-establishment of rights under Article 122 EPC and Rule 136 EPC on 1 June 2016. However, after a round of back-and-forth argumentation with the EPO, the request was found to be unallowable as the Receiving Section took the view that it had not been established that due care had been taken by the applicant when the 27 May 2015 deadline lapsed, and thus the application remained withdrawn. The applicant then appealed the Receiving Section’s decision, leading to the present case.

We note that, with consideration of Rule 126(2) EPC, Rule 136(1) EPC set the non-extendable deadline of 06 June 2016 by which the applicant must have filed a request for re-establishment of rights, regardless of the date of the removal of the cause of non-compliance. Further, the Board took the view that the date of the removal was 1 April 2016, the date the European attorney informed the applicant of the error and of the opportunity for re-establishment of rights. The newly appointed European representative filed a request for re-establishment on 1 June 2016, just before midnight CEST. We note that the second instance of the further processing fee was not paid until 00:17 CEST on 2 June 2016. Nonetheless, the case therefore amounted to the following:

  1. Was the appeal admissible? That is to say, when was the cause of non-compliance removed? And was the request for re-establishment filed within two months of this date? and
  2. Was the appeal allowable? That is to say, had ‘all due care’ required by the circumstances been taken by the applicant?

To establish the answer to the first of these questions, the Board asserted that two further questions must be answered: (a) who was the person responsible for the application? And (b) when was this person actually made aware of the cause of non-compliance?

Certain facts of the case now become relevant. Firstly, as previously mentioned, the applicant originally chose to represent itself before the EPO in respect of the application, although the applicant did receive counsel from a local patent agent who kept a paper diary of relevant dates for various patent applications and aided the applicant with patent prosecution. In addition, as would turn out immaterial to the present appeal but in retrospect critical to the interests of the applicant, this local agent was not aware of the possibility to re-establish European patent applications. Secondly, the applicant had an employee who was responsible for passing communications between this patent agent and the management of the company. In view of these facts, the Board agreed with the Receiving Section in answering (a) that as the applicant was not represented by a European professional representative for the application, they remained responsible. However, the Board disagreed with the established jurisprudence in respect of (b). Specifically, the Board rejected the approach that when attempting to establish when the removal of the cause of non-compliance occurred, the ‘ought to have known’ criterion applies. Previously, the EPO would take its own view of when the applicant should have been aware of an error resulting in the need to re-establishment of rights rather than when the applicant was aware as a matter of fact, but the Board asserted that this approach had no basis in the EPC and that taking a view of what an applicant should have known (‘presuming knowledge’) leaves effectively no room for a counterargument by the applicant – once the EPO has taken a view of what an applicant should have known, how can they argue otherwise? Thus, the Board took the view that the appeal was admissible in a manner that directly stated that previous tests for admissibility had no legal basis in the EPC.

As for allowability and due care, the Board reaffirmed the standing view that ‘a lower standard of care applies to a small applicant…’. As the facts of the case reveal, between January and April 2015, notably before the expiry of the further processing period (06 June 2015), the employee who acted as an intermediary between the applicant’s management and the extremal local patent agent was sacked for displaying ineptitude and lack of organisation in their role. The Board then stated that due care in this context would have involved the applicant reviewing its patent files as it had known that a sub-par employee had been responsible for them. Moreover, the Board stated that an applicant cannot rely on ignorance of the EPC because the loss of rights communication explicitly references the option of further processing. Finally, the Board rejected the applicant’s arguments that the error arose from ‘internal reorganisation’ consequent to the aforementioned employee’s sacking; one employee being removed from a small company is simply on an incorporable scale to large businesses merging or being restructured, which is the context in which the internal reorganisation excuse has hitherto been accepted. Thus, the appeal was deemed unallowable.

There are two essential points to take away from this decision. Firstly, the Legal Board has revised a key test for admissibility of requests to re-establish rights from taking a view of what applicants should have known to what the facts of the case reveal the applicant actually did know. Secondly, applicants that pursue European patents without European professional representation will still be expected to have a degree of competence in handling European patent matters, and thus not electing for professional representation inherently carries its own risks and responsibilities which can prove fatal to an applicant’s wish to protect their key IP assets.