On 5 November 2012, the applicant received a notice from the EPO drawing attention to the non-payment of the renewal fee for the fourth year in relation to a European patent application. This notice stated that "if the renewal fee and additional fee are not paid in due time, the European patent application shall be deemed to be withdrawn". The European representative promptly alerted the applicant and US attorneys by email, initially receiving no response. After chasing, the US attorneys responded on 20 March saying "Received!!!"On 6 May 2013, the appellant's European representative was informed that the time limit pursuant to Rule 51(2) EPC had been missed and that the application was deemed to be withdrawn.
The applicant therefore filed a request for re-establishment of rights on 4 June 2013. The applicant submitted that the European patent application had been "inadvertently, inexplicably and unintentionally" not entered into its docketing system (apparently as a result of human error - various national applications arising out of the same international application had been entered into the system). One standard practice of the applicant's docketing system was to send periodic reminders to the appellant regarding upcoming annuities for patent applications pending before the EPO, but because the system was unaware of the existence of the European application in question, the checking process failed in the present case.
Decision
Before discussing re-establishment of rights, the Board disagreed with the reasoning of T 1402/13 of 31.5.2016 (not the one of 25.2.2016!) that the loss of rights ensues upon expiry of the normal due date unless the additional fees are paid, implying that missing the last date for paying the additional fees does not have the "direct consequence of causing a loss of rights" as required by Art 122(1) EPC. The Board noted that such reasoning is irreconcilable with the protection of legitimate expectations of EPC users. It was not the intention of the legislator to cancel re-establishment of rights as a means of redress in such cases. It is thus possible for the rights to be re-established upon payment of the annuities plus surcharge (see sec. 2.5).
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However, on the facts, the Board noted
that the initial mistake was that the application was not uploaded by the applicant into its docketing and annuity system. A cross-check was only performed on the data entered into the docketing system against documentation provided by attorneys and its internal proceedings
were unsuitable for detecting missing data in the docketing system; the
applicant's cross-checking system could not be considered independent and effective as demanded by the Boards (see sec. 3.2.3, 3.2.4).
The applicant's argument of an isolated error in an otherwise functional system was dismissed, because "the mere allegation that the case at issue was the first instance of unintended failure does not show that a satisfactory system was in place and that thus all due care has been taken" (see sec. 3.2.6). On the facts, the applicant's appeal for re-establishment of rights was dismissed.
Comment
The real error by the applicant was losing or ignoring the EPO communications drawing the applicant's attention to the imminent loss of rights. After all, had the applicant compared these documents with the contents of its docketing system it could not have failed to notice that the corresponding application had not been entered into the system in the first place."
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