For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Tuesday, 2 February 2010

Electronic filing at the EPO - how not to do it

The IPKat noticed, thanks to Laurent Teyssedre's blog, some further clarifications on what can and cannot be done with the EPO's electronic filing system, known as epoline, and what the consequences are for not doing things quite right.

Some things, such as filing new applications and filing responses to examination report, have been possible via epoline for some time.  What was not possible, however, was filing appeal documents electronically.  This was emphasised by the decision of T 765/08, in which an appeal was deemed not to have been filed because the documents were filed via epoline, even though the fees were duly paid and the documents apparently filed without trouble.  This strange situation was rectified by decision of the EPO President dated 26 February 2009, which simply stated that "Documents in proceedings under the EPC may be filed with the European Patent Office in electronic form", although included some quite specific requirements on what was meant by a signature, which needed to accompany any documents filed electronically.  According to Article 7 of the decision, a signature could be various things:

(1) Where filed documents require signature, subject to Article 8 this may take the form of a facsimile signature, a text string signature or an enhanced electronic signature.
(2) A facsimile signature shall be the facsimile reproduction of the filing person's signature.
(3) A text string signature shall be a string of characters, preceded and followed by a forward slash (/), selected by the signatory to provide evidence of his identity and of his intent to authenticate the message in question.
(4) An enhanced electronic signature shall be an electronic signature either issued by the European Patent Office or accepted by it.
A recent decision, T 1427/09, has now clarified what happens if documents that are filed online do not have a valid signature.  In this case, a notice of appeal and grounds of appeal were filed in time, but neither carried a signature of the authorised attorney on the case.  The electronic signature used to file the documents instead related to two different people, neither of whom were authorised. The EPO appeal board then issued a communication stating that the documents were deemed not to have been signed, and invited the appellant to file signed copies within two months.  The appellant then filed the documents, with a handwritten signature, by fax.

The only issue to be decided was what, if any, legal consequences there were for not having the documents signed, since both the decision of the President and Rule 2(2) EPC were silent on the matter, although Rule 50(3) possibly allowed this kind of defect to be rectified.  As far as the Board was concerned, the principle that the signature of an unauthorised person shall be treated like a missing signature should apply not only to handwritten signatures but also to electronic signatures. As a result, the electronic signature of an unauthorised person should be treated under Rule 50(3) like the filing of an unsigned document received by mail or fax.  The signed copies were received in time, so the appeal was deemed to have been filed, the documents receiving their original electronic filing date.

The IPKat thinks that, although this decision is pretty esoteric, it is very important for anyone considering filing anything electronically at the EPO.  Mistakes will inevitably happen, and not having the correct electronic signature would, the IPKat imagines, be a very easy mistake to make.  Thankfully, it will be a mistake that is correctable and not fatal.

More about electronic signatures here (they are more complicated than you might think).

3 comments:

Anonymous said...

David has hit on an interesting legal point here. Indeed, if the signed version of the notice or grounds of appeal had not been filed within the period according to Rule 50(3), then the document in question is deemed not to have been filed. Where the document in question is the notice, this means that there is no appeal, because the notice was not filed.

According to Rule 99(3), Part III of the regulations applies mutatis mutandis to appeals (which includes Rule 50).

The signature of the notice or grounds is not a direct requirement under Rule 99 (which defines those requirements peculiar to an appeal), but rather a general requirement applied to all documents filed at the EPO (other than annexes). Furthermore, the failure to file the signed, corrected version of the notice of appeal means that there is no appeal, this is not a question of admissibility of an existing appeal. It is akin to a failure to provide a translation of the notice of appeal in time, which has the same effect of deemed non-receipt and the absence of any appeal (Art.14(4) and Rule 6(2)).

What is interesting here is the question of which legal remedy applies. If the appellant in this case had not filed the corrected signed versions of the notice/grounds of appeal within the time limit of Rule 50(3), would he apply the legal remedy for failure of the Rule 50(3) time limit (further processing) or that for the failure to file the notice and/or grounds of appeal in time (re-establishment)? I would be very interested to know if anyone knows of any case law which resolves this point.

Anonymous said...

Interesting question.

I would say "both", if still possible.
Because further processing will no longer be available if a patent is granted.

Helen Jones said...

I've had problems with appeal submissions too. One submission was signed using the EPO-supplied epoline smartcard of an EPA colleague in relation to an opposition appeal oral proceedings, by way of the opposition form 2300. This mentions submissions after appointment of oral proceedings, so seemd rather convenient. The BA registry complained the signature was wrong, but it would have been fine if submitted with the online form 1038. They mumbled about the signature being non-compliant, but couldn't really explain how a signature applied to a form 2300 would be any different to one on a form 1038 if created using the same card. We send appeal submissions with forms 1038 now, and categorise using the appeal names available with that, and it seems to work.

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