From the Case Law of the Boards of Appeal III, E, 4.5.2(b), the following responsibilities can be discerned if the attorney is to be seen as having taken all due care:
- Even if renewal fees are paid by someone else, the appointed professional representative remains responsible in the procedure before the EPO, and had to take the necessary steps to ensure payment if intended.
- Where the European representative has every reason to believe that it was the appellant's intention to continue prosecution of the application, it is insufficient for the European representative only to send a single reminder more than four months prior to the expiry of the critical term.
- It is established jurisprudence that a representative, once appointed - and even if the renewal fees were paid by someone else - remained otherwise fully responsible for the application, and that this included a continuing obligation to monitor time limits, send reminders to the applicant, etc.
- A professional representative is not obliged to pay renewal fees on his client's behalf if he has received no instructions to do so. However, the representative's conduct has to be assessed according to the extent to which he has done all that is necessary to ascertain the client's true wishes. It is not the number of (unanswered) reminders that is decisive, but when those reminders were sent in relation to the date on which the time limit expired, how the reminders were formulated and what the representative's duties were in relation to the client.
The orthodox view of the EP attorney's responsibilities can be seen from the first instance decision of the Examining Division which held:
[The decision then noted that the EP attorney had, in the overdue period, sent status enquiries twice to the EPO and reminded the Office of a PACE request that was on file.]
On appeal, the Technical Board of Appeal, which was expanded to five members, executed a surprisingly neat manoeuvre to sidestep the existing jurisprudence, and is to be applauded for recognising the commercial realities of acting as an EP attorney where one is not responsible for renewal fees, and being expected to put in place a comprehensive reminder regime for which nobody will pay:
An interesting point from the case file is that an informal survey was carried out and submitted to the EPO, where the EP attorneys polled 20 firms across several European countries asking what their practice was with regard to overdue renewal reminders from the EPO: while all 20 firms confirmed they would send the official overdue reminder on to their client, only 7 out of the 20 firms indicated that they would follow up, overwhelmingly because they could neither charge for such activity or expect to be paid for it when they were not responsible for renewals.
The IPKat was surprised to see that the decision issued with the lowest-priority distribution code "D", meaning that it is not to be circulated, other than by publication on the website. Every decision from the Boards is given a distribution code of "A" (publication in Official Journal), "B" (circulation to all Board members and chairs), "C" (circulation to Board chairs), or "D" (no circulation). While most decisions are "D" category, this is because most are entirely conventional and simply follow existing case law.
T 942/12 warrants circulation to a wider audience, given that it distinguishes fundamentally over the conventional case law and creates an important new exception to the rather onerous due care regime that previously applied to EP attorneys in the area of renewal fees. The IPKat hopes that this decision is noted by the editors of the Case Law book in due course, and in the annual summary of important case law that issues as a special edition of the OJ.
Finally, full credit must go to the two firms that made the arguments that ultimately convinced the Board to recognise that the realities of an instruction not to monitor renewal fees should mean just that, namely Page Hargrave and Eisenführ Speiser, and thanks to Keith Gymer for pointing the IPKat towards the decision.