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Thursday, 3 December 2015

G1/14: An unnecessary question

The Enlarged Board of Appeal of the EPO delivered its judgment in the G1/14 referral on 19 November 2015 (so far only available in German). The decision is short, but not sweet for the referring Technical Board of Appeal 3.2.06: the EBO held that the question was unnecessary, because if the Technical Board had applied the law correctly, the question would not have arisen.

The Technical Board wanted to know whether a notice of appeal that was filed after the time limit according to art. 108 EPC was to be deemed inadmissible or not filed (note that this question is different from the one in G2/14, where the notice was filed timely, but the fee was paid late. G2/14 was terminated because the patent in question lapsed for non-payment of the annual fee).
Merpel is searching for advice of delivery
The facts are such that the decision of the Opposition Division revoking the patent was sent to the proprietor’s representative by UPS and was, according to the “Tracking Information”, accepted on the premises of the representative on 26 April 2013 by a person named “Weber”. On 7 May 2013, the representative signed the receipt (EPA Form 2936) and on 8 May 2013, sent it by fax to the EPO. Notice of appeal was subsequently filed on 8 July* 2013 (Monday), and the fee was paid on the same day.
According to the appellant, the time limit started on the day the receipt was signed, because German law applied since the formalities of Rule 126(1) had not been complied with (see Rule 126(4)). The Technical Board disagreed, holding that the “Tracking Information” was an “advice of delivery” in the sense of Rule 126(1), and delivery therefore effected on 26 April 2013. Rule 126(1) in force at that time read:
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.
The Enlarged Board of Appeal held that the Technical Board had not complied with Rule 126(1): Rule 126(1) required notification by post with “registered letter with advice of delivery”. UPS was not the post and incapable of serving registered letters with advice of delivery, and “Tracking Information” by UPS was not “advice of delivery” in the sense of Rule 126(1). Had the Technical Board correctly applied the law, the question whether a late filed notice of appeal was to be deemed inadmissible or not filed was moot, because the notice was filed timely.

Note that the wording of Rule 126(1) has changed on 1 April 2015. Rule 126(1) now reads (changes highlighted):
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 or equivalent. All other notifications by postal services shall be by registered letter.
The change was effected to allow the EPO to choose any postal service provider it considers suitable for notifying its decisions, summonses, communications and notices (see Notice A36 of 30 March 2015). In other words, in the future the relevant question is whether UPS “Tracking Information” is an “equivalent” of an advice of delivery, which this Kat would answer with a tentative “yes”. But this question was not before the EBA,** and the question that was was unnecessary indeed.

Since the EBA** did not answer the referred questions in both G1/14 and G2/14, we will have to wait for another day to learn whether a late filed appeal is inadmissible or “not filed”, which is relevant for the question whether the EPO has to refund the appeal fee.
photo credit: you've got catmail via photopin (license)
* the initial post said "May", an obvious typo.
** further typos corrected - see comments


Anonymous said...

Thank you for the brief abstract of the decision.

But in the last two paragraphs you use the abbreviation EBO.
I think you mean EBA (Enlarged Boards of Appeal, not Enlarged Boards of Office).

(no need to publish this comment - I just stumbled over this)


hello Vienna said...

EBO for Enlarged Board of Appeal, that is unusual. Or did you mean Enlarged Board of Österreich?

Kant said...

Sadly, it appears that the patent proprietor has abandoned this patent during the course of the time the enlarged board were considering the matter.

Kant said...

Oh, and a further comment. If the language of the proceedings is German, why is the President providing his comments in French?

Anonymous said...

The question whether UPS in the present form is equivalent to a registered letter with delivery advice still remains. The wording of the new Rule seems to be not that brilliant.

Concerned commenter

Notsosure said...

I´m not sure that it can actually be inferred from that decision - which is in German - that "the notice of appeal was filed timely".
As I understand it, the EBA only said that the referring technical board should not have applied Rules 126(1) and (2) because these Rules only provide for notifications by registered mail with advice of delivery, but fail to cover any other means of notification such as via UPS (see point 8 of the Reasons).
It was probably not the EBA´s duty to decide on the admissibility of the notice of appeal, but one logical consequence of the non-applicability of Rule 126 might be that the notification of the first instance decision was actually deffective, so that it could not have triggered any time delay whatsoever.
Let´s see how the case will now progress.

GHV said...

This case is somewhat particular. Whether the delivery by UPS was a notification by registered letter with advice of delivery, was not at all at issue in the referral decision of the TBA. On 17 July 2014, Dr. Wegner submits his amicus curiae, wherein he essentially notes that the term "advice of delivery" refers to a particular kind of document regulated in the Universal Post Convention. Only a year later, while G1/14 was still pending, the relevant EPC rule was changed. Before then, was the EPO just using UPS without thinking much of Rule 126 EPC?

Raoul said...

The answer from the EBA is not surprising.

For the EBA, the applicable regulation was not respected, and that's it. In such a circumstance a referral to the EBA seems useless.
At the date of notification of the decision of the OD, 25.04.2013, R 126 provided that the notification was by registered letter with acknowledgment of receipt. There was no question of postal services. It is only since 01.04.2015 that using postal services, e.g. UPS has legal value.

To claim that the appeal period ended on 08.07., because the representative had returned to his office on 07.05 and had send the form on 08.05., is rather daring. The adoption of the 10 day rule was precisely to avoid any ambiguity as to the date of receipt. If the position of the representative was considered correct, it would be possible for the representative to decide himself when the appeal period starts. This cannot be.

It should be noted that German representatives have an annoying tendency to refer to the national provisions in their arguments, especially in case of applications for review. In the referring decision, the BA has clearly said that German law did not apply, cf. 5 and 6 of the reasons.

It should be clear slowly for German representatives that decisions of the BGH cannot be transposed into European procedure.

The mistake lies within DG2, Support services. A clever "manager" of DG2 probably had the genius idea to be modern and therefore to use UPS instead of the post office, i.e. to apply to outgoing mail the possibility given for incoming mail by using UPS. Here also a ten days rule applies.

I am not sure that in the long run this is cheaper, but this is a different topic. In any case the result is there. Until 31.03.2015 this approach was not appropriate.

The BA who made the referral, may be regretting having brought the matter to the EBA. Anyway, after the three amicus curiae letters, case law and interpretation of Art 108 (1) is clear: the appeal is only deemed filed when the appeal fee is payed. The room for interpretation here is nil. Why then bother EBA?

It seems to me that it is the amicus curiae letter of Bardehle that raised, rightly so, the problem with R 126 (1).

It remains to verify that the shipment by UPS provides the same guarantees as the sending by post. According to Bardehle this seems not the case. Even if UPS offers the same warranty as the post office, this is probably not for the same price, so what the advantage of using UPS is?

I am curious to see what the BA will decide. They can decide that the time limit for appeal has never started, or that is started on 08.05.2013. If the latter is the case, then they may argue this in preservation of good faith and in view of legitimate expectations of a party.

According to R 3(1) any document filed with the EPO can be in any official language of the EPO. It might be uncommon for the President to address the EBA in a language other than the language of proceedings, but this is perfectly legal. As the rapporteur of the case was a french speaking member of the Boards of appeal, he might have thought to be wiser if the comments are in French.

The long developments in the comments of the President, presuppose the admissibility of the referral, which is not the case. The efforts made were thus in vain. It is somewhat surprising that the problem of the applicability of R 126(1) was not noticed by the President, or better his advisors, as the problem had been raised clearly in the first amicus curiae filed by the the firm BP.

Convention watchdog said...

This is the reaction of the EBA to the Office's readiness to switch from notification by post as prescribed in Rule 126(2) in the then applicable version to notification by UPS before having changed the Rule.The Rule was not amended until this question was pending before the EBA. Another example of the attitude of the EPO that the law is simply regarded as an obstacle to efficient management. This shows how important the control of the Office by an independent jurisdiction is, an independence which is in danger by the structural reform initiated by an administration which does not like to be controlled.

Kant said...

Rauol, since the decision was not notified by registered letter with advice of delivery, presumably Rule 126(4) becomes relevant which explicitly refers to national law.

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