Patent renewal fees and your patent representative
If your European representative is responsible for paying the renewal fee on a European patent application then, not surprisingly, they must ensure that you, the applicant, are reminded that the renewal fee is due and take appropriate action. But what if another party is responsible for paying the renewal fee on the European patent application?
In the recent decision T942/12, the EPO has clarified where the 'duty of care' lies for paying renewal fees.
Before T942/12, if the renewal fees were paid by someone else then according to case law (J27/90, J11/06 and J12/10) the European representative remained responsible in the procedure before the EPO and had a continuing obligation to monitor time limits and send reminders to the applicant.
As discussed below, in the light of T942/12 the responsibility of the European representative for renewal fees has, in specific situations, changed.
T942/12 relates to the non-payment of a renewal fee and a request for 're-establishment of rights' under Article 122 EPC.
Article 122 EPC requires that 'all due care' is taken in observing time limits.
All due care requires proof that the non-observance of a time limit was caused by an isolated error in an otherwise properly working system; for example, a human error occurring for the first time due to pressure and not negligence may be regarded as an isolated mistake (T111/92).
T942/12 concerned an application which was transferred from one Australian applicant to another Australian applicant. There had also been a change in the Australian representative and a change in who was responsible for paying the renewal fees. The European representative did not change.
The initial request was rejected by the Examining Division and it was held that the European representative, the new applicant and the Australian representative had not shown 'all due care'. However, on appeal the Examining Division's decision was overturned for the reasons below.
The European representative had received explicit instructions that he "was not required to maintain renewal fee reminder records or attend to the payment of renewal fees".
When the European representative had received a standard notice issued by the EPO concerning the non-payment of a renewal fee, the European representative forwarded it to the Australian attorney. Nevertheless, the deadline for paying the renewal fee with the late payment fee was missed.
In connection to the duty of care by a European representative, the EPO held that when a European representative is expressly instructed not to monitor the payment of renewal fees
it cannot be expected that the European representative monitors renewal fee payments at his own expense (he will not be able to charge for fees for actions he is to refrain from according to his instructions). Furthermore, sending reminders against instructions may irritate the instructing party and may impair the relationship with the client. The client may have good reasons for giving such instructions, eg, to avoid receiving reminders from different sources that will lead to additional work and expense for him. Reminders from different sources can also be a source of confusion and thus lead to mistakes.
Previously it had been held by the EPO that
even if the renewal fee was paid by someone else, the European representative remained responsible in the procedure before the EPO and had to take the necessary steps to ensure payment (eg, J27/90, J11/06 and J12/10).
One difference in these previous cases to T492/12 is that there had not been explicit instructions for the European representative not to monitor the renewal fees.
It was held in T942/12 that the European representative's duty of care involved forwarding the standard overdue renewal fee notice to the Australian attorney, but it did not involve checking that the Australian attorney had received the notice and taken appropriate action.
The records and renewals department at the Australian patent firm had been notified that they were responsible for paying the renewal fee but there had been a failure to enter the application into the renewal fee monitoring system. Based on the facts of this case, the Board of Appeal considered the circumstances of this error to be an "isolated mistake".
Since it was found that an "isolated mistake" had occurred at the Australian patent firm and, as all parties had acted in good faith to keep the application alive, re-establishment was allowed.
Take home points
If your European representative is responsible for renewal fees on European applications then they should ensure that appropriate reminders are sent to you and, as appropriate, the renewal fee is paid.
If another party is responsible for renewal fees on European applications and there is no explicit instruction for the European representative not to be responsible for renewal fees, then according to the Boards of Appeal, your European representative should continue to provide the service of monitoring time limits and sending you reminders about paying the renewal fees.
If another party is responsible for renewal fees on European applications and there is an explicit instruction for the European representative not to be responsible for renewals fees, then the only responsibility in connection to renewal fees that your European representative has is to forward any correspondence concerning non-payment of renewal fees to you.