Thursday, 4 August 2011

Rule 126 EPC & deemed delivery

As part of my day job in the real world I have been looking into how Rule 126 EPC is interpreted, and in particular what is meant by Rule 126(2), which states:
"Where notification is effected by registered letter, whether or not with advice of delivery, such letter shall be deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the European Patent Office to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be."
It would be impolite of me to go into the particular details of why this is of interest, at least while the issue is still alive (an appeal is currently pending). I shall just say that someone has been attempting to put a somewhat unconventional interpretation on Rule 126(2) in an apparent attempt to get themselves out of a hole. Fortunately this someone does not work where I do.

The conventional interpretation of the "ten day rule", as it is usually known, is that the deadline for responding to a communication from the EPO where Rule 126(2) applies (i.e. a due date that is specified as running from notification of the communication) is calculated by first adding 10 days to the date on the communication, then adding the appropriate number of months (bearing in mind Rule 131), then taking into account whether the resulting day is one on which the EPO is not open for business (see Rule 134, together with the EPO's holidays for 2011 here) and finally determining the actual final day on which the act required can be done, whether this is responding to an examination report, decision to refuse or whatever.

So far, so easy. If the rule is followed to the letter, there should be no doubt about what the final due date will be.  Some people do, however, still get it wrong (see here for a good example of why it is very important to do the calculations in the right order), the results of which can be catastrophic, or at least expensive and/or embarrassing.

One interesting way of getting it wrong is, as I have discovered, interpreting Rule 126(2) to mean that the notification is only effected when the actual person to whom the communication is addressed sees it. This would normally be the patent attorney representative for the application. Could it possibly be the case that the date from which a due date is calculated is when the representative first sees the communication, for example when he gets back from holiday? This is what was argued in T 743/05, which resulted from a grounds of appeal being filed late, at least according to the conventional way of interpreting Rule 126(2) (corresponding to Rule 78(2) EPC1973). The representative argued that, since the decision to revoke the patent was first seen by him on 24 May 2005, this was the date on which the four month period for filing the grounds of appeal started, even though the decision dated 12 May 2005 had been received by the representative's office on 16 May 2005.  The representative argued that the wording in Rule 78(2) "delivered to the addressee" should be interpreted as "delivered to the person to whom the notification is addressed", which was himself.  As an auxiliary, however, the representative requested re-establishment of rights under Article 122 (or restitutio in integrum, as it was then called) since, by applying the literal meaning of Rule 78(2) the representative had taken all due care and there was no reason to believe that the provision should be interpreted otherwise.

Unsurprisingly, despite the representative's valiant attempt the board of appeal was having none of it and dismissed the appeal.  The main reason behind not taking the "literal meaning" of the rule was that this "would lead to an inextricable situation which would have as a consequence uncertainty for all the users of the European patent system. The answer to the question whether notification has effectively taken place could in that case depend entirely on the honesty, goodwill or organisational skills of the professional representative" (reasons, 1.7).  The request for re-establishment also had to be refused because the claimed interpretation, being a mistake of law on the part of the representative, could not be excused given the requirements for becoming a qualified representative (all grandfathers should take note, as it unlikely they would be given any different treatment to those who have taken and passed the EQEs).  All due care had not therefore been taken by the representative.

What I wonder now is whether, given exactly the same kind of fact situation, i.e. a letter being received by a representative's office within 10 days but the named representative not actually seeing it until later, it could ever be the case that the due date for responding could be any later than the usual 10 days + x months (+r134 extra days, as required).  I think not, and would expect a referral to the enlarged board if a board of appeal was minded to decide otherwise, but would like to see what others might think if they were placed in this situation. Any ideas?


  1. Regarding T 743/05, I would say it is quite simple: a letter is delivered to the addressee when it is has reached the addressee's domain, i.e. his firm's mailbox. There is no need to decide that "addressee" has to be interpreted as "the attorney's firm" before the appeal could be found inadmissible, as the representative suggested in that case.

    I don't see how a Board could seriously consider that it is relevant for R. 126(2) that the representative has actually seen the letter.

    Maybe it could be argued that R. 126, unlike R. 125(4), is silent on the determination of the "date of notification", i.e. the day on which a notification by post takes legal effect, so that in accordance with R. 126(4) the law of the State in which the notification is made applies. However, I don't know of any member state that uses the "cognisance theory" (letter takes legal effect when it reaches the addressee in person) instead of either the "receipt theory" (letter takes legal effect when it reaches the addressee's domain, i.e. his mailbox) or the "dispatch theory" (letter takes legal effect when it is sent), but then again I only just found out that the term "cognisance theory" exists (and I'm still not sure that this is not a single person's invention). In any case, I don't see how a Board could seriously consider that the date of notification is not determined by R. 126(2), even though R. 126(2) could have been formulated better.

    Slightly more promising might be the argument that R. 125(4) "clearly" requires the representative to have received the letter in person (e.g. in a case where the EPO has erroneously sent the letter to the applicant, R. 130(1)). If R. 125(4) requires receipt in person, then so should R. 126(2), both provisions referring to when the document has reached the addressee. (Well, if one is really perverted, one could argue that according to R. 125(4) a document that was sent to the applicant instead of his representative is notified once the applicant (= the addressee) has received it... the possibilities for unreasonable interpretations are endless.)

  2. Actually, R. 131(2) states that time periods start on the day after the (deemed) receipt of the document notified. So the formulation of R. 126(2) is sufficiently clear and there is no room for the argument based on R. 126(4) (law of the member state).

  3. Another interesting question is what does this mean: "it shall be incumbent on the European Patent Office to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee"?

    We received an official communication a month after it was sent and got in touch to mention that to the EPO, so that they knew when the deadline would expire. In the end we filed within a 2 month extension of the deemed deadline, but by that time they still had not completed their investigations. The formalities officer seemed to think that their investigations were bound to find that it arrived on time, which I thought very odd as we knew it arrived late.

    Does anyone know what the investigations involve?

  4. Judging from T 529/09 and J 9/05, the EPO asks Deutsche Post and then weighs the evidence.

  5. Last year I received an examination report well after the 10 day period. As I knew the client would need plently of time to consider the objections, I wrote to the EPO, informing them of the actual date of receipt and requesting that the period for reply be amended accordingly. Instead of adjusting the deadline, they simply reissued the communication, the period then being determined by the date of the reissued communication: result!