E. Wiedereinsetzung in den vorigen Stand

In T 549/24, the board held that intentional deception by an assistant designed to bypass existing cross-check controls constitutes exceptional circumstances justifying re-establishment under Art. 122 EPC.

In the case under consideration, the application had been deemed withdrawn pursuant to R. 71(7) EPC, and no remedy had been pursued by the applicant within the time limit set by the communication under R. 112(1) EPC. The examining division had found the request for re-establishment of rights in respect of the time limit for requesting further processing, filed by the then newly appointed representative, to be admissible but not allowable. The examining division could not conclude that the applicant had acted with all due care required by the circumstances, as it found no evidence that the applicant had a satisfactory monitoring system for the activities of Mr R., the assistant in charge of the patent portfolio, nor an effective substitution system for Mr C., the company’s CEO and the person bearing ultimate responsibility, who was suffering from deteriorating health.

The board disagreed. It found that Mr C. was not entirely prevented from carrying out his professional duties. While his condition did limit his ability to perform certain tasks, it did not render him completely incapable. Mr R. had been working as Mr C.’s personal assistant when he was entrusted with responsibility for the applicant’s patents. Even during the most severe phase of his illness, Mr C. regularly contacted Mr R. by telephone and made occasional short visits to the office to inquire about the status of the applicant’s patents. The board considered that, in the circumstances of the present case, a complete substitution of Mr C. was not necessary to satisfy the required standard of due care. On the contrary, the board regarded this a reasonable arrangement in the case of illness of the responsible person, as it served to compensate for the limitations resulting from Mr C.’s medical condition and allowed him to remain in a position to continue performing his functions, thus complying with the applicable standard of due care.

With regard to the supervision of Mr R., the board considered, in view of the new evidence submitted on appeal, that the applicant did maintain a comprehensive monitoring system, as required by the case law in view of the size of the company, including an online spreadsheet editor for tracking the patent portfolio. This spreadsheet was regularly updated with action points and time-limit reminders. In addition, weekly face-to-face meetings were held with the responsible person whenever Mr C. was present, and, during the most severe phase of Mr C.’s illness, these took the form of regular phone calls and short office visits. The board was therefore satisfied that Mr C. had exercised all due care under the circumstances, including selecting, instructing and supervising his assistant. The board noted that Mr R. had deliberately concealed information, going so far as to create a private email account to bypass the company’s servers, and had either failed to update or had falsely marked IP records relating to renewal time limits. As a result, Mr C. had been kept unaware of certain time limits, despite having exercised all due care, since Mr R’s intentional deception was designed to also bypass the cross-check controls put in place by Mr C. Contrary to the examining division’s approach, which did not assess whether Mr R.’s behaviour justified re-establishment of rights, the board held that the disruption caused by Mr R.’s behaviour constituted exceptional circumstances justifying re-establishment under Art. 122 EPC.

The board observed that the circumstances of the present case differed meaningfully from those in T 516/09. By contrast, Mr C., acting in his capacity as the applicant’s CEO (and not as a professional representative), had implemented a system for tracking time limits using an online spreadsheet tool and actively monitored its operation. This system included cross-checks and regular updates with Mr R. Unlike the representative in T 516/09, Mr C.’s core responsibilities did not centre on patent administration, and he could not reasonably have been expected to detect deliberate deceptions designed to circumvent internal controls. The board therefore concluded that the present case did not present the supervisory deficiencies identified in T 516/09.

Accordingly, the decision under appeal was set aside and the appellant’s rights were re-established.

In case T 2615/22, the parent application of the contested patent was filed on 10 March 2015, i.e. more than twelve months after the filing dates of the priority applications P1 and P2. Upon a request for re-establishment of rights by the then applicant of the parent application, the Receiving Section decided on 14 January 2016 to restore the priority period.

The opponent-appellant argued that the patent was not entitled to the priority of P1 and P2. It considered that the Receiving Section was not competent to take that decision and that it did not correctly apply the all-due-care criterion in its decision. It contended this decision in the application proceedings should be set aside in the opposition appeal proceedings.

The present board did not see any reason to deviate from T 1482/21 (relating to the patent granted on the parent application) according to which the Receiving Section was competent to take the decision of 14 January 2016, and that this decision was final and that this prevented other departments of the EPO such as an opposition division or a technical board of appeal which decide on questions of priority in other, subsequent proceedings from reviewing and overturning the Receiving Section's decision. In accordance with these conclusions, the present board agreed that the opposition division had to acknowledge the Receiving Section's decision to grant the request for re-establishment of rights in respect of the priority period.

As to whether a positive decision of the Receiving Section on re-establishment of rights was open for review in subsequent opposition/appeal proceedings, the board did not consider convincing the opponent’s arguments. As set out in T 1482/21 if the Receiving Section grants a request for re-establishment of rights in respect of the priority period, the applicant is not adversely affected under Art. 107 EPC. As the applicant is the only party to the proceedings before the Receiving Section, a favourable decision on such a request is not appealable and becomes final immediately..

The nature of opposition proceedings and the case law on res judicata were discussed in detail during the oral proceedings before the board. The board recalled that opposition proceedings are not designed to be a continuation of examination proceedings (G 3/14). This also meant that, legally speaking, opposition proceedings must not be understood as any kind of appeal proceedings in relation to the proceedings before the Receiving Section and the examining division. Accordingly, an opposition division does not have the power to review and set aside a procedural decision taken in these proceedings. Opposition is not a legal remedy in the classical sense and it does not have the effect of transmitting the case to a superior tribunal. Not all possible irregularities in an application can be reviewed in opposition proceedings, not even all substantive ones, but only those which are listed as grounds for opposition in Art. 100 EPC. An examination of the same substantive patentability requirements – which qualify as grounds for opposition – may be undertaken by different departments in different proceedings, and there is indeed no binding effect in that regard. The Receiving Section's decision on re-establishment of rights does not concern the assessment of a substantive requirement which qualifies as a ground for opposition. It concerned a purely procedural matter decided in ex parte proceedings in the then applicant's favour.

The fact that a purely procedural matter may have ramifications on whether a patent exists, does not change its qualification as a procedural matter. This may result in a patent coming into existence which may otherwise not have been granted. Nevertheless, such possible irregularities in the patent grant procedure do not qualify as a ground for opposition and therefore cannot be reviewed in opposition proceedings or subsequent opposition/appeal proceedings.

In T 1874/23 the board refused the request for re-establishment of rights and, as a consequence, rejected the appeal as inadmissible. The appellant’s request for oral proceedings was found to be obsolete.

The board recalled R. 136(1) EPC and noted that it corresponded to the principle of "Eventualmaxime" under which the request for re-establishment of rights must state all grounds for re-establishment and means of evidence without the possibility of submitting these at a later stage. Only if this requirement for immediate and complete substantiation within the time limit has been fulfilled, it might be permissible to complement the facts and evidence in later submissions, and provided that they do not extend beyond the framework of the previous submissions (e.g. J 19/05). According to the board, this was not the case for the request for re-establishment in the proceedings at hand. As a consequence, no further procedural steps were permissible, notably no further communication by the board and no appointment of oral proceedings. Neither would serve any legitimate purpose. It was not the purpose of oral proceedings in the context of proceedings for re-establishment to give the appellant a (further) chance to substantiate their factual assertions or to provide evidence despite the absence of factual assertions (e.g. J 11/09).

The board stated that it was undisputed that the right to oral proceedings as guaranteed by Art. 116(1) EPC was a cornerstone of proceedings before the EPO. The jurisprudence of the boards generally even followed the assumption of an "absolute" right to oral proceedings upon request as a rule, without room for discussion by the board, and without considering the speedy conduct of the proceedings, equity or procedural economy. However, even this "absolute" right to oral proceedings upon a party's request was subject to inherent restrictions by the EPC and procedural principles generally recognised in the contracting states of the EPO (Art. 125 EPC and J 6/22). Limits to the "absolute" right to oral proceedings had also been recognised in the jurisprudence of the boards (e.g. G 2/19, T 1573/20). Moreover, the boards' jurisprudence had repeatedly emphasised that the requirement of timely legal certainty, in particular in the context of intellectual property rights, was also recognised as a fundamental principle of the EPC. The parties' rights to a fair hearing within a reasonable time, in the context of the RPBA, had also been explicitly underlined by the boards' jurisprudence. In summary, where, as in the present case, oral proceedings served no legitimate purpose, the need for legal certainty in due time trumped and even prevented a board from appointing oral proceedings (J 6/22).

As to the interpretation of Art. 116(1) EPC, the board noted that the jurisprudence of the boards had reiterated the importance of a "dynamic" interpretation of the EPC in light of its object and purpose. In this context, the board referred, among others, to the development of the case law of the ECtHR on Art. 6(1) ECHR, where the ECtHR had also identified occasions where oral proceedings could or even should be dispensed with in pursuit of a party's right to a fair trial. In the board’s view, a literal interpretation of Art. 116(1) EPC conflicted with the legislature's aims when oral proceedings would serve no purpose and thus only prolong proceedings to no one's avail. A literal interpretation of Art. 116(1) EPC thus had to make way for a dynamic and evolutive understanding instead, in light of the provision's object and purpose. The very purpose of Art. 116(1) EPC could be summarised as providing for the essential right to be heard in oral proceedings only in so far as these served a legitimate purpose and thus did not run counter to the need for legal certainty in due time, as a further essential element of a fair trial for all parties.

The board concluded that, at least in the specific circumstances of the case in hand, legal certainty in due time, just as procedural economy, as further essential cornerstones of a fair trial, had to prevail (for essentially the same circumstances see J 6/22). In light of the principles of a fair trial and legal certainty in due time, there was no absolute right to oral proceedings under all circumstances (J 6/22). No oral proceedings had to be appointed in re-establishment proceedings where the "Eventualmaxime" principle would deprive oral proceedings of its very function as a further cornerstone of a fair trial and even run counter to it.