J 0014/02 30-12-2002

I. The international patent application PCT US 99/13751 (Euro-PCT n° 99 928 773.3) was filed on 17 June 1999 and the request for entry in the regional phase before the EPO was filed on 17 May 2000.

II. By a letter dated 10 November 2000, the Receiving Section drew the applicant's attention to the fact that:

- the examination fee and the designation fees for the designated states had not been paid,

- these fees could still be validly paid within a period of grace of one month provided the payment of the surcharge under Rules 85b and 85a(1) EPC was made,

- otherwise a new communication under Rule 69(1) EPC would be issued to inform him that the application would be deemed to be withdrawn, and

- the applicant might NOT be re-established in his rights (NOT was emphasized by the Receiving Division in its notification).

III. By a communication dated 16 February 2001, the Receiving Section notified the applicant of the loss of rights under Rule 69(1)EPC including mention of the means of redress within the period of two months pursuant to Rule 69(2) EPC after notification of the communication.

IV. The applicant by letter dated 13 July 2001 filed a request for re-establishment of his rights to pay the examination fee and the designation fees with surcharges.

He paid at the same date the examination and designation fees, with 50% surcharge and the third annuity with 50% surcharge and the fee for re-establishment of rights.

V. To support his request the applicant's representative contends that the principles of equity must set aside formal regulations of the EPC in view of the circumstances of the case. He explained that when entering the European phase, he did not receive instructions from the applicant regarding the date of the publication of the international search report and the countries for which designation fees were to be paid.

He tried to get this information and sent letters to the applicant's US representatives (15 June 2000; 17. November 2000) to inform them respectively of which states were to be designated and the amount of fees to pay, and of the Communication pursuant to Rules 85a and 85b) EPC. He never received answers because the applicant had never received the said letters.

To substantiate these submissions the applicant filed copies of the representative's letters dated 15 June 2000 and 17 November 2000, a statutory declaration from the applicant/inventor and from his US representative.

VI. By decision dated 7 September 2001, the Receiving Division refused the request for restitutio in integrum for the reason that the time limit mentioned in EPO form 1218 (communication of 10 November 2000) is excluded from restitutio in integrum.

VIII. By letter dated 7 November 2001 the applicant filed an appeal against this decision and submitted his grounds of appeal on 7 January 2002.

IX. By a letter dated 2 August 2002 the Registry drew the applicant's attention to Article 86(2) EPC and Article 2 of the Rules relating to Fees and to the fact that he had not paid the renewal fee for the fourth year on the due date (30 June 2002).

The letter further informed the applicant that if he did not pay the fee and the surcharge of 10%, within the six months time limit following the due date, the application would be deemed to be withdrawn.

X. The request of the appellant appeal is to set aside the decision and to re-establish the applicant in his rights to pay the fees, on the basis of principle of equity which must take precedence over the formal requirements of the EPC.