J 0012/82 (Late request for examination) 11-03-1983
I. The mere payment of the examination fee within the time limits provided for in Article 94(2) and Rule 85b EPC cannot be a substitute for filing the request itself in good time. If such a request has not been filed within the time limits, the European patent application is deemed to be withdrawn under the terms of Article 94(3).
II. Article 122(5) EPC excludes "restitutio in integrum" not only where the time limit provided for in the specifically mentioned Article 94(2) is not observed, but also where the period of grace laid down in Rule 85b, extending the normal period for the request for examination, is not observed.
Late request for examination
I. European patent application No. 80 870 046.2 was filed on 23 October 1980 and published on 6 May 1981 with the European search report. On the same date, the European Patent Bulletin mentioned the publication of the application and of the search report and by letter dated 11 May 1981 the applicants received the communication provided for in Rule 50(1) EPC.
II. By letter dated 4 December 1981 the Receiving Section drew the applicant's attention to the fact that they had not submitted their request for examination by the end of the period provided for in Article 94(2) EPC, but that by virtue of Rule 85b they still had at their disposal a period of grace of two months as from 7 November 1981 to make good this omission, provided that a surcharge was paid, failing which their patent application would be deemed to be withdrawn. However, the request for examination was not filed until a telex was received by the EPO on 13 January 1982, confirmed by letter of the same date, received on 15 January 1982. On the other hand, the amount of the examination fee and the surcharge was entered in a Giro account held by the Office in Brussels on 30 December 1981.
III. In a decision dated 23 March 1982, the Receiving Section held that the request for examination had not been filed within the normal time limit laid down in Article 94(2) EPC, nor within the period of grace provided for in Rule 85b. It added that the copy of the payment order of the examination fee could have exceptionally been treated as the request required under Article 94, but that since this document did not arrive at the EPO until 8 January 1982, i.e outside the period laid down by that Article, it could not be taken into consideration. Consequently the Receiving Section declared that the European patent application was deemed to be withdrawn and that the applicants could not have their rights re-established. It stated that the examination fee and the surcharge would be refunded as soon as the decision became enforceable.
IV. The applicants lodged an appeal, received on 17 May 1982, against that decision, pleading for its rescindment, and filed a Statement of Grounds with the EPO on 16 July 1982. The appeal fee was paid on 17 May 1982.
V. The appellants, while admitting that the normal period and the period of grace had expired at the time of filing the request for examination, hold nevertheless that the payment order made by them on 22 December 1981, processed on 23 December 1981 by their bank and entered on 30 December 1981 in a Giro account held by the Office, established sufficiently on the first date, i.e. before expiry of the period of grace provided for in Rule 85b EPC, their intention to file the request for examination for it to be treated as the request itself. They add that they cannot be held responsible for the fact that what they call "the original of the payment order" despatched in Brussels on 30 December 1981 did not arrive in Munich until 8 January 1982.
VI. Invoking unfavourable circumstances which prevented the request from being filed within the time limits, particularly the absence from work at the time of the employee responsible, they request to be re-established in their rights, without however having paid the fee stipulated in Article 122(3) EPC. At the invitation of the rapporteur on 29 September 1982 to state their arguments, the appellants, by letter dated 25 November 1982, emphasise that the Receiving Section appeared to consider that if the payment order had reached the Office by the end of the period of grace provided for in Rule 85b, it would have been possible exceptionally to consider the time limit for filing the request to have been observed. In addition they formally reiterate their request for their rights to be re-established.
1. The appeal complies with Articles 106-108 and Rule 64 EPC and is, therefore, admissible.
2. It is not contested that under the terms of Article 94(2) the request for examination could have been filed up to 6 November 1981. The two-month period of grace expired on 6 January 1982, not on 7 January as maintained by the appellants. The method of calculation was set out in the "Reasons for the Decision" taken by the Board on 26 November 1982 (No. J 09/82, OJ EPO - 2/1983, page 57) and does not need to be restated here since it is irrelevant, the date of payment of the fee being 30 December 1981 and that of the request 13 January 1982.
3. The first problem to be dealt with in this case is to establish whether the payment of the examination fee made before expiry of the period of grace for filing the request may be treated as if the time limit for filing the request itself had been observed. It is not in fact necessary to recall the date of the payment order since it, like the payment itself, was within the period of grace. The fee in question having been entered in the Giro account held by the Office in Brussels on 30 December 1981, the payment was effectively made on that date (Article 8(1) of the Rules relating to Fees).
4. Although the intention to file the request can unquestionably be assumed from the payment of the examination fee, the unequivocal terms of Article 94 EPC do not permit any wide interpretation - in fact the Article requires that the request be written, filed within a certain period and accompanied by payment of the fee within the same period. The fact that one or two of these conditions have been fulfilled cannot exempt the applicant from fulfilling the third condition within the specified period. The Article would otherwise have been worded differently. In addition it should be noted here that the authors of the Convention, i.e. the Contracting States, gave the request filed within the time limit extensive effects: it may not be withdrawn (Article 94(2) last sentence), yet on the other hand if it is filed late, the patent application is automatically deemed to be withdrawn (Article 94(3)).
5. As regards the "restitutio in integrum" provided for in Article 122 EPC, paragraph 5 of that Article specifically excludes from it in particular the non-observance of the time limit laid down in Article 94(2) for filing the request for examination. Although Rule 85b concerning the period of grace for filing the request for examination is not included in the list of cases where "restitutio in integrum" is excluded, this hypothesis should with respect to the impossibility of applying Article 122 be treated as that of non-observance of the normal time limit.
6. In fact, a period of grace within the meaning of Rule 85b EPC is really an extension of a period, not a new period to which separate rules could apply. In this respect it is perhaps regrettable from the terminological point of view that Rule 85b is entitled "period of grace" (German: "Nachfrist", French: "délai supplémentaire") and not as in Rule 85a "extension of time limits" (German: "Verlängerung von Fristen", French: "prolongation des délais"), but no consequence can logically be derived from these semantic differences, particularly since in the actual texts of Rules 85a and 85b the term "period of grace" (German: "Nachfrist", French "délai supplémentaire") is adhered to.
7. There is no doubt that the Administrative Council of the EPO when adopting Rules 85a and 85b did not envisage that their beneficiaries should profit from the "restitutio in integrum" refused them within the normal period provided for in Article 94(2). This is specifically stated with respect to Rule 85a in the explanatory memorandum submitted to the Administrative Council on 20 October 1979 by the President of the EPO: "restitutio in integrum in respect of the extended time limit is still excluded" (CA/61/79 VII-2). This point was apparently so self-evident that it was not raised during the discussions preceding the adoption of the Rule, as reflected in the Minutes of the 7th meeting of the Administrative Council of the EPO held in Munich from 26 to 30 November 1979 (CA/PV 7 points 217 to 245). Since the question appeared thus to have been easily solved with respect to Rule 85a, the problem was not raised again with regard to Rule 85b, given that the same conditions applied.
8. In addition, it would in all fairness be paradoxical to appear to be more liberal towards somebody who has not been able to observe the period of grace than towards somebody who under the same conditions was unable to observe the normal time limit.
9. Finally, to concede that "restitutio in integrum" applies to the non-observance of the period laid down in Rule 85b EPC would allow the unequivocal prohibition contained in Article 122(5) to be evaded. Such an interpretation would clearly be contrary to the intentions of the authors of the Convention.
10. It is superfluous in this case to point out that no fee in respect of "restitutio in integrum" was paid within the ruling time limit. This would have been sufficient to deprive the appellants of the benefit which they claim.
11. All the provisions of the impugned decision should therefore be upheld.
For these reasons, it is decided that:
The appeal against the decision of the Receiving Section of the European Patent Office dated 23 March 1982 is rejected.