J 0007/83 (Interruption of proceedings) 02-12-1983
Interruption of proceedings
Examination fee/time limit for payment
I. European patent application No. 81420026.7 was filed on 2 March 1981, claiming priority from 28 February 1980. The European Patent Bulletin announced the publication of the European search report on 9 September 1981. The written request for examination prescribed by Article 94(1) EPC was made by the appellant on 2 March 1981, the date the application was filed. The six-month time limit for payment of the corresponding fee was due to expire, in accordance with Article 94(2), on 9 March 1982.
II. As payment had not been made by that date, the Receiving Section informed the appellant's representative by letter of 2 April 1982 that under Article 94(2) the request for examination would have to be deemed not to have been made. It nonetheless pointed out that loss of rights could be averted by paying the sur charge provided for in Rule 85b EPC within the two-month period of grace, i.e. on or before 10 May 1982. The DM 1980 examination fee and the DM 990 surcharge were not in fact paid until 29 July 1982.
III. The BELLEY Tribunal de Grande Instance had previously issued a receiving order dated 25 February 1982 in respect of the applicant company, suspending its payments as from 1 January 1982. The EPO was notified of the discontinuation of payments and the identity of the person authorised to continue the proceedings, whom it informed on 30 November 1982, pursuant to Rule 90(2), that grant proceedings would resume as from 10 February 1983. On 11 February 1983, the Receiving Section informed the appellant that since the examination fee had not been paid within the time prescribed by Article 94(2) and Rule 85b, the patent application was deemed to be withdrawn. The appellant, who considered this finding to be inaccurate, responded by applying for a decision, which the Receiving Section gave on 31 March 1983 confirming the loss of rights.
IV. The Receiving Section held that the applicant company's legal inability to continue its payments could not, by virtue of the exception made in Rule 90(4), give rise to an interruption of the period for filing the request for examination and paying the corresponding fee, nor could the period be suspended since the circumstances requiring suspension were exhaustively enumerated in Rule 13 and did not include this particular eventuality. Extension of the time limit in question for up to two months pursuant to Rule 90(4) could not operate in the present case because both the normal time limit and the period of grace prescribed by Rule 85b had already expired when proceedings were resumed. The Receiving Section considered moreover that any interpretation to the contrary, already questionable in terms of the German text, was absolutely ruled out by the French and English versions.
V. The applicant lodged an appeal against this decision in due time and in the correct form.
VI. The main points made in support of the appeal were as follows: - in terms of general principles, it was difficult to see how interruption of proceedings could be reconciled with time limits continuing to run; - it was difficult for a company in receivership, following discontinuation of payments by court order, to conduct such important business as filing a request for examination as to patentability and paying the relevant fee, the justification have escaped a receiver or any competent representative of the applicant at such a time; - the Receiving Section's interpretation of Rule 90(4) was neither logical nor dictated by the regulations, and moreover its result was unfair.
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore admissible.
2. It is plainly stated in the EPC that the European patent grant procedure is interrupted "in the event of the applicant ... as a result of some action against his property, being prevented by legal reasons from continuing (the proceedings)" (Rule 90(1)(b)), which obviously applies where a court order for discontinuation of payments and placing the company in receivership has been granted.
3. In the present case, the interruption occurred prior to expiry of the period prescribed by Article 94(2) for filing the request for examination, so that the period expired during the interruption. The question arises whether the period too was interrupted by virtue of the interruption of proceedings or whether it continued to run irrespective of the fact that proceedings were automatically interrupted under Rule 90. For this question to be satisfactorily answered, the implications of interruption under Rule 90 need to be clarified.
4. Rule 90 makes no explicit pronouncement as to the legal consequences of interruption of proceedings, merely stating in paragraph 1 that "proceedings ... shall be interrupted" ("das Verfahren ... wird unterbrochen"; "la procédure ... est interrompue").
5. Rule 90(4) deals with the point where interruption ends, or to be more precise what becomes of the interrupted time limits. The first sentence states that time limits in general "shall begin again as from the day on which the proceedings are resumed".
6. The literature on time limits for filing the request for examination (the case explicitly referred to in the second sentence of Rule 90(4)) expiring while proceedings are interrupted is somewhat divided: - it is thought in some quarters that apart from the specific instance where there can be an extension, not exceeding two months, of the time limit for making a request for examination, the time limit simply continues to run (van EMPEL, The Granting of Europen Patents - Leyden 1975, point 580). This interpretation was adopted by the Receiving Section in its decision. - another opinion - invoked by the appellant - is that all time limits are subject to interruption, but whereas normal time limits begin again, where interruption ends, the time limits for filing the request for examination and paying the renewal fees merely resume for the time they still have to run and are thus " suspended" according to the French terminology. This provision in favour of the applicant is taken further in the eventuality covered by Rule 90(4), second sentence, which allows the applicant a minimum of two months in any event (Paul Mathély, Le Droit Européen des Brevets, LINA 1978, p. 350).
7. This issue, which is fundamental to the case, could not be resolved by a literal interpretaion of Rule 90(4). The Board considers that the interpretation should proceed from the first words in Rule 90 ("proceedings ... are interrupted"). Interruption is only provided for in serious cases such as the applicant's death or his firm's going bankrupt. Proceedings are interrupted in these instances because there may no longer be anybody to continue them if for example the successors are unidentified. Since the interruption is beyond the control of the person concerned, it occurs automatically.
8. The legislator's intention could not have been to penalise the parties concerned for failing to observe the time limit for reasons beyond their control. Logically speaking, it is difficult to see how the idea of interruption can be reconciled with time limits continuing to run. To concede this would mean that where a time limit expires during the interruption of proceedings, the resumption would not occur in any true sense since it would merely involve noting a loss of rights. It therefore follows that, in principle, time limits operating at the time of interruption, including those concerning the request for examination, are interrupted.
9. To claim, as the impugned decision would have it, that where the proceedings are interrupted the time limit for filing a request for examination generally continues to run, there being provision for extension in only one specific instance, is an unduly severe interpretation - for example vis-à-vis the unidentified successors or, as in the present case, an applicant in financial difficulties serious enough to have resulted in a court order for discontinuation of payments - and one moreover that is not required by the law.
10. In the view of the Board Rule 90(4) does not constitute an exception to the general principle that all time limits are interrupted. Exceptions to a general principle of this kind - and one which also exists in national procedural law, for instance Article 370 NCPC (French law) and Sections 239 et seq. ZPO (German law) - can only be derived from precise and unambiguous legislative provisions. Rule 90(4) does not put at issue the principle of general interruption of the entire proceedings. Its sole purpose is to specify how time limits are to be calculated when proceedings resume. The principle established by paragraph 4, first sentence, namely that "the time limits... begin again as from the day on which the proceedings are resumed" has only two stated exceptions, one of which concerns precisely the filing of the request for examination. In keeping with the meaning of the word "interruption", where these two exceptions arise, the interrupted time limit must necessarily resume for the remaining time only. That interpretation is expressly stated by Rule 13 in relation to the specific case of suspended proceedings and indeed in very general terms in paragraph 5 with regard to time limits, the time limit for payment of renewal fees excepted. In the second sentences of both Rule 13(5) and Rule 90(4) though the latter alone applies to the present case, it has been prescribed that the time remaining at the applicant's disposal may in no circumstances be shorter than two months.
11. Accepting, then, that interruption of proceedings suspends the period of payment of the examination fee, it should be observed in the present case that this period, due to expire on 9 March 1982, was suspended on 1 January 1982 (the date of the embargo on payments) and did not resume until 10 February 1983 (the day the proceedings were resumed in compliance with Rule 90(2)). The remittance of DM 1980 on 29 July 1982 was therefore made well within the time limit. The decision of the Receiving Section that the patent application was deemed to be withdrawn should, therefore, be set aside. As to the DM 990 surcharge paid on the same date, the amount was not owing and its reimbursement should therefore be ordered.
12. The Receiving Section's ruling that the time limit for filing the request for examination and paying the corresponding fee continued to run although proceedings were interrupted constitutes a substantial procedural violation in terms of Rule 67 EPC, i.e., an objective deficiency affecting the entire proceedings. This is perhaps more clearly expressed in the German version ("wesentlicher Verfahrensmangel") than the English and French versions (respectively, "substantial procedural violation" and "vice substantiel de procédure"). In the circumstances and since the appeal is allowed, it is only fair to order that the appeal fee also be reimbursed.
For these reasons, it is decided that:
1. The Decision of the Receiving Section dated 31 March 1983 is set aside.
2. Reimbursement of the examination surcharge (Rule 85b) and the appeal fee is ordered.