J 0004/86 (Air-conditioning system) 04-03-1987
Fiction of withdrawal in the absence of a request for examination
Point at which loss of rights ensues
Renewal fee/due date during period of grace provided for in Rule 85b
Procedural violation (no) - incorrect legal interpretation
I. The appellant filed a European patent application on 24 May 1983 claiming the priority of an application filed on 27 May 1982. In accordance with standard procedure it also filed the request for examination but without paying the examination fee. On 7 November 1984 the European Patent Bulletin mentioned the publication of the European search report for this application; the period within which the fee had to be paid for the request for examination to be valid therefore expired on 7 May 1985, the latter date being followed by the period of grace under Rule 85b EPC, which expired in turn on 8 July 1985. No examination fee was paid.
II. The third renewal fee for the European patent application, amounting to DEM 460, was paid on 3 May 1985; under Rule 37 EPC it fell due on 31 May. On 25 June 1985 the appellant requested a refund of the renewal fee, stating that it had deliberately not paid the examination fee, in order to ensure that the application would be deemed to be withdrawn under Article 94(3) EPC. The renewal fee, which had been paid in error, was not due until after the application had been deemed to be withdrawn and therefore had to be refunded.
III. In a decision dated 8 August 1985 the EPO Receiving Section refused to make a refund on the following grounds: withdrawal was not deemed to take effect until the period of grace for paying the examination fee expired, so that the renewal fee that was paid and had become due during the period of grace was forfeited. This stemmed from the fact that up to the end of the grace period the applicant could have the patent grant procedure continued upon payment of the examination fee together with a surcharge. The patent application was moreover still "pending" during the grace period.
IV. The appellant appealed against this decision on 20 December 1985, at the same time paying the appeal fee ...
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.
2. This appeal is of significance because it involves clarification of whether a renewal fee paid during the period of grace referred to in Rule 85b EPC can be refunded if no use is made of the legal remedy available under that Rule. Renewal fees normally become due, under Article 86(1) in conjunction with Rule 37(1) EPC, once the period for filing the request for examination referred to in Article 94(2) EPC has expired. Accordingly, applicants are frequently accustomed to making regular renewal fee payments and may also use a computer for the purpose. It may happen that an unintentional, erroneous renewal fee payment is made. Or a payment may also be made deliberately, i.e. as a precaution in case use is made of the remedy available under Rule 85b EPC. In fact, the renewal fee together with the additional fee must be paid as a precaution if the six-month time limit referred to in Article 86(2) EPC expires during the grace period under Rule 85b EPC, otherwise the applicant would have to seek re-establishment of his rights in respect of the said period under Article 86(2) EPC if he wanted to prosecute the application by availing himself of the legal remedy under Rule 85b EPC.
3.1 The periods of grace with a surcharge referred to in Rules 85a and 85b EPC are modelled on the grace period under Article 86(2) EPC, according to which a renewal fee may still be validly paid together with an additional fee within six months of the due date. This provision is in turn based on Article 5bis of the Paris Convention. The obvious step is therefore to examine first of all whether a rational and conclusive answer can be inferred from the period of grace arrangement referred to in Article 5bis of the Paris Convention and Article 86(2) EPC to the question of whether a patent application lapses at the start, or not until the end, of the period for remedy where use is not made of a remedy that would enable the application to be maintained.
3.2 Article 5bis of the Paris Convention was last discussed at the Hague and Lisbon conferences (in this connection, see Bodenhausen, Kommentar zur PVÜ, 1971). The discussions show that the protection is to be regarded as continuing to subsist during the period of grace. However, there is no conclusive answer to whether, in the event of non-payment, it is deemed to have lapsed on expiry of the normal period or on expiry of the period of grace. Consequently, it has been left to the law applicable to settle the issue, which is of importance where granted patents are concerned because of the point at which the period of protection ends. With European patent applications provisional protection lapses under Articles 67(1) and 69(2) EPC retroactively, so that in this respect it is not important when the patent application lapses. Likewise, in the case of Article 122(6) EPC, i.e. where a right of use arises, it matters little whether the "loss of rights" referred to therein ensues on expiry of the normal period or on expiry of the period of grace.
3.3 A look at the legal position with regard to granted patents shows clearly that the point at which a right lapses is not laid down in a hard-and-fast way but has to be deduced from the law applicable. Thus, Article 51(3) of the 1975 Community Patent Convention (CPC) states that: "The lapse of a patent for failure to pay a renewal fee and any additional fee within the due period shall be deemed to have occurred on the date on which the renewal fee was due". This provision has its origin in a decision taken at the start of the travaux préparatoires (Report of the meeting of the Patents Working Party of 1 January 1962, Doc. IV/215/62, based on the Chairman's proposals made on 15 November 1961) and follows Article 48 of the French Patent Law, whereas under Section 20(1) No. 3 of the German Patent Law loss of rights does not ensue until the period of grace has expired.
3.4 The second preliminary draft of 1971 (ibid., Article 130(3)) still contained an express provision on European patent applications according to which rights were lost at the end of the period of grace. But no specific ruling emerges in this respect from the current version of Article 86(3) EPC. It follows that Article 86(2) and (3) EPC, on which the regulations governing periods of grace - that is, Rules 85a and 85b EPC - are based, can provide no answer to the question of when loss of rights ensues. Therefore, the question that has to be decided here can be answered only by reference to Article 94 and Rule 85b EPC.
4. The wording of Article 94(3) EPC clearly indicates - and in this the Board must concur with the appellant - that loss of rights ensues on expiry of the normal period. The possibility introduced later with the insertion of Rule 85b EPC, namely that the request for examination "may still be validly filed within a period of grace ...", was not intended to extend the time limit but to provide a possible remedy. Payment of a surcharge within the period of grace was intended to ensure that the request for examination could "still be validly" filed, i.e. that the omission could be remedied retroactively. This does not necessarily follow from Article 33(1)(a) EPC, which rules out an extension of the time limit for filing the request for examination. A brief period of grace offering no more than a legal remedy for making good a missed time limit, does not fall under this exclusion. It is the wording of Article 94(3) EPC and hence the reasoning behind it that preclude the deemed withdrawal being postponed because of Rule 85b EPC until the end of the period of grace. Nor was this the intention behind the latter Rule, as is clear from the relevant literature (see Schatz in GRUR Int. 1981, 677), which states that loss of rights ensues on expiry of the (normal) six-month period if no use is made of the available remedy (ibid., p. 678). Here, the "not unusual" solution has been chosen whereby "by a legal fiction a remedy is offered according to which a belated procedural step is deemed to have been taken in time" (ibid., p. 679). Accordingly, it must be assumed that from the wording and sense of that Rule loss of rights ensues on expiry of the normal period, unless use is made of the available remedy. Although this conclusion is of importance only where, for example, a renewal fee has been paid (see point 2 above), it may here be regarded as sensible and conducive to rational application of the Convention.
5. A comparison with the situation where, after deemed withdrawal of an application, further processing is possible under Article 121 EPC but does not ensue, confirms this. The question of when the loss of rights takes effect if the legal remedy is not used is here answered clearly by Article 121(1) EPC, which states that the legal consequence that "has already ensued" will be "retracted" if use is made of the remedy. This too is an example of rational application of the Convention. A renewal fee falling due during the period in which an omission may be remedied must be refunded unless the remedy in question - here, further processing - is used. In this case, likewise, the applicant will not therefore be asked to maintain the application by paying a renewal fee that he cannot reclaim, simply so as not to forfeit the possibility of requesting further processing of the application.
6. In view of Rule 67 EPC it is not possible to reimburse the appeal fee as requested. This could happen only if there had been a procedural violation - and there is none here (see also J 08/84 "Claims fees/BLENDAX" in OJ EPO 1985, 261, 266, Reasons No. 12). The fact that the EPO Receiving Section answered the legal question of when the deemed withdrawal under Article 94(3) EPC took effect in a different way to the Board of Appeal cannot be regarded as a procedural violation.
For these reasons it is decided that:
1. The contested decision is set aside.
2. Refund of the third renewal fee is ordered.
3. The request for reimbursement of the appeal fee is refused.