J 0022/92 (Re-establishment of rights) 15-12-1994

1. The appeal is admissible.

2. Concerning the request for extension of the time limit set in the office communication dated 12 July 1991.

This request was refused by the first instance for the reasons that on the one hand a long time had elapsed since the filing by the Applicant of a petition at the USPTO in order to obtain an earlier date for the request for international preliminary examination (i.e. on 2. June 1989), and on the other hand that, even if a final decision of the USPTO was still not available, the procedural situation before the EPO was clear enough to allow it to issue a decision in respect of the pending requests for "restitutio in integrum".

However the Board cannot share this opinion since the final admissibility of the request dated 3 May 1990 for entry into the regional phase before the EPO depended on the date of the filing of the request for international preliminary examination with the USPTO.

Moreover, since the EPO had absolutely no right to interfere in the proceedings before the US patent office in respect with the taking of the said decision, the Applicant's request for an extension of the time limit set by the office constituted in fact an interlocutory plea, which prevented the Receiving Section from issuing a decision prior to the final decision by the US patent office on the petition to accord an earlier date of receipt for the request for international preliminary examination.

To decide the contrary could result in a disadvantage to the Applicant if its request for re-establishment before the designated office were to be rejected by a final decision, and if, after it had lost its right to enter the regional phase, it were to appear by virtue of a later final decision of the USPTO that a request for preliminary examination had indeed been filed within the time limit laid down in Article 39(1)(a) PCT and that the Applicant was entitled to keep the benefit of a deferred entry into the regional phase.

However this is not the situation in the present case since, firstly, the Applicant appealed against the decision of the Receiving Section and, secondly, the US patent office refused on 3 April 1992 to rectify the filing date of the request for international preliminary examination, so that the substantial procedural violation consisting of the refusal of the request of extension of the time limit until the interlocutory decision of the USPTO was to hand, did not entail any loss of right for the Applicant.

3. Concerning the requests for re-establishment

The first instance considered these requests in respect of all the time limits provided for under either Article 39(1)(a) PCT and Article 22 PCT, or Rule 85a EPC and rejected them all as inadmissible since, on the one hand, no right had been lost, and, on the other hand the omitted act had not been completed and the due fees had not been paid within the time limit set out in Article 122(2) EPC.

3.1. However, the provisions of restitutio in integrum do not apply to the time limits referred to in Article 122(5) EPC. In particular, in its decision G 3/91 (OJ EPO 1993, 8), the Enlarged Board of Appeal held that contrary to earlier case law, European PCT Applicants were like European Applicants no longer entitled to have their rights re-established if they failed to observe the time limits for payments of national fees, designation fee or search fees.

The Enlarged Board considered the former case law of the Boards of Appeal, according to which European patent Applicants who had not paid appropriate fees in due time had been re-established in their rights (cf. J 5/80 OJ EPO 1981, 343 and J 12/87 OJ EPO 1989, 366).

It then stated that both European PCT Applicants and European Applicants are to be treated equally and therefore decided that the time limits provided for in Article 78(2) and 79(2) EPC and those provided for in Rule 104b(1)(b) and (c) EPC in conjunction with Article 157(2)(b) and 158(2) EPC were excluded from restitutio in integrum.

Additionally the Enlarged Board, although the question had not been referred to, discussed the possibility of restitutio in integrum as regards the period of grace pursuant to Rule 85a EPC, stating that this period of grace was closely linked to the normal periods laid down in Article 78(2), 79(2) and Rule 104b(1)(b) and (c) EPC and was consequently also excluded from re-establishment under the provisions of Article 122(5) EPC.

Another referral by decision J 4/93 related to the application of the new case law to proceedings which were still pending when decision G 3/91 came to the attention of European patent Applicants or their professional representatives, as in the present case.

Thus at that stage of the procedure it was necessary to wait for the decision of the Enlarged Board upon the said question.

In its decision G 5/93 dated 18 January 1994, (OJ EPO 1994, 447) the Enlarged Board upheld its case law, stating that the provisions of Article 122(5) EPC apply to the time limits provided for in Rule 104b(1)(b)(i) and (ii) EPC in conjunction with Article 157(2)(b) and 158(2) EPC; it considered notwithstanding that European PCT Applicants may be re-established in the time limit for paying the national fee provided for in Rule 104b EPC in all cases where re-establishment of rights was applied for before decision G 3/91 was made available to the public.

"Mutatis mutandis" the same solution applies in a case such as the present one where a European PCT Applicant applied for re-establishment into the period of grace according to Rule 85a EPC before decision G 3/91 was published (OJ EPO 1993, 8).

3.2. When the Applicant requested restitutio on 17 September 1990 more than one year had lapsed since the 2 June 1989 deadline for filing a request for international preliminary examination with the USPTO allowing the deferred entry into the regional phase provided for in Article 39(1)(a) PCT, so that the request in respect of this time limit must be considered inadmissible.

Therefore, there is no need for the Board to consider the first instance's arguments relating to the absence of a loss of rights.

This request is also inadmissible as regards the time limit for entry into the regional phase as set out in Article 22(1) PCT in conjunction with Rule 104b(1) EPC (former version), since it expired on 3 August 1989, i.e. more than one year before filing of the request for restitutio.

3.3. In view of the period of grace provided by Rule 85a(1) EPC (then valid version), a communication was sent on 19. September 1989 directly to the Applicant so that the 1-year period pursuant to Article 122(1) EPC had not elapsed at the date of the filing of the request for re- establishment dated 17 September 1990.

The first instance however refused to consider such request as admissible since all the omitted acts (i.e. payments of surcharges provided for in Rule 85a(1) EPC) had not been completed in time.

3.3.1. The Board cannot share this opinion since in the case in suit the omitted act had in fact been duly completed with the filed application for re-establishment where it is specifically requested that for the purpose of restitutio:

"any further fee which is due for payment of any surcharge in respect of any other fee including the fees paid on 1 May 1990 (i.e. the national fee, search fee, designation fees, examination fee and the excess claims fees) are to be debited to our deposit account".

It was then incumbent on the EPO to debit the due surcharges from the deposit account of the representative. This could be performed immediately on 17. September 1990 within the 2-month time limit calculated from the removal of the cause of non- compliance.

3.3.2. According to the established case law of the Boards of Appeal, the removal of the cause of non-compliance occurs on the date on which the person responsible for the application is made aware of the impending loss of rights.

In the absence of circumstances to the contrary a communication under Rule 69(1) EPC or a notification under Rule 85a(1) EPC to the representative appointed by the person entitled to the patent application removes the cause of non-compliance.

Notwithstanding the fact that such communications were sent by the EPO directly to the Applicant respectively on 19 September 1989 (under Rule 85a(1) EPC) and on 22. January 1990 (under Rule 69(1) EPC) the removal of the cause of non-compliance took place on 18 July 1990, i.e. when the telephone conversation between the newly- appointed professional representative and the EPO took place.

As regards the Applicant itself, it had empowered US attorneys to prosecute the patent application and remained unaware of the procedures before the various patent offices. It had therefore assumed that documents received were copies of those already sent to its attorneys and was entitled to think in all good faith that they had already dealt with the first communication.

On the other hand, the Appellant still alleges that it never received the second communication pursuant to Rule 69(1) EPC, and nothing in the file allows the EPO to establish that the letter dated 22 January 1990 ever reached its destination.

Certainly in the present case the notification dated 22. January 1990 has been correctly made under provisions of Rule 78(2) EPC, the Applicant having neither residence nor principal place of business within the territory of one of the Contracting States.

However it has to be borne in mind that whether or not the cause of non-compliance has been removed is a matter of fact and therefore must be established beyond any reasonable doubt.

This is not the case where the notification is only deemed to have been made when despatch has taken place even when the receipt of the letter cannot be proved.

On the other hand, the representative of the Appellant, Mr Eyles, became aware of a possible procedural irregularity on 18 July 1990 during a telephone call with the Receiving Section. Since Mr Eyles is the Appellant's representative in the proceedings before the EPO, the Board is satisfied that it is proper to consider the date on which the responsible representative first became aware of the missed time limit to be the date on which the removal of the cause of non-compliance with the time limit occurred (see T 191/82, OJ EPO 1985, 189 = EPOR 1986, 88). Moreover, the minutes of this telephone call show that the attention of the representative was drawn to the possibility of re-establishment pursuant to Article 122 EPC. Furthermore, it was pointed out to the representative that the two-month time limit pursuant to Article 122(2) EPC started from "today", i.e. 18 July 1990. Taking these facts into account, it is the view of the Board that the request for re-establishment with regard to the time limit provided for in Rule 85a EPC was filed in due time and is therefore admissible.

3.4. Article 122 EPC provides for an Applicant, who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the EPO, thereby losing a right or other redress, to have its rights re-established.

3.4.1. The time limit the Applicant failed to comply with, and which also is the only one it may be reinstated in, is actually the period of grace set in Rule 85a(1) EPC, so that the due care to be appreciated in the case in suit is only the one related to said period of grace.

In the present case, the communication pursuant to Rule 85a(1) EPC was sent directly to the US Applicant, the Louisiana State University, on 19 September 1989.

The Applicant who had appointed the US attorneys for the purpose of the PCT application was entitled to believe that a copy of said communication had been sent to the US attorneys as well, enabling the latter to act in order to maintain the application.

3.4.2. The Board on the other hand wishes to emphasise that the due care to be considered in the present case is in fact not that which is expected from a professional representative but that which is expected from an Applicant unaware of the proceedings, and who generally assumes that documents received from one of the various patent offices are copies of those already sent to the appointed attorneys or representatives.

Therefore, bearing in mind the principle of proportionality, the loss of the patent application as a result of what may be considered at most a minor procedural irregularity would appear an extremely severe result. Furthermore, although still having slight doubts whether all due care had been taken, in the special circumstances of this case the Board applies the basic principle of law "in dubio pro reo" in favour of the Applicant and therefore allows re-establishment.