W 0004/87 (Late submission of protest) 02-10-1987
1. Fees for additional inventions (cf. Article 17(3)(a) PCT) paid within the prescribed time limit (obliging the European Patent Office as International Searching Authority to draw up the international Search Report on those parts of the international application concerned with the said inventions) cannot be refunded if the statement of grounds supporting the protest under Rule 40.2(c) PCT is submitted late.
2. An application for restitutio in integrum may, however, be submitted in such cases since Article 122 EPC applies in conjunction with Article 48(2) PCT.
Fees (additional) paid within the prescribed time limit
Late submission of protest
Protest - late submission
I. The applicants filed a patent application with 19 claims.
II. The European Patent Office as International Searching Authority invited the applicants to pay additional fees under Article 17(3)(a) and Rule 40.1 PCT, submitting that the application did not meet the requirement of unity of invention since it contained five inventions in addition to the one first mentioned. The applicants were informed at the same time that these additional fees had to be paid within 30 days from the date of despatch and that under Rule 40.2(c) PCT any additional fee could be paid under protest.
III. The applicants paid the fees for three specific additional inventions. At the same time they sent a letter, received by the European Patent Office after the above-mentioned time limit had expired, in which they stated that they were paying these additional fees only under protest. This letter also contained a reasoned statement in accordance with Rule 40.2(c) PCT.
IV. The protest was subsequently referred to this Board of Appeal.
1. Under Article 154(3) EPC and Article 9 of the Agreement between the World Intellectual Property Organization and the European Patent Organisation under the PCT (cf. OJ EPO 1978, 249), the Boards of Appeal are responsible for deciding on a protest made by an applicant.
2. Under Article 17(3)(a) PCT the International Searching Authority establishes the international search report on those parts of the international application which relate to the additional inventions provided the relevant fees have been paid within the prescribed time limit. In the present case a time limit of 30 days from the date on which the invitation was despatched was fixed by the European Patent Office in accordance with Rule 40.3 PCT.
3. Rule 40.2(c) PCT enables the applicant to pay the additional fee under protest, "that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention ...". If the applicant decides to pay the additional fee under protest, therefore, it must be accompanied by a statement setting out the reasons for the protest. Since under Article 17(3)(a) and Rule 40.3 PCT this fee has to be paid within a specified time limit it follows that the statement must also be submitted within the same time limit.
4. The fees for three additional inventions were paid in due time. Under Article 17(3)(a) PCT the European Patent Office must therefore establish the international search report on those parts of the present international application which relate to the said inventions.
5. On the other hand the statement indicating the reasons for the applicants' protest was submitted late, being received by the European Patent Office only after the 30-day time limit had expired. Accordingly, the applicants' protest under Rule 40.2(c) PCT is irreceivable and must be rejected.
6. The additional fee paid by the applicants will not therefore be refunded.
7. However, Article 48 PCT may also be invoked. Moreover, Article 122 EPC (restitutio in integrum) applies in conjunction with Article 48(2) PCT. If an application for restitutio in integrum is submitted the department competent to decide on the omitted act must also decide upon that application (Article 122(4) EPC).
For these reasons, it is decided that:
The protest submitted by the applicants under Rule 40.2(c) PCT is rejected as irreceivable.