4. Admissibility of requests for re-establishment of rights
4.4. Substantiation of the request for re-establishment
Under R. 136(2) EPC (Art. 122(3) EPC 1973) the request for re-establishment has to state the grounds on which it is based, and set out the facts on which it relies. The boards consider this requirement in relation either to the admissibility of the request or to the submissions that must be taken into account when analysing the merits of the request (see in this chapter III.E.5.1. "Submissions to be taken into account").
It is a condition for the admissibility of a request for re-establishment of rights that a duly substantiated statement of grounds be submitted within the time limit for filing the request (J 15/10, see also J 19/05). A request for re-establishment of rights complies with the requirement of R. 136(2), first sentence, EPC if a conclusive case is made, setting out and substantiating the grounds and facts on which the request relies (J 15/10; T 13/82, OJ 1983, 411). Thereby it is ascertained that the factual basis for the requested decision is not altered after the expiry of the time limit for the request (J 15/10, J 19/05, T 585/08, T 479/10). Therefore, the request for re-establishment of rights must set forth the precise cause of non-compliance with the time limit concerned, specify at what time and under which circumstances the cause occurred and was removed, and present the core facts making it possible to consider whether all due care required by the circumstances had been taken in order to comply with the time limit concerned (J 15/10, T 479/10, see also J 18/98). A request for re-establishment of rights which relies on general statements only and contains no specific facts does not satisfy the requirement for a duly substantiated request under R. 136(2), first sentence, EPC (J 19/05, T 1465/08, J 15/10). The mere payment of the fee does not meet the requirements of R. 136(2) EPC (T 1465/08).
In J 19/05 the Legal Board held that the request for re-establishment of rights was not sufficiently substantiated. The request was couched in purely general terms and contained no concrete facts identifying a reason for non-observance, the chronological sequence of events or the causes underlying the action or inaction of the persons involved concerning non-payment of a renewal fee.
In T 13/82 (OJ 1983, 411) the board held that a conclusive case must be made, setting out and substantiating the facts, for the probability - at least - that a wrongful act or omission on the part of an assistant was the cause of the failure to meet the time limit: the mere possibility was not sufficient to exculpate the applicant.
In T 287/84 (OJ 1985, 333) the board decided that an application for re-establishment of rights could be considered as complying with the requirement that it had to set out the facts on which it relied (Art. 122(3) EPC 1973) if the initially filed application in writing, which did not contain such facts, could be read together with a further document, which contained them and was filed before the expiry of the period within which the application had to be filed.
In T 324/90 (OJ 1993, 33) the board held that evidence proving the facts set out in the application could be filed after expiry of the two-month time limit laid down in Art. 122(2) EPC 1973. Only the grounds and a statement of the facts had to be filed within the two-month period. It was not necessary to indicate in an application for re-establishment the means (e.g. medical certificates, sworn statements and the like) by which the facts relied on would be proved. Such evidence could be submitted after the time limit, if so required (see also T 667/92 of 10 March 1994 date: 1994-03-10, T 261/07, T 1764/08).
In J 8/95 the appellants argued that the German-language version of Art. 122(3) EPC 1973 did not stipulate that the statement of grounds for an application for re-establishment of rights had to be filed within the time limit laid down in Art. 122(2) EPC 1973. The Legal Board decided that Art. 177(1) EPC 1973 assumed a uniform legislative intent, which could only be identified on the basis of all three texts of the EPC 1973 (see also T 324/90, OJ 1993, 33).
- T 178/23
Abstract
In T 178/23 the appellant requested re-establishment of rights under Art. 122 EPC in relation to the non-observance of the time limits under Art. 108 EPC for filing the notice of appeal and paying the appeal fee, and for filing the statement of grounds of appeal.
As regards the admissibility of the request for re-establishment of rights, the board observed that, since the appellant had missed two different time limits, it could be argued that each of the two time limits, which expired independently of one another, had to be considered separately, notwithstanding the fact that they were triggered by the same event (see J 26/95, T 2017/12). In this case, the appellant's request for re-establishment would be inadmissible because it paid only one re-establishment fee within the two-month time limit under R. 136(1) EPC. However, there was also case law in which one fee was considered sufficient because re-establishment in respect of both periods had to be examined together and the result would inevitably be the same (see T 315/87, J 7/16, T 1823/16). In the board's view, the question of whether one or two re-establishment fees were required could be left undecided in the case in hand.
Regarding the substantiation of the request for re-establishment of rights, the board found that in the letter requesting re-establishment of rights, the appellant had not presented any core facts to make it possible for the board to consider whether the appellant had taken all due care required by the circumstances in order to comply with the time limits under Art. 108 EPC. Rather, the appellant had merely stated that it had failed to observe the time limits despite exercising all due care, without setting out any concrete facts demonstrating that it had taken all the due care required by the circumstances. The mere statement that it "could not be reasonably expected" that the drawings would be missing in the examining division's communication under R. 71(3) EPC was not sufficient in this regard. It was only with the letter of reply to the board's communication that the appellant went into more detail for the first time on possible facts regarding whether the appellant had taken all due care required by the circumstances. According to the board, the appellant had not merely adduced further evidence clarifying the facts which had already been set out in due time, but had (belatedly) attempted to make a conclusive case. Therefore, the new submissions in the letter of reply were not to be taken into account. Consequently, the request for re-establishment of rights was found inadmissible for lack of substantiation.
The board then moved on to the issue of inability to observe a time limit vis-à-vis the EPO. It noted that according to established case law the word "unable" in Art. 122(1) EPC implied an objective fact or obstacle preventing the required action, e.g. a wrong date inadvertently being entered into a monitoring system.
In the case in hand, the board could not see any objective fact or obstacle that prevented the appellant from observing the time limits under Art. 108 EPC. The facts relied on by the appellant did not relate to an error in the carrying out of a party's actual intention to meet a specific time limit, but only to an error in relation to the intention to use a legal remedy entailing a time limit. The appellant was able to file an appeal in due time but failed to do so because of a previous error as to motive, i.e. because it was unaware of the need to file an appeal to rectify the absence of the drawings in the patent specification. According to the board, this situation differed from those governed by Art. 122 EPC where a party did intend to observe a time limit but failed to do so due to objective obstacles.
Consequently, the board found that the appellant's request for re-establishment of rights was also inadmissible on the ground that the appellant was not unable to observe the time limits under Art. 108 EPC. In view of the considerations above, whether the appellant had complied with the "all due care" criterion under Art. 122(1) EPC was irrelevant. The request for re-establishment of rights was thus refused as inadmissible and the appeal was deemed not to have been filed.
- 2023 compilation “Abstracts of decisions”