Pages 229-234

INFORMATION FROM THE EPO

LEGAL ADVICE FROM THE EUROPEAN PATENT OFFICE^* - No. 5/93 rev.^**

Rule 83 (4) EPC

Rule 85 EPC

Rule 85a(2) EPC

Calculation of aggregate time limits

Where a time limit starts to run immediately following the expiry of an earlier time limit, the date on which the earlier time limit expires must first be determined in order to calculate the expiry date of the second time limit.

In such cases the relevant event (Rule 83 EPC) for calculating the second time limit is the expiry of the earlier time limit. At present this applies to the period of grace for payment of designation fees provided for in Rule 85a(2) EPC and, by way of exception in the case of Euro-PCT applications to which Article 39(1) PCT applies, to the additional period under Article 86(2) EPC for payment of the renewal fee with additional fee in respect of the third year if the fee under Rule 37(1) EPC would have fallen due before the expiry of the 31-month time limit under Rule 104b(1)(e) EPC.

I. General Principles

1. The periods laid down in the EPC or determined by the European Patent Office are generally expressed in months. The expiry date in such cases is calculated in accordance with Rule 83(4) EPC. The period expires in the relevant subsequent month (i.e. the subsequent month determined by the length of the period) on the day which has the same number as the day on which the relevant event occurred (see however II.3 as regards renewal fees for European patent applications).

The length of the period may nevertheless vary according to circumstances. If there is no day with the same number in the relevant subsequent month, the period expires on the last day of that month. This means that the period may be several days shorter (e.g. a two-month period running from 31 July to 30 September). If, on the other hand, the time limit calculated in accordance with Rule 83(4) EPC falls, for example, on a day on which one of the filing offices of the European Patent Office within the meaning of Article 75(1)(a) EPC is not open for receipt of documents or on which for other reasons ordinary mail is not delivered there1, the time limit extends until the first day thereafter on which the European Patent Office is open for receipt of documents and on which ordinary mail is delivered (Rule 85(1) EPC)2.

2. The relevant event which triggers off a period differs according to whichever provisions govern that period. It may, for example, be the filing of the application (as in the case of the one-month period laid down in Article 79(2), second half of sentence 2, EPC for payment of the designation fees), or the valid notification of an invitation to file observations under Article 96(2) EPC.

The relevant event for the start of a period may also, however, be the expiry of another period. An example of such is the period of grace under Rule 85a(2) EPC for payment of the designation fees.

The following paragraphs explain how to calculate aggregate time limits of this kind.

II. Examples of aggregate time limits

1. Period of grace under Rule 85a(2) EPC

In the case of a precautionary designation the applicant dispenses with notification under Rule 85a(1) EPC. If he then fails to meet the time limits laid down in Article 79(2) EPC for the payment of the designation fees, he may under Rule 85a(2) EPC still effect payment within a period of grace of two months after the expiry of the time limit, provided he pays a surcharge within this period.

The last date for payment of the fees therefore depends on two consecutive periods: the relevant basic time limit pursuant to Article 79(2) EPC and a period of grace of two months. As the expiry of the first period is the relevant event for the start of the period of grace (Rule 83(4) EPC), the date on which the first period expires must be calculated first (see points I.1 and 2). The date which results for the first time limit is the date to be used for calculating the period of grace.

It would be incorrect to work on the basis of a unitary period of, for example, three months (the one-month period pursuant to Article 79(2) in conjunction with Article 78(2) EPC calculated together with the two-month period of grace pursuant to Rule 85a(2) EPC), taking the relevant event for calculating the last date for payment - period of grace included - as being the date of filing of the European patent application. In fact, the correctly calculated time limit may expire a few days earlier or later.

In the following examples it is therefore assumed that the designation fees have not been paid within one month of the filing of the European patent application (Art. 79(2) in conjunction with Art. 78(2) EPC). They may still be validly paid within a two-month period of grace as from the expiry of the basic time limit (Rule 85a(2) EPC)3.

Example A:

Period for payment of designation fees less than three months as from filing date of application:

2. Time limit under Article 86(2) EPC in the case of Euro-PCT applications to which Article 39(1) PCT applies

In these cases if the renewal fee in respect of the third year would have fallen due earlier under Rule 37(1) EPC, it does not fall due until expiry of the 31st month, i.e. on the last day of the 31-month period under Rule 104b(1)(e) EPC. This deferred due date, and hence the expiry of another period (the 31-month period), forms the basis for calculating the additional period for payment of the renewal fee with an additional fee (see decision of the Legal Board of Appeal J 1/89, OJ EPO 1992, 17, the principles of which apply taking into account the amendment to Rule 104b EPC).

The following example illustrates in greater detail the principles mentioned above.

Example:

3. The principles governing the calculation of the period for payment of the renewal fee for Euro-PCT applications in respect of the third year in accordance with Article 86(1) EPC apply only exceptionally, i.e. if the fee under Rule 37(1) EPC would have fallen due before the expiry of the 31-month time limit under Rule 104b(1)(e) EPC. According to a recent decision of the Legal Board of Appeal - J 4/91, OJ EPO 1992, 402 - these principles are not generally applicable to the calculation of the six-month additional period provided for in Article 86(2) EPC for the valid payment of a renewal fee together with an additional fee where the renewal fee has not been paid on or before the due date. In that decision, it was held that Legal Advice No. 5/80, "Calculation of aggregate time limits" (OJ EPO 1980, 149), is not applicable to the start of the additional period under Article 86(2) EPC. According to the Board of Appeal the period starts on the last day of the month referred to in Rule 37(1), first sentence, EPC, even in the circumstances described in Rule 85(1), (2) and (4) EPC. It follows that the occurrence of such circumstances at the beginning of the six-month period does not result in the end of the period being postponed beyond the end of the sixth month and into the seventh month.

Example A:

4. Another special situation arises in connection with renewal fees for divisional applications. "Accrued renewal fees" fall due on the date of filing of the divisional application (Rule 37(3), first sentence, EPC). If the due date of such renewal fee or fees falls on a Saturday, a Sunday or a public holiday because the divisional application was filed on such a day, the due date for the renewal fee or fees accrued is not postponed.

The four-month period for payment without additional fee (Rule 37(3), second sentence, EPC) and the concurrent six-month period for payment with additional fee (Rule 37(3), third sentence, EPC) must be calculated as from the due date of the renewal fee or fees accrued for the divisional application:

Example:

III. Extension of time limits under Rule 84 EPC

If a period determined by the European Patent Office is extended upon request under Rule 84, second sentence, EPC, this does not result in an aggregate period, but the original period becomes one unitary - extended - period (cf. Guidelines for Examination in the EPO, E-VIII, 1.6). The principles for calculating aggregate periods therefore do not apply. The relevant event for the start of the extended period remains the same as for the start of the original period, and it is that event which is used as the basis for calculating the unitary extended time limit (Rule 83(4) EPC).

Example: