BOARDS OF APPEAL
Decisions of the Technical Boards of Appeal
Decision of Technical Board of Appeal 3.3.1 dated 21 October 1993 - W 3/93 - 3.3.1
Composition of the Board:
Headword: Re-establishment of rights
Keyword: "Re-establishment of rights after the Board of Appeal has finally rejected a protest under Rule 40.2(c) PCT on the grounds that it was out of time (yes)" - "Protest admissible" - "Lack of unity a priori (no)"
I. By analogy with the principles developed by the Enlarged Board of Appeal in decision G 1/83 (OJ EPO 1985, 60, points 5 and 6 of the reasons) for interpreting the EPC, Article 48(2) PCT should be construed to mean that in the event of a delay in meeting the time limit laid down in Rule 40.3 PCT the same legal remedies are available as in the case of failure to observe other comparable time limits under the PCT or EPC (point 1.1 of the reasons) (see also W 4/87, OJ EPO 1988, 425, point 7 of the reasons).
II. Re-establishment of rights restores the legal situation to that existing prior to the decision which declared the protest inadmissible, i.e. it destroys the legal validity of the decision, which accordingly need not be set aside or amended (point 2.4 of the reasons).
III. The purpose of the protest procedure under Rule 40.2 PCT is to enable the justification for the invitation to pay to be submitted to substantive review; the only issue to be examined therefore is whether, considering the reasons given by the International Searching Authority (ISA) and the submissions made in support of the protest, retaining additional search fees was justified. The Board cannot therefore investigate ex officio whether an objection of lack of unity would have been justified for reasons other than those given (point 4 of the reasons).
Summary of Facts and Submissions
I. In a communication dated 4 July 1992 (despatch date) the EPO, acting as an International Searching Authority (ISA) under the PCT, invited the applicant, under Article 17(3)(a) in conjunction with Rule 40.1 PCT, to pay in respect of its Euro-PCT application (...) an additional search fee of DEM 2 200 within 30 days of the above despatch date.
The Euro-PCT application relates to esters and phosphatides of vitamins D and E. The ISA saw the derivatives of vitamin D on the one hand and of vitamin E on the other as two inventions whose "subject-matter defined by the problems and the means of resolving them" had to be regarded as so different from each other that there was no technical relationship or interaction forming a single general inventive concept.
II. The applicant paid the additional search fee on 18 August 1992 (date on which the fee was credited to the EPO's account). In a fax to the EPO on 15 August 1992, confirmed on 18 August 1992, the applicant declared that it was paying the fee under protest (Rule 40.2(c) PCT). In support of the protest it was argued that the two groups of substances identified by the ISA were linked by the common property of their suitability for a novel approach to the treatment of tumours.
III. On 26 November 1992 the ISA forwarded to the applicant the international search report covering those parts of the application for which the additional fee had been paid, accompanied by a communication in reply to complaints by the applicant regarding the delay in processing the search. The communication read as follows:
"The delay in the processing of this application and of the subsequent correspondence is an error on the part of the International Searching Authority, and we hereby declare that none of the applicant's rights are prejudiced."
IV. On 21 May 1993 the Board of Appeal, acting as a board within the meaning of Rule 40.2(c) PCT, rejected the protest as inadmissible because it had been filed late. This decision was despatched to the applicant on 1 July 1993.
V. On 31 July 1993 the applicant filed a request for re-establishment of rights to enable the protest to be deemed to have been filed within the time limit and paid the appropriate fee laid down in the EPC. It submitted that although the invitation from the ISA to pay additional fees bore the date of 4 July 1992 the ISA had in fact only despatched it to the applicant's representative on 3 August 1992. This made it impossible for the applicant to observe the time limit of 30 days as from 4 July 1992.
VI. On 12 August 1993 the re-establishment file was transmitted to the Board of Appeal. It contains a set of documents assembled by the Office indicating that the ISA's invitation to pay was despatched on 3 August 1992 (page 132 of the file).
Reasons for the Decision
1. The request of 31 July 1993 is for re-establishment of rights to enable the protest to be deemed to have been filed within the time limit fixed by the ISA under Article 17(3)(a) and Rule 40.1 PCT, and, in substance, for examination of the protest.
1.1 Article 48(2) PCT allows delays in meeting time limits to be excused. Article 48(2)(a) PCT provides for this to happen where there are reasons which would be admitted under the law of a contracting state requiring such a delay to be excused. Rule 82bis.1(ii) PCT specifies that a time limit within the meaning of Article 48(2) PCT must be construed as including time limits fixed by the ISA. Under Rule 82bis.2 PCT, the provisions of "the designated or elected State" relating to re-establishment of rights are among those which determine whether delay in meeting a time limit may be excused. Under Article 2(x), (xii), (xiii) and (xiv) PCT an intergovernmental authority such as the EPO can be a designated Office or elected Office (see Art. 153 and Art. 156 EPC) for the purposes of the PCT and the Regulations thereunder. However, in the case in question involving the time limit specified in Article 17(3)(a) and Rule 40.3 PCT, it is not the EPO as designated Office or elected Office which is competent to excuse the delay in meeting a time limit, but the EPO as ISA (Art. 16(1) PCT in conjunction with Art. 154 EPC) or the Board of Appeal as a "special instance" of the ISA under Rule 40.2(c) PCT in conjunction with Article 154(3) EPC. If, however, the time limit applicable in this case, which was fixed by the ISA in accordance with Rule 40.3 PCT, is not covered by the text of Article 48(2) PCT, the legal remedy of re-establishment of rights would be excluded in respect of this time limit. The Board is convinced that excluding re-establishment for this particular time limit would not only be unfair; it would also be inconsistent with the whole purpose of the relevant clause in Article 48 PCT and its elucidatory provision, Rule 82bis.1(ii), which refers to all time limits fixed by the ISA and contains no suggestion that the time limit in question here is in any way exceptional. By analogy with the principles developed by the Enlarged Board of Appeal in decision G 1/83 (OJ EPO 1985, 60, particularly points 5 and 6 of the reasons) for interpreting the EPC, and especially in view of the desirability of harmonising the international legal provisions of the EPC and PCT, the Board accordingly interprets Article 48(2) PCT to mean that in the event of delay in meeting the time limit laid down in Rule 40.3 PCT the same legal remedies are available as in the case of failure to observe other comparable time limits under the PCT or EPC (see also W 4/87 (OJ EPO 1988, 425), point 7 of the reasons). In this case, therefore, the provisions of Article 122 EPC enacted for the EPO are applicable.
1.2 In a decision delivered on 21 May 1993, the Board gave a final ruling that the protest lodged by the applicant against the ISA's invitation to pay of 4 July 1992 was inadmissible because it was out of time. In accordance with the reasoning set out above, Article 48(2) and Rule 82bis.2 PCT in conjunction with Article 122(1) EPC allow the legal remedy of re-establishment of rights to be invoked against this decision. The request for re-establishment of rights was filed in the due form and time - and the prescribed fee paid - in accordance with the provisions applicable. It is therefore admissible. As the Board has to decide on the protest, it is also competent to examine the request for re-establishment of rights (Art. 122(4) EPC).
2. The Board must therefore examine whether, in spite of all due care required by the circumstances having been taken, the applicant was unable to observe the time limit, its failure to do so forming the basis for the Board's decision of 21 May 1993.
2.1 The applicant for re-establishment of rights points out that the invitation to pay from which the time limit was computed had not been despatched to it on 4 July 1992, the date it bore, but only on 3 August 1992, so that it could not have responded "in good time" - i.e. within 30 days of the date of despatch indicated - but only within 30 days of the actual date of despatch, i.e. 3 August 1992.
2.2 The Board was not aware of this circumstance either from the protest or from the files submitted therewith. However, it is shown to be correct from the internal documents forwarded to the Board on 12 August 1993 together with the re-establishment files. The proceedings on the basis of the PCT and EPC are of a judicial nature, and this requires that all the material facts be placed on record and that the complete files be forwarded to an examining instance. In offending against this principle the ISA has committed a serious procedural error.
2.3 The facts stated prove without question that, on grounds for which the ISA must bear the entire responsibility and which the applicant could not influence, the latter was unable to observe the time limit of 30 days as from 4 July 1992. The request for re-establishment of rights should therefore be granted.
2.4 When re-establishment of rights is granted, the legal situation is restored to that existing prior to the noting of the loss of rights which ensued from failure to observe the time limit. The Board of Appeal's decision of 21 May 1993 based on failure to observe the time limit is thus rendered invalid, even though it is a final decision. In other words, the granting of re-establishment of rights destroys the legal validity of the decision, which accordingly need not be set aside or amended. As a result, the protest is admissible and must be examined on its merits.
3. The ISA does not base its objection of lack of unity on the prior art referred to in the application or established during the search. It is therefore an "a priori" objection within the meaning of Chapter VII.9 of the "Guidelines for international search to be carried out under the PCT".
3.1 The grounds for this objection as stated in the invitation to pay are kept so terse and general that they contain virtually nothing more than a repetition of the substance of Rule 13.1 PCT in different words. According to established Board of Appeal case law (see, for example, W 4/85, OJ EPO 1987, 63, and W 7/86, OJ EPO 1987, 67), only in exceptional cases does such general information fulfil the obligation stipulated in Rule 40.1 PCT to submit a reasoned statement. However, as the applicant in the present case was nevertheless able to make a substantive response, the Board can accept the reasoned statement as sufficient on this occasion.
3.2 The only construction which the Board can put on the information given by the ISA as evidence of lack of unity - which is devoid of any indication that the technical problem set out in the application has been addressed (see W 11/89, OJ EPO 1993, 225) - is that the ISA wished to base its objection exclusively on the structural differences between the claimed derivatives of vitamin D on the one hand and of vitamin E on the other.
These differences in the basic structure are undoubtedly substantial, as vitamin D is a steroid compound, whereas vitamin E (tocopherol) is a chromane derivative. Structurally, all they have in common is an esterified QH group. The carboxylic and phosphoric acids used for esterification also belong to different families of compounds. However, all this means is that the application relates not to one invention only but to a group of inventions.
Under Rule 13.1 PCT such a group of inventions may be claimed in one and the same application if it forms a single inventive concept. However, the ISA has not demonstrated why this requirement has not been met in the present case. Furthermore, the applicant has explained to the Board's satisfaction that the application was based on such a concept, i.e. a novel approach to the treatment of tumours. The reasons given by the ISA in support of the invitation to pay an additional search fee, therefore, do not bear further scrutiny.
4. The purpose of the protest procedure under Rule 40.2(c) PCT is to enable the justification for the invitation to pay to be submitted to substantive review; the only issue to be examined therefore is whether, considering the reasons stated by the ISA and the submissions made in support of the protest, retaining additional search fees was justified. The Board cannot therefore investigate ex officio whether an objection of lack of unity would have been justified for reasons other than those given, for example after taking into consideration the documents found during the search or addressing in depth the objectively resolved technical problem. Accordingly, the objection of lack of unity could be raised again on different grounds in the event of subsequent proceedings under PCT Chapter II.
For these reasons it is decided that:
1. The applicant's request for re-establishment of rights, to enable the protest against the invitation to pay additional search fees dated 4 July 1992 to be deemed to have been filed within the time limit, is granted.
2. Refund of the additional search fee is ordered.