3.5.6 Pendency in case of deemed withdrawal of earlier application and request for re-establishment

In J 4/11 (OJ 2012, 516) the Legal Board held that an application which had been deemed to be withdrawn for non-payment of a renewal fee was not pending within the meaning of R. 25(1) EPC 1973 in the period for filing a request for re-establishment of rights under Art. 122 EPC 1973 in respect of such non-payment, or in the period after which such a request was filed in the event of such request being refused. The mere existence of the right to file a request for re-establishment of rights in respect of a deemed withdrawn application did not mean that the application was still pending while the period for filing such a request was running. Likewise, the fact that a request for re-establishment of rights was actually filed could not make the application become pending again. The board stated that the point in time when the application was deemed to be withdrawn was the point when the due time for payment of the renewal fee expired; the loss of rights occurred on the expiry of the time limit that had not been observed and, as such, was final in itself. Filing a request for re-establishment did not provisionally revive a deemed withdrawn application. As to whether the applicant enjoyed substantive rights in respect of the earlier application which were (still) subsisting when the later application was filed (see G 1/09, OJ 2011, 336), the Legal Board held that in the case at issue the substantive rights under Art. 64 EPC were no longer subsisting. As to other possible rights, the right of the inventor under Art. 60 EPC was held to be no longer subsisting when the divisional application was filed, since the right ceased to exist if and when the application was finally refused, or was withdrawn or deemed to be withdrawn. The board also rejected the appellant's argument that the right to request re-establishment was a substantive right.

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