G 0001/86 - Re-establishment of rights of opponent - #63

Citation rank: 63
No. of citations: 78

Re-establishment of rights (also referred to as restitutio in integrum) is a legal remedy, which allows the applicant or proprietor to be re-instated in his rights, which he/she lost due to non-observance of a time limit in spite of "all due care" required under the circumstances having been taken. The remedy is based on Art. 122 EPC which expressly states that it is available for the "applicant for or proprietor of a European patent".

In the underlying appeal case, an opponent had filed an appeal against the opposition division’s interlocutory decision with which the patent was upheld in amended form. However, he failed to submit the Grounds of Appeal within the 4-month time limit of Art. 108 EPC. Admissibility of his appeal was thus at risk. The opponent filed the Grounds of Appeal after expiry of the 4 month time limit together with a request for re-establishment of rights.

The competent Technical Board of Appeals realised that the requester (opponent) was not the "applicant for or proprietor of the European patent”, as required by Art. 122, but it seemed unfair if the legal remedy of Art. 122 was not available to the appellant-opponent in this case. It referred the following question to the Enlarged Board of Appeals:

“Can an appellant as opponent have his rights re-established under Article 122 EPC if he has failed to observe the time limit specified in Article 108, 3rd sentence, EPC for filing the statement of grounds of appeal?”

The Enlarged Board observed that a loss of rights for failure to observe a time limit was particularly harsh when person who missed the time limit was not actually at fault and the failure was attributable to an oversight which occurred in spite of all due care required by the circumstances having been taken (point 1 of the reasons).

Regarding the question, whether Art. 122 EPC was applicable to persons other than the applicant or proprietor, the Enlarged Board stated:

"In the view of the Enlarged Board of Appeal [the first sentence of Art. 122 EPC] must not be interpreted as excluding a priori all other persons not expressly referred to in Article 122(1) EPC from re-establishment of rights, as this would clearly have inequitable and logically unjustifiable consequences. Other parties who are not applicants or patent proprietors may also through no fault of their own fail to observe a time limit in proceedings before the EPO and as a result run the risk of an irrevocable loss of rights. These include, for example, professional representatives before the EPO (Article 20 EPC), inventors (Rule 19 EPC) and persons who, although not applicants, are entitled to a European patent (Article 61 EPC). It is not clear on what grounds these persons should be excluded from re-establishment of rights." (point 3 of the reasons)

Based on the historical documentation relating to the EPC ("traveaux préparatoires"), the principle of equal treatment of parties, and taking the legislators original intent into account, it decided that Art. 122 EPC was also applicable to the appellent-opponent who failed to observe the 4 moth time limit for filing the Grounds of Appeal.

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Headnote:

Article 122 EPC is not to be interpreted as being applicable only to the applicant and patent proprietor. An appellant as opponent may have his rights re-established under Article 122 EPC if he has failed to observe the time limit for filing the statement of grounds of appeal.

The full text of the decision (in three languages) can be found here.