J 0002/86 - Isolated mistake / resitutio - #60

Citation rank: 60
No. of citations: 83

J 2/86 deals with re-establishment of rights under Art. 122 EPC (restitutio in integrum). The Summary of Facts and Submissions, the Reasons and Order are the same as in J 3/86, which was already mentioned in this blog here.

In the underlying case the applicant failed to pay the accumulated third and fourth annuity fees for two divisional applicaitons, which were due upon filing, but could be paid within 4 months of the filing date (now Art. 86, Rule 51(3) and (2)). The applicant was informed that the third and fourth annuity fees could still be validly paid within 6 months of the due date, provided that a surcharge is paid.

The representative of the applicant then also failed to pay the 5th year annuitys of the two divisional, which became due some time later. He was again informed by the EPO that the 5th year annuity could still be validly paid within 6 months of the due date, provided that a surcharge is paid (R. 53(2) EPC).

The applicant paid the 5th year annuities within the 6 months time limit. Payment of the third and fourth annuity fees was made, however, only 3 respectively 1 days too late.

The respresentative filed a request for re-establishment of rights according to Art. 122 EPC. In the statement setting out the facts he stated that the failure to pay the fees in time was "because of the circumstances arising from the arrangements for the payment of maintenance fees" between the representative's office and the appellant. The arrangement was that the representative was responsible for filing and prosecution of European applications, and the Appellant was responsible for payment of maintenance fees. However, the arrangement between applicant an representative had recently been changed, and those changes led to an exceptional situtation in which the payment of the 3rd and 4th annuities was not made in due time (see link below for details).

The Board evaluated the arguments and facts and stated:

"The Board recognises that Article 122 EPC is intended to ensure that in appropriate cases the loss of substantive rights does not result from an isolated procedural mistake within a normally satisfactory system. Thus, in the Board's view, in spite of all due care required by the circumstances having been taken by the Appellant, the Appellant was unable to pay the third and fourth year renewal fees for these two divisional applications within the time limits required by the EPC (because of such special circumstances)." (point 4 of the reasons)

The criterion that - in restitutio cases - the loss of a substantive right should "not result from an insolated mistake within a normally satisfactory system" has from then on been applied in many restitutio cases (J 28/92, J 13/93, J 13/07, J 11/09, J 12/09, T 381/93, to name a few).

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Headnote:

Article 122 EPC is intended to ensure that in appropriate cases the loss of substantive rights does not result from an isolated procedural mistake within a normally satisfactory system.

The full text of the decision can be accessed here.

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.

J 0003/86 - Excusable isolated mistakes / restitutio - of 21.10.1986 - #76

Citation rank: 76
No. of citations: 64

J 3/86 had to decide on a request for restitutio in integrum (Art. 122) by an applicant who failed to timely pay the annuity fees for two of his European patent applications (in this case: two divisional applications).

The request for restitutio was not allowed at first instance, because the statement setting out the grounds of the non-payment was deemed insufficient ("... because of the circumstances arising from the arrangements for the payment of maintenance fees" between the representative's office and the Appellant).

The appellant, however, filed further statements, affidavits and arguments in support of his appeal against the first-instance decision.

The Board held that Article 122 was intended to ensure that loss of rights does not result from an isolated mistake in an otherwise satisfactory system; thus, an appellant or its representative must be able to demonstrate that a normally effective system for monitoring time limits prescribed by the EPC was established at the relevant time in the office in question.

The Board reconsidered the request and finally allowed restitutio.

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Headnote:

Article 122 EPC is intended to ensure that in appropriate cases the loss of substantive rights does not result from an isolated procedural mistake within a normally satisfactory system.

The full text of the decision can be found here.