G 0003/91 (Re-establishment of rights) of 7.9.1992

Summary of Proceedings

I. In case J 16/90 (OJ EPO 1992, 260) before the Legal Board of Appeal, the appellant, who had failed to pay the filing, search or designation fees for the European patent application filed by him, either within the time limit provided for in Articles 78(2) and 79(2) EPC or within the period of grace provided for in Rule 85a EPC, applied for re-establishment of rights under Article 122 EPC.

II. In support of his application the appellant cited Legal Board of Appeal case law, according to which persons who had filed international applications for the grant of a European patent under Article 45(2) PCT (hereinafter referred to as "Euro- PCT applicants") but had not paid the appropriate fees had had their rights re-established. He maintained that, on grounds of equity, applicants who filed a European patent application direct (hereinafter referred to as "direct European applicants") should not be treated less favourably than Euro-PCT applicants.

III. The Legal Board of Appeal conceded that its past case law may not always have been correct; it considered the present case to involve an important point of law and therefore referred the following questions to the Enlarged Board of Appeal:

"1. On re-establishment of rights in respect of time limits for payments due at the beginning of the procedure before the EPO:

(a) In the case of European applications, is Article 122 EPC applicable to the time limits in Article 78(2) and Article 79(2) EPC?

(b) In the case of international applications, is Article 122 EPC applicable to the time limit for payment of the national fee referred to in Article 158(2), second sentence, EPC?

2. On re-establishment of rights in respect of time limits for filing a request for examination:

(a) In the case of European applications, is Article 122 EPC applicable to the time limit in Article 94(2) EPC?

(b) In the case of international applications, is Article 122 EPC applicable to the time limit referred to in Article 150(2), fourth sentence, EPC?"

IV. The President of the EPO pointed out in his comments submitted pursuant to Article 11a of the Rules of Procedure of the Enlarged Board of Appeal that in Legal Board of Appeal case law European direct and Euro-PCT applicants had been treated differently in that the latter had been granted re-establishment of rights in respect of failure to observe the time limit for payment of the national fee, search fee and examination fee.

He stated that the legal basis for re-establishment of the rights of Euro-PCT applicants was Article 48(2)(a) PCT, according to which the Contracting States have to excuse a delay by a PCT applicant in meeting a time limit if this is provided for in comparable circumstances under their national law. However, this article does not require Contracting States to treat Euro-PCT applicants better than applicants filing national or regional (European) applications direct. As the fees payable for the Euro- PCT application correspond in the main to those payable for a European application, even as regards the amount involved, there are no grounds for allowing re-establishment of rights in the case of Euro-PCT applications but not in the case of European direct applications.

V. The appellant did not submit any observations to the Enlarged Board of Appeal.

Reasons for the Decision

1. Entitlement to re-establishment of rights in respect of failure to observe time limits under Articles 78(2) and 79(2) EPC and under Rule 104b(1)(b) and (c) EPC

1.1 In the decision before the Enlarged Board of Appeal, the Legal Board of Appeal referred to its own case law, according to which a Euro-PCT applicant could be re-established in his rights if he failed to observe the time limits for paying the national fee and the search, designation and examination fees (see, for example, decision J 6/79, OJ EPO 1980, 225, point 6 of the Reasons for the Decision) or the period of grace under Rule 85a EPC (decision J 32/86 dated 16 February 1987, not published; decision J 22/88, OJ EPO 1990, 244), on the grounds that Article 122(5) EPC, which lists the exceptions to the general principle of re-establishment of rights, should be interpreted restrictively. As Article 122(5) EPC did not expressly mention either the time limit laid down in Article 150(2) EPC or those provided for in Rule 104b(1) EPC in conjunction with Articles 157(2)(b) and 158(2) EPC, the Euro-PCT applicant should be entitled to have his rights re-established if he fails to observe these time limits or the corresponding periods of grace.

1.2 As this case law has created a new situation, resulting in unequal treatment of direct European and Euro-PCT applicants, the Legal Board of Appeal has raised the question of whether Article 122(5) EPC is applicable to direct European applicants.

1.3 The first question to be examined is whether the provisions of the European Patent Convention have been interpreted correctly in past case law.

1.4 Article 48(2)(a) PCT reads: "Any Contracting State shall, as far as that State is concerned, excuse, for reasons admitted under its national law, any delay in meeting any time limit".

Consequently, a Euro-PCT applicant who has not carried out a certain procedural act within the time limit prescribed in the PCT can take advantage of the relevant provisions of the EPC concerning re-establishment of rights (Article 122 EPC) in all cases where the direct European applicant too may invoke them if he fails to observe the relevant time limit.

1.5 Furthermore, Article 48(2)(b) PCT provides as follows: "Any Contracting State may, as far as that State is concerned, excuse, for reasons other than those referred to in subparagraph (a), any delay in meeting any time limit".

Moreover, Article 150(2) EPC states that "International applications filed under the Cooperation Treaty may be the subject of proceedings before the European Patent Office. In such proceedings, the provisions of that Treaty shall be applied, supplemented by the provisions of this Convention". Under these provisions of the PCT and EPC, Article 122 EPC is applicable to Euro-PCT applicants, i.e. they can have their rights re- established in the event of failure to observe all time limits not excluded from re-establishment under Article 122(5) EPC.

1.6 Article 122(5) EPC does not expressly mention either Rule 104b(1)(b) and (c) EPC or Article 157(2)(b) and 158(2) EPC.

1.7 However, under Article 11(4) PCT, an international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) of that Article "shall have the effect of a regular national application ...". An analogous provision is contained in Article 150(3) EPC.

1.8 Under such circumstances, any international application meeting the conditions laid down in the PCT and requesting a European patent is deemed to be a regular European patent application. The forwarding of the international application to the EPO and payment of the national fee laid down in Article 158(2) EPC in conjunction with Articles 22(1) and 39(1) PCT are thus procedural acts equivalent to filing a European application direct and paying the relevant fees. The term "national fee" used in Article 22 PCT is consistent with this. The time limit laid down in Rule 104b(1)(b) and (c) EPC for payment of the national fee and search fee is thus perfectly comparable to the time limit for payment of the filing and search fees and the European designation fees under Articles 78(2) and 79(2) EPC, differing only in its duration. The different durations of the two time limits do not however alter their legal nature, as they are in essence identical. This is apparent even from the text of Rule 104b(1)(b) EPC, according to which the national fee payable by Euro-PCT applicants is merely the sum of the filing fee provided for in Article 78(2) EPC, the designation fees provided for in Article 79(2) EPC and, where applicable, the claims fees provided for in Rule 31 EPC. For this reason, equal treatment of the time limits which must be observed by Euro-PCT and direct European applicants is consistent with the law. Hence it follows that both the time limits provided for in Articles 78(2) and 79(2) EPC and those provided for in Rule 104b(1)(b) and (c) EPC in conjunction with Articles 157(2)(b) and 158(2) EPC are excluded from re- establishment under Article 122 EPC.

2. In 6.1 of the reasons for its decision, the Legal Board of Appeal raised the question - which, however, it did not refer to the Enlarged Board - as to whether the period of grace in Rule 85a EPC should be regarded as excluded in the same way as the corresponding normal periods from re-establishment of rights.

The Enlarged Board of Appeal observes that Rule 85a EPC was included in the Implementing Regulations in order to mitigate the serious consequences of failure to observe certain time limits excluded from re-establishment under Article 122(5) EPC. This it does by offering applicants for European patents who have not observed these time limits a last opportunity to rectify their omission within a period of grace and subject to payment of a surcharge. The period of grace in Rule 85a EPC is therefore closely linked to the normal periods laid down in Articles 78(2) and 79(2) EPC and in Rule 104b(1)(b) and (c) EPC and is accordingly excluded, as they are, from re-establishment under Article 122(5) EPC.

3. The Enlarged Board of Appeal does not need to comment on the other points referred to it in the decision, as they do not arise in connection with case J 16/90.

ORDER

For these reasons it is decided that:

Article 122(5) EPC is applicable both to the time limits provided for in Articles 78(2) and 79(2) EPC and to those provided for in Rule 104b(1)(b) and (c) EPC in conjunction with Articles 157(2)(b) and 158(2) EPC.