J 0006/79 (Restitutio in integrum/Euro-PCT-application) of 13.6.1980

Summary of Facts and Submissions

I. On 2 June 1978 the appellant made an international application No. PCT-FR 78/00001 in France, designating inter alia France (European Patent) and claiming priority from a national patent application, applied for in France on 8 June 1977.

II. On 21 December 1978, the International Bureau of the World Intellectual Property Organisation published the international application, together with the international search report.

III. The international application was received by the European Patent Office on 16 June 1978. At the express request of the appellant, made by telex on 10 January 1979, the European Patent Office sent the appellant a communication, dated 16 February 1979, giving fully detailed information on the procedure which had to be followed in dealing with the European Patent Office. The office stated, inter alia "the period prescribed for presenting the request for examination and paying the fee for examination does not, however, commence to run in any case until 20 months have elapsed since the priority date". This information, which was inaccurate, as it is the clear effect of the provisions of Article 150, paragraph 2, EPC that the expiry of the period of 20 months does not constitute the starting point of the period for presenting the request for examination, was also reproduced in the French text of the "Advice to PCT applicants" given in the Official Journal EPO No. 3/1979, pages 110-112, paragraph 5.

IV. On 3 August 1979, the Receiving Section of the European Patent Office sent a communication to the appellant to the effect that the application, was "deemed to have been withdrawn", because the request for examination had not been received before the expiration of the period of six months running from the date of publication of the international search report (Article 94, paragraphs 2 and 3 and Article 157, paragraph 1 EPC).

V. In a communication dated 6 August 1979, the appellant contested the finding of the Office, claiming that it had up to 21 September 1979 to present the request for examination and asking specifically for a decision on this matter. The appellant presented a request for examination by letter dated 7 August 1979 and paid the fee for examination on 17 October 1979.

VI. By a decision dated 30 August 1979, the Receiving Section held that the European patent application must be deemed to have been withdrawn because the request for examination had not been presented before the final date therefor, namely 21 June 1979. It could have been formulated at any time up to the end of the period of six months running from the date of publication of the international search report (Articles 150, paragraph 2, and 157, paragraph 1 EPC).

VII. On 19 September 1979 the appellant lodged a notice of appeal and statement of grounds and duly paid the appeal fee.

VIII. By letter date 18 January 1980, the appellant was informed by the Legal Board of Appeal that the communication of 16 February 1979 and the French version of the "Advice to PCT applicants", mentioned above, did not correspond to the German and English versions of the "Advice" and did not reproduce the provisions of Article 150, paragraph 2 of the Convention and that, accordingly, a corrigendum had been published in the Official Journal EPO No. 10/1979, page 443. The appellant was also informed that the matter of restoration of rights had not yet been the subject of a decision of the Legal Board of Appeal - although the Office, in its letter of 3 August 1979, had stated that restitutio in integrum was excluded so far as observance of the time limit in question was concerned, and although the same information had been published in the Official Journal EPO No. 11-12/1979, page 483. The appellant was informed that this matter could only be considered if special application were made in accordance with Article 122, paragraph 2, EPC.

IX. By letter dated 13 February 1980, the appellant asked for restoration of rights in accordance with Article 122, EPC. The fee for restitutio in integrum was paid on 22 February 1980.

Reasons for the Decision

1. As the appeal complies with Articles 106-108 and Rules 1, paragraph 1, and 64 EPC, it is receivable.

2. It is the fact that the request for examination was not presented within the period prescribed by Article 150, paragraph 2, EPC. In consequence, the Receiving Section correctly held that, by virtue of Article 94, paragraph 3 EPC, the application was deemed to have been withdrawn.

3. However, considering that the appellant has presented a request for restitutio in integrum and that, pursuant to Article 111, paragraph 1, EPC, the Legal Board of Appeal can exercise the powers of the instance which has taken the decision under appeal, it is necessary to consider whether the rights of the appellant can be restored. On this matter, Article 122 EPC stipulates as a general principle that the applicant or proprietor of a patent can obtain restitution if he has been unable to observe a time limit with respect to the European Patent Office although he has taken "all due care required by the circumstances". In the present case, it must be borne in mind that the appellant had expressly asked the Office to advise on the procedure to be followed, a novel procedure which, because it involves the application of two recent international conventions, is not simple. The applicant showed that it had paid careful attention and given due care to the carrying out of the procedure. It follows that the conditions of Article 122, paragraph 1, and the formalities prescribed by Article 122, paragraph 2, EPC are fulfilled.

4. It is necessary to consider whether restitutio in integrum is excluded by Article 122, paragraph 5, EPC. This provision expressly states that re-establishment of rights is excluded inter alia in a case of non-observance of the time limit prescribed by Article 94, paragraph 2 EPC for presenting the request for examination. In fact, so far as international applications transmitted to the European Patent Office are concerned, Article 150, paragraph 2, fourth sentence, EPC mentions the time limit of Article 94, paragraph 2, EPC, but it is really a special time limit for presentation of the request for examination fixed by Article 150 EPC. This time limit is the result of combining Article 22 PCT with Articles 94, paragraph 2 and 157, paragraph 1 EPC and cannot be identified with the time limit of Article 94, paragraph 2 EPC, which is concerned only with European patent applications. P. Mathély appears to share the same opinion ("Le droit européen des brevets d'invention", Librairie du Journal des Notaires et des Avocats, Paris 1978, page 435). The result of this interpretation is that the benefit of restitutio in integrum is not excluded in the present case.

5. Furthermore, even the Convention treats applicants differently in the case of a European application and in the case of a Euro-PCT application.In the case of a European application, the European Patent Office is bound to notify the applicant of the commencement of the period and to send him the text of the applicable provisions, in accordance with Rule 50 EPC (this obligation having been inserted in the Convention at the express request of interested circles, in order to avoid a loss of rights). The rules applicable to Euro-PCT applications contain no corresponding provisions. Consequently, the appellant was not advised by the European Patent Office of the date at which the time limit for presenting the request for examination would expire.

6. The interpretation that restitutio in integrum is possible in such a case, is, moreover, consistent with that concerning the other time limits which have to be respected when international applications are transformed into European applications. We observe that the applicant can be re-established in his rights within the time limit of one month mentioned in Rule 104b, paragraph 1, EPC, so far as concerns payment of national, search and designation fees. Furthermore, Article 79, paragraph 2, EPC is expressly mentioned in this provision, although the restoration within this time limit is also excluded in accordance with Article 122, paragraph 5, EPC. But it is clear that, both for reasons of harmony of system and fairness, the non-payment of designation fee must be treated in the same way as that of the other fees mentioned.

7. Thus, as Article 122, paragraph 5, EPC, does not exclude the application of restitutio in integrum, which is a general procedural principle established by the Convention, in the present case the appellant must be restored in its rights and the patent application is therefore no longer to be deemed withdrawn.

8. As the appeal succeeds, it is necessary to consider whether the appeal fee is to be reimbursed in accordance with Rule 67 EPC.The purpose of this rule is to avoid punishing the appellant for a clear wrong committed by the European Patent Office and only capable of correction by the lodging of an appeal. One condition for reimbursement is, in accordance with Rule 67 EPC the existence of a substantial procedural violation. By the expression "procedural violation" is to be understood, in principle, that the rules of procedure have not been applied in the manner prescribed by the Convention, but the giving of incorrect information by the European Patent Office about rules of procedure which, if followed by the applicant, can lead to the same consequences as the incorrect application of those rules, can also be considered as within the scope of "procedural violation". In the present case, having regard to the complexity of the rules of the two Conventions and the lack of experience in their application, the giving of inaccurate information concerning the interaction between these two Conventions must be considered as a substantial procedural violation Taking into consideration the effort that the appellant made to apply the new rules correctly, it is equitable to reimburse the appeal fee.

ORDER

For these reasons, it is decided that:

1. The appellant is restored in its rights so far as concerns the presentation of the request for examination within the time limit.

2. The decision of the Receiving Section of the European Patent Office dated 30 August 1979 is set aside.

3. Reimbursement of the appeal fee is ordered.