J 0001/80 (Filing priority documents) of 17.7.1980

Summary of Facts and Submissions

I. On 23 February 1979, the appellant filed a European patent application, claiming priority from a national patent application made in the Federal Republic of Germany on 28 February 1978. No copy of the previous national application was filed with the application.

II. On 29 March 1979, the Receiving Section of the European Patent Office at the Branch Office at The Hague, The Netherlands, wrote reminding the appellant that no copy of the previous national application had been filed, requesting the appellant to remedy the "deficiency" before the expiry of the period of 16 months from the earliest priority date, in accordance with Rule 38, paragraph 3, EPC, and warning the appellant that if the "deficiency" was not corrected in time, loss of priority for the application would result from the operation of Article 91, paragraph 3, EPC. The appellant did not respond to this reminder.

III. On 1 August 1979, the Receiving Section wrote informing the appellant that the claim to priority based upon the previous national application had been lost as no copy of that application had been filed before the end of the sixteenth month after the date of priority. The appellant was also advised of the right to apply for a decision in the matter under Rule 69, paragraph 2, EPC.

IV. On 2 August 1979, the European Patent Office at Munich received the relevant priority documents from the appellant under cover of a letter from the appellant dated 30 July 1979. The documents and the letter were forwarded to the Receiving Section, by which they were received on 13 August 1979.

V. On 14 August 1979, the appellant wrote a letter to the European Patent Office, Munich, which was forwarded to the Receiving Section, which received it on 22 August 1979. The appellant alleged that the claim to priority had not been lost and that the communication of 1 August 1979 was wrong. Article 4D of the Paris Convention distinguished between the making of a claim to priority and the fulfilment of formal requirements and this distinction had been carried over into the EPC. The appellant further contended that Rule 41, paragraph 1, EPC, taken together with Article 91, paragraph 1 (a) to (d) EPC, obliged the Receiving Section to inform an applicant of deficiencies and invite him to remedy them within such period as it should specify and that there could be no deficiency in the matter of failing to file copies of priority documents until the relevant 16 month period had elapsed. In the present case, no opportunity to correct a deficiency had been given. In the alternative, the appellant asked for restitutio in integrum and filed evidence in support of its application.

VI. In the meantime, on 17 August 1979, the Receiving Section had written to the appellant acknowledging receipt of the priority documents and drawing the attention of the appellant to the provisions of Article 122 EPC (restitutio in integrum).

VII. On 14 September 1979, the Receiving Section wrote to the appellant saying that it granted restitutio in integrum.

VIII. On 2 October 1979 the appellant filed an appeal against the decision of the Receiving Section dated 14 September 1979. A written statement setting out the grounds of appeal was combined with the notice of appeal. In substance, it repeated the appellant's earlier legal arguments.

IX. On 7 November 1979, the Receiving Section issued a decision rejecting the legal arguments in the appellant's letter of 14 August 1979 on the ground that Article 91, paragraph 2, EPC obliged the European Patent Office only to give an opportunity to correct deficiencies where they might lawfully be corrected and that once the 16 month period for filing priority documents had elapsed, failure to file such documents was a deficiency which could no longer lawfully be corrected. By the same decision, it was stated that the application in the alternative for restitutio in integrum had already been granted.

X. On 7 December 1979, the appellant filed an appeal against the decision of 7 November 1979. The grounds of appeal in substance repeated the appellant's earlier legal arguments.

XI. On 20 February 1980, the appellant wrote to the European Patent Office requesting an oral hearing, a date for which was fixed and subsequently re-fixed twice for the convenience of the appellant. On 20 May 1980 the appellant submitted elaborated legal arguments in writing and subsequently withdrew its request for an oral hearing.

Reasons for the Decision

1. The appeals comply with Articles 106 to 108 and Rules 1, paragraph 1, and 64, EPC, and are therefore, admissible.

2. The practical difficulties that applicants experience in obtaining certified copies of priority documents quickly from national patent offices were well known at the time when the European Patent Convention was drafted. It is undoubtedly for that reason that Rule 38, paragraph 3, EPC, permits an applicant to file certified copies of the priority documents at any time before the end of the sixteenth month after the date of priority.

3. According to the Convention, there is only a deficiency if the priority documents have not been filed at the expiration of the period. As the appellant rightly contends, it can only be said that there is a deficiency thereafter and the applicant must be given an opportunity to remedy that deficiency within a further period. Furthermore, there is a loss of rights only if the applicant does not take advantage of that opportunity.

4. It may be observed, in passing, that not all the provisions concerning deficiencies in Article 91 EPC operate in this way. In a case where it is necessary to correct an omission to designate the inventor, for example, the effect of Rule 42, paragraph 1, taken with Article 91, paragraph 5, EPC, is that the deficiency, which can be corrected within a sixteen-month period, exists from the moment of filing.

5. It follows that the decision under appeal was wrong and must be set aside. It also follows that the Receiving Section had been wrong to purport to grant restitution of rights that had never been lost. Article 122, paragraph 1, EPC, is so worded as to be applicable only where there is a loss of a right or of a means of redress.

6. In consequence, the fee paid for restitution of rights was wrongly accepted by the European Patent Office and must be refunded to the appellant. The Legal Board of Appeal has the power to order refund of this fee, by virtue of Article 111, paragraph 1, second sentence, EPC, which authorises the Board to exercise a power within the competence of the Receiving Section.

7. Furthermore, it was a substantial procedural violation on the part of the Receiving Section to purport to act on the appellant's alternative application for restitution of rights before deciding on the appellant's main submissions. As there has been a substantial procedural violation and as the appeal succeeds and as it is clearly equitable to order reimbursement of appeal fees in accordance with Rule 67, EPC, that can be ordered.

8. If the correct procedure had been followed, the appellant would have been given an invitation to file the missing priority documents within a period which could not have been less than two months; cf. Article 91, paragraph 2 and Rules 41, paragraph 1, and 84, EPC. In fact, the appellant did file the missing documents within a period of less than two months after the deficiency arose without receiving an invitation so to do. In these circumstances, any deficiency was corrected and there is no need in this case for the Legal Board of Appeal to issue an invitation to the appellant to correct any deficiency.

ORDER

For these reasons, it is decided that:

1. The Decisions of the Receiving Section of the European Patent Office dated 14 September and 7 November 1979 are set aside.

2. It is declared that no loss of the right of priority for the application in suit occurred as a result of the mere expiry of the period of sixteen months.

3. Reimbursement of the fee for restitution of rights is ordered.

4. Reimbursement of the appeal fees is ordered.