J 0004/91 (Additional period for renewal fee) of 22.10.1991

Summary of Facts and Submissions

I. Under Rule 37(1) EPC the renewal fee in respect of the third year for European patent application No. 87 301 564.8, filed on 24 February 1987, was due on Tuesday, 28 February 1989, but was only paid, together with the additional fee required under Article 86(2) EPC, on Thursday, 31 August 1989. In a decision dated 6 December 1990, the Receiving Section at the EPO refused as inadmissible a request for re-establishment of rights under Article 122 EPC on the grounds that it had not been filed within the two-month time limit set by Article 122(2) EPC.

II. The applicants filed an appeal against this decision on 4 February 1991. The appeal fee was paid on 10 February and the statement of grounds filed on 10 April.

III. At the oral proceedings held on 20 June 1991 the appellants requested that (1) the decision under appeal be set aside, and (2) it be ruled that the renewal fee with the additional fee had been paid in due time. As an auxiliary submission (to 2) they requested that (3) their application for the re-establishment of rights be granted.

IV. During the oral proceedings the appellants submitted a paper to the effect that if Article 86(2) had been applied correctly in conjunction with Rule 37(1) EPC, the payment made on 31 August 1989 would have been in due time. It argued that the units of time underlying the system for calculating due dates for renewal fees were not days, but calendar months, and that payment was accordingly possible up to the expiry of the time unit. It followed that the six-month period under Article 86(2) EPC ran from the end of the month to the end of the month, regardless of the number of the last day of the month in question. Rule 83(4) EPC, on the other hand, was based on a period which could begin on any day within a month and end on a day having the same number, a "day" being the smallest unit of time capable of triggering the start of a period. Under Rule 37(1) EPC it was the end of the month as such which triggered the start of a period. Rule 83 EPC was not therefore applicable. Nor was it needed, as Rule 37(1) and Article 86(2) EPC constituted a self-contained system of time limits.

V. The appellants have agreed in writing to this decision being delivered in German (cf. J 18/90 of 22 March 1991, Headword II and Reasons 1. - to be published).

Reasons for the Decision

1. The appeal is admissible.

2. Expiry of the additional period under Article 86(2) EPC The decision on the main request depends on whether the renewal fee, which, under Rule 37(1) EPC, fell due at the end of February 1989, could, under Article 86(2) EPC, only have been paid in due time together with the additional fee up to 28 August, or up to the end of August, i.e. up to 31 August.

2.1 Calculation of the additional period - practice hitherto Established EPO practice, as confirmed by the relevant literature and rulings of the Legal Board of Appeal, has been to calculate the additional period under Article 86(2) EPC by first determining the number ("Zahl"- "quantième") of the due date at the end of the month in which the application was filed. Under Rule 83(4) EPC the end of the period was then taken to be the day of the sixth subsequent month having the same number as this day. Apart from one uncommented example, the Office's practice would not seem to have been formally enunciated. This one example appeared in OJ EPO 1980, 101, where the six months were calculated from "30.6." to "30.12." (not "31.12."). The relevant literature speaks of a "curtailed period" (verkürztes Fristende, see Gall in "Mitteilungen der Deutschen Patentanwälte", 1988, 135, 137 and 1991, 137, 138; see also the "Münchener Gemeinschaftskommentar" on Article 86 EPC, in particular point 92). The Legal Board of Appeal confirmed this calculation in its decision of 31 October 1989 (J 31/89-Beaver - not published). The only explanation the Board gave for its ruling, however, was a reference to the "clarity" of the relevant provisions.

2.2 Consequences of an interpretation based on a seemingly clear wording The present method of calculation produces a "curtailed period" in five of the twelve possible constellations of months (Feb./Aug. - Apr./Oct. - June/Dec. - Sept./Mar. - Nov./May), potentially affecting 42% of all renewal fee payments. Although little use is made of this period in the early years of a patent's life, it is nonetheless very important, because recourse to it increases when doubts arise concerning the commercial value of the invention or its patentability. This period is therefore potentially important for almost every patent and patent application as it is applicable, at one time or another, to the majority of patents and patent applications, regardless of whether advantage is taken of it or not. The EPO already bears responsibility for large numbers of pending European patent applications, and Community patents will later also be added to this administrative burden. Rule 37(1) EPC will also apply to these patents (cf. Rule 11 of the Implementing Regulations to the Community Patent Convention 1989). As the relevant provisions are interpreted at present, large numbers of pending European patent applications, and of future Community patents, would be affected by the additional period expiring before the end of the sixth month. All those applications and patents whose application dates happened to fall in February, April, June, September or November would be affected, and would continue to be so for their entire term. In the case of all other applications and patents, however, the final due date and the initial due date would both fall on the last day of the month. In view of these consequences of the existing interpretation of the relevant provisions, an examination of whether or not an interpretation based solely on a literal or grammatical construction can be allowed to stand would appear to be justified.

2.3 Legal basis of an interpretation

A theory of interpretation of the European Patent Convention cannot be provided here. In the context of unitary European law general reference is made to Zuleeg in "Europarecht", 1969, 97, and to Kutscher and Dumont in the proceedings of a conference on methods of interpretation held in Luxembourg on 27 and 28 September 1976 (published by the Court of Justice of the European Communities). With regard to the European Patent Convention in particular, reference is made to Singer, "EPÜ", Vorbemerkung, pp. 9 - 12 and the numerous sources quoted there. In the present case, attention must focus on the significance of the travaux préparatoires (preparatory work), the principle of sens clair and on the principle of "teleological" interpretation (related to that of effet utile and of purposive construction).

2.4 Literal meaning and the travaux préparatoires

2.4.1 Since the present case does not involve the application of Rule 83(4) EPC in isolation, but its interpretation in the light of Rule 37(1) EPC, a purely literal interpretation becomes suspect as soon as it is viewed in the context of the underlying rationale. Rule 83 EPC contains provisions for calculating time limits such as are to be found in the civil and procedural law of many countries and as are also found in Rule 80.2 PCT. Like these models, the assumption underlying Rule 83 EPC is that a period starts on any one of a series of consecutive days. The day marking the start of the period is thus already defined by its context: where time limits are measured in weeks, it is a day of the week; where they are measured in months, it is a day having a particular number. Rule 83 EPC therefore itself assumes that the day on which the time limit commences can be characterised in different ways, depending upon the particular context in which the day is mentioned. In Rule 37(1) EPC this day is characterised as "the last day of the month". It is therefore wrong to assume, as does the interpretation adopted hitherto, that the due date under Rule 37(1) EPC has to be "allotted" a number which is entirely immaterial for the application of Rule 37(1) EPC. Thus even a critical interpretation of the wording itself raises doubts which give a certain latitude for interpretation.

2.4.2 That Rule 83(4) EPC as applied to Rule 37(1) EPC is open to interpretation is also clear from the travaux préparatoires: the preliminary draft of the Convention and the Implementing Regulations of 1962/64 did not yet contain an "end of the month" provision. Rather, the renewal fee fell due "before the commencement" of the patent year (Article 120), i.e. on the day before the "anniversary", which could be any day of a month. This draft also contained provisions corresponding to the present Rules 83 and 85 EPC. Applying those provisions presented no problems precisely because the due date could be any day of the month.

In November 1969 Working Party I of the Luxembourg Intergovernmental Conference decided to "fix the due date on the last day of the month in every case, in order to simplify the administration" (Doc. BR/12/69 dated 18 December 1969, p. 38, point 79). No further mention of this was made in any of the later documents.

Certain conclusions can nonetheless be drawn from a consideration of the history of the drafting of the relevant provisions. Articles 129 to 131 of the "Second Preliminary Draft of 1971" provided a self-contained set of rules relating to the payment of renewal fees. Paragraph 1 of Article 130, "Payment of renewal fees" ("Fälligkeit" - "Echéance"), corresponds to the first sentence of Rule 37(1) EPC, paragraph 2 to Article 86(2) EPC. The Implementing Regulations drawn up at that time also contained the above-mentioned general provisions governing the calculation of time limits corresponding to the present Rules 83 and 85 EPC. As far as Article 130, "Payment of renewal fees", is concerned, however, it is difficult to imagine that, when passing from paragraph 1 to paragraph 2, Rule 83(4) EPC should come into effect in such a way that in 58% of cases the period would expire at "the end of the month", while 42% of cases would face a "curtailed period".

It cannot be assumed that this Article 130, "Payment of renewal fees", would postulate the "last day of the month" principle in paragraph 1, only for it not to apply to nearly half of all applications when it comes to the additional period described in paragraph 2. That this Article 130, "Payment of renewal fees", was held to be complete and self-contained, i.e. to be a "lex specialis", to which the "lex generalis" of Rule 83(4) EPC could not be applied on the basis of "numbered" days, but only "mutatis mutandis", is therefore at least a plausible hypothesis. This can only mean that the due date, as the starting date, must be seen in its capacity as "the last day of the month". When the provisions were later divided up between the Convention and the Implementing Regulations, Article 130(2) remained in the Convention as the present Article 86(2) EPC, since it is enshrined in international law (Article 5bis of the Paris Convention). In contrast, Article 130(1) became Rule 37(1), first sentence, of the Implementing Regulations, since it is a matter of administrative procedure, which should be readily amendable. The provisions previously united in the single Article 130, "Payment of renewal fees", were certainly not separated for reasons relating to the method for calculating the additional period under Article 86(2) EPC.

2.5 The principle of "sens clair" as applied to Rules 37(1) and 83(4) EPC

2.5.1 The maxim of in claris non fit interpretatio dates back to Roman law. Its modern-day equivalent in the jurisprudence of international courts is the principle of "sens clair", which rules out interpretation where the wording is clear (see also Zuleeg, op. cit., and Bruchhausen in GRUR Int. 1983, 205, 209). 2.5.2 Whilst the principle of "sens clair" has to be accepted to the extent that the clearly expressed will of legislators must be complied with, this does not mean that no attempt may be made to establish the meaning of a provision in the light of its intended purpose, within the object and purpose (see Zuleeg, op. cit., case law of the Court of Justice of the European Communities). In this case the object and purpose was the decision to "fix the due date on the last day of the month" (see 2.4.2 above). There is no reason to assume that this aim applied only to the initial due date and not to the final one. The two cases could easily have been put on an equal footing by adopting a formula in Rule 37(1) EPC based on "the first day of the subsequent (seventh) month" instead of the "last day of the month". Had this been done the purely literal application of Rule 83(4) EPC would have presented no problem. As the situation stands at present, however, a possible consequence is that 42% of cases face a "curtailed period". This was surely not the intention of the authors of the Convention. It would run counter to the goal of simplifying administration, which can only be understood as simplifying administration in a context of legal certainty. The only conclusion possible, therefore, is that either the authors overlooked the possible consequences of the wording chosen in the context of the mechanics of the system, or, as is more likely, that they presumed that Rule 83(4) EPC would be applied mutatis mutandis in relation to the "last day of the month" provision.

2.6 Teleological interpretation

Rule 83(4) EPC can therefore be applied in the context of Rule 37(1) EPC in two possible ways, either by starting from the "number" of the last day of the relevant month, or by starting from the characteristic of that day as "the last day of the month" and from the reason for selecting that day, i.e. to simplify administration. In doing so it can be assumed that the authors did not intend the important additional period under Article 86(2) EPC, which corresponds to the period of grace in the Paris Convention, to operate from a "last day of the month" due date in such a way that in 58% of cases the period would expire at the end of the month, while 42% of cases would face a "curtailed period". This is potentially an enduring source of errors and loss of rights on the part of applicants and patent proprietors.

In the Board's view, therefore, the relevant provisions are not of such "clarity" as to be closed to interpretation. Applying the rules of teleological interpretation the Board can accordingly choose whichever possibility best corresponds to the manifest object and purpose, namely "to simplify administration with legal certainty for applicants". This method of interpretation is also broadly in line with what is termed the "effet utile" or a "purposive construction" (see the literature cited under point 2.3).

2.7 Result of the interpretation of Rule 83(4) EPC in the context of Rule 37(1), first sentence, EPC Paragraphs 3 and 4 of Rule 83 EPC share the common principle that the "corresponding day" is derived from a day characterised either by its "name" or its "number". In Rule 37(1) EPC, however, the due date is characterised as "the last day of the month". For the calculation of the additional period under Article 86(2) EPC, therefore, Rule 83(4) EPC must clearly be applied "analogously", i.e. mutatis mutandis. The fact that Rule 37(1), first sentence, EPC and Article 86(2) EPC both stem from the earlier Article 130, "Payment of renewal fees", contained in the Second Preliminary Draft of 1971 would support such an interpretation. Diverging from decision J 31/89 of 31 October 1989 (not published), therefore, the Board concludes as follows: When calculating the six-month period for the payment of a renewal fee with additional fee under Article 86(2) EPC, Rule 83(4) EPC must be applied mutatis mutandis in the light of Rule 37(1), first sentence, EPC. This means that the six-month period does not end on the day of the subsequent sixth month corresponding in "number" to the due date according to Rule 37(1), first sentence, EPC, but on the day which is equivalent to this due date by virtue of its being "the last day of the month". When calculating the additional period under Article 86(2) EPC, therefore, Rule 83(4) EPC, in the context of Rule 37(1), first sentence, EPC, runs "from the last day of the month to the last day of the month".

2.8 The result seen in terms of the Convention as a whole - interpretation based on inherent consistency of the law The methods of interpretation which have been applied should not produce a result at odds with an interpretation of the Convention based on inherent consistency of the law it enshrines. Consideration must therefore also be given, within the overall framework of the Convention, to how the expiry of periods for the payment of renewal fees is dealt with in other cases.

2.8.1 This involves an examination of the provisions governing

(1) the period under Rule 104b(1)(e) for payment of the renewal fee in respect of the third year on entry of a Euro-PCT application into the regional phase at the EPO,

(2) the period under Rule 37(3) EPC for the payment of renewal fees already due in respect of European divisional applications, and

(3) the period under Article 141 EPC for the payment of renewal fees for European patents which have become subject to national law.

These cases involve special provisions for the first payment of renewal fees upon entry into a new system, where a deviation from the "last day of the month" rhythm of payments is inevitable. These are special cases and therefore do not conflict with the above interpretation.

2.8.2 However, Legal Advice No. 5/80, "Calculation of aggregate time limits" (OJ EPO 1980, 149), must be considered in terms of whether it breaches the "last day of the month" rule. It mentions (on page 152), more or less in passing, that the principles it sets out also apply to the additional period under Article 86(2) EPC. This period would not therefore start on "the last day of the month", if circumstances of the kind set out in paragraphs 1, 2 and 4 of Rule 85 EPC applied to that day, and would not then expire on the last day of the sixth month, but in the seventh month. This could produce the mistaken conclusion (as in J 17/90) that the principle of "the last day of the month" also applied to the seventh month. Although such a postponement is immaterial to the present case, this issue is no mere obiter dictum. The consistency of the law has to be considered in any interpretation of Rule 83(4) EPC which diverges from the literal wording. When deciding on an interpretation of Rule 83(4) EPC, the effect Rule 85 EPC would have on the result must also be borne in mind.

3. The applicability of Legal Advice No. 5/80, "Calculation of aggregate time limits" (OJ EPO 1980, 149, 152), to the additional period under Article 86(2) EPC

3.1 Viewed from the historical perspective, Legal Advice No. 5/80 was drafted with the previous versions of Rules 85a, 85b and 104b(1) EPC in mind. These Rules have since been so altered that the Legal Advice is now only applicable to Rule 85a(2) EPC. The Legal Advice makes only passing mention of the additional period under Article 86(2) EPC: it applied primarily to the above- mentioned Rules in their former wording. When laying down these earlier additional periods account had to be taken of the time limit for requesting examination (Rule 85b EPC), the intention being not to provide an additional period which could be seen as an extension of the time limit for requesting examination, but to provide a "period of grace" as a special remedy. This explains the wording "within a period of grace of ... after expiry of ... the time limit". The aim of the Legal Advice, therefore, was to provide a method of calculating a time limit which does not begin until "after expiry" of another time limit. The Legal Board of Appeal did not question the applicability of the Legal Advice to the time limits set under the former Rules (J 9/82, OJ EPO 1983, 57; J 14/86, OJ EPO 1988, 85); nor did it have any occasion to do so.

3.2 In the present case it is sufficient to examine whether the Legal Advice, as it mentions in passing, does indeed apply to the additional period under Article 86(2) EPC. In this case the period does not begin with the expiry of an earlier period, as it does in the above-mentioned Rules; it is a "period of grace" ("Schonfrist" - "délai de grâce") which runs from the due date of Rule 37(1) EPC. If this due date falls on a Saturday or Sunday, a payment actually received on the following working day is not subject to an additional fee. According to the generally held and correct interpretation, Rule 85(1) EPC applies here mutatis mutandis, even though, if interpreted strictly in line with its wording, it does not fit the circumstances of this case: a "due date" is not a "time limit" which can be "extended". As mentioned above, Rule 85 EPC is applicable to payments actually made in circumstances involving weekends/public holidays, postal strikes or dislocation of the proper functioning of the EPO, but this does not mean that the due date is "postponed". Rule 85 EPC is concerned with situations in which the EPO is prevented from receiving documents or payments, as a result of the Office being closed at weekends or on public holidays (paragraph 1), of general interruption in the delivery of mail (paragraph 2), or of dislocation of the proper functioning of the EPO (paragraph 4). Although Rule 85 EPC does say that "a time limit shall extend ..." in such circumstances, some qualification is necessary. A further, essential, precondition for this Rule to apply at all must be that an attempt at payment or filing is actually made around the time of the dislocation. A postal strike only has to be considered for it to become clear that the start of the additional period under Article 86(2) EPC is not affected by such an eventuality.

When calculating the six-month period under Article 86(2) EPC, therefore, it is irrelevant whether or not the circumstances described in Rule 85 EPC occurred. It would scarcely make sense to apply Rule 85 EPC to the beginning of the additional period, although it can be applied - even on a literal construction - at the expiry of the six-month period, because a time limit expires which, in accordance with this Rule, is then "extended".

3.3 Result of consideration of the applicability of Legal Advice No. 5/80, "Calculation of aggregate time limits", to the additional period under Article 86(2) EPC Given the above, the following can be concluded: Legal Advice No. 5/80, "Calculation of aggregate time limits" (OJ EPO 1980, 149), is not applicable to the start of the additional period under Article 86(2) EPC. This means that the period starts on the last day of the month referred to in Rule 37(1), first sentence, EPC, even in the circumstances described in Rule 85(1), (2) and (4) EPC. It follows that the occurrence of such circumstances at the beginning of the period does not result in the end of the period being postponed beyond the end of the sixth month and into the seventh month.

3.4 However, the above interpretation could cause difficulties for those applicants who had, according to the Legal Advice, paid in due time. The principle of the protection of legitimate expectation therefore requires that the Legal Advice continue to be regarded as applicable to the additional period under Article 86(2) EPC until such time as the EPO gives notice to the contrary and for as long as the notes in EPO forms referring to the additional period continue to give due dates calculated in accordance with the Legal Advice (i.e. due dates in the seventh month). Beyond this, individual applications for the re- establishment of rights could be examined on their merits.

4. The auxiliary submission and the fee for re-establishment of rights

As the main request can be granted it was not necessary to set out and consider the facts and submissions of the request for re- establishment of rights. Since the request for re-establishment of rights was an auxiliary submission, the fee for re-establishment of rights must be refunded (T 152/82, OJ EPO 1984, 301).

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The renewal fee with respect to the third year for European patent application No. 87 301 564.8 and the additional fee paid on 31 August 1989 are found to have been paid in due time.

3. Refund of the fee for re-establishment of rights is ordered.