J 0008/94 (Re-establishment) of 7.12.1995

Summary of Facts and Submissions

I. The appeal at issue lies from the Receiving Section's decision dated 14 December 1993 refusing a request from the applicant of European patent application No. 91 105 595.2 for re-establishment in respect of the time limit for filing the request for examination under Article 94(2) and/or the corresponding period of grace under Rule 85b EPC.

II. The request for re-establishment had been filed once the applicant's representative had noticed that the examination fee had not been paid within the aforementioned time limits because of an erroneous entry in the representative's files.

III. By the contested decision the department of first instance refused the request for re-establishment as inadmissible on the grounds that the provisions of Article 122(5) EPC excluded from re-establishment both the normal time limit under Article 94(2) EPC and the corresponding period of grace under Rule 85b EPC. It referred in particular to Legal Board of Appeal decision J 12/82 (OJ EPO 1983, 221).

IV. The applicant, now appellant, lodged an appeal on 11 February 1994 against the Receiving Section's decision, paying the appeal fee at the same time. In the statement of grounds for the appeal filed on 15 April 1994 and the oral proceedings before the Legal Board of Appeal on 7 December 1995 the appellant submitted essentially as follows:

(i) Decision J 12/82 cited by the department of first instance was concerned with the old version of Rule 85b EPC, in which the period of grace directly followed the normal time limit for filing the request for examination. That decision therefore could not be applied to the new version of this Rule. In the new version the period of grace was an independent time limit, completely separate from the normal time limit, and therefore not covered by the exclusion under Article 122(5) EPC.

(ii) This was in particular the case since Article 122(5) EPC, in which only the normal time limit under Article 94(2) EPC was expressly mentioned, was to be interpreted narrowly as an exclusion provision. This view was supported by inter alia Singer in "Europäisches Patentübereinkommen", Cologne, etc., 1989, No. 6 re Article 122 EPC.

(iii) Singer also pointed out in this connection that one reason for excluding the time limit for the request for examination from re-establishment had been the originally planned considerable length of that time limit. Since this had not become a reality, the opportunity now arose with the new version of Rule 85b EPC to reduce as far as possible the severity of what was in fact an obsolete exclusion for the applicant by a correspondingly narrow interpretation of Article 122(5) EPC.

(iv) Enlarged Board of Appeal decision G 3/91 (OJ EPO 1993, 8) presented no obstacle in this respect. In No. 2 of the Reasons it dealt only with the periods of grace referred to in the new version of Rule 85a EPC. It thus concerned only periods of grace relating to the early stages of the application procedure and left open the question of how to deal with the period of grace under Rule 85b EPC, which concerned a later stage of the procedure. Thus the Enlarged Board of Appeal had deliberately left some latitude for an interpretation of Article 122(5) that differentiated between the periods of grace under Rules 85a and 85b EPC.

(v) Such a differentiation was in fact justified in particular because failure to observe the time limit for filing the request for examination or the period of grace under Rule 85b EPC concerned a late stage of the procedure, in which because of the prior publication of the application there was no longer any opportunity of filing the application again. This was a particularly severe penalty for the applicant and also represented a serious risk for the representative since the loss of protective rights was final for all designated states. The time limits mentioned in Rule 85a EPC, on the other hand, concerned an early stage of the procedure, in which it would often still be possible to file the application again.

(vi) In view of these practical differences, there was no justification in treating Rules 85a and 85b EPC the same as regards exclusion from re-establishment, even if they were similarly worded. Even a note to this effect in the background documentation relating to the new version of these Rules did not alter this.

On the whole, therefore, there was a strong case for interpreting Article 122(5) EPC narrowly with regard to the period of grace under Rule 85b EPC, so as not to exclude it from re-establishment.

V. The appellant requested that its application for re-establishment in respect of the period of grace under Rule 85b EPC be granted. With regard to the fulfilment of its obligation to exercise due care, it referred to its submissions before the department of first instance.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rules 1(1) and 64 EPC and is therefore admissible. The appellant has given its agreement to the decision's being written in German, which justifies the departure from the language of proceedings, which was English (see J 18/90, OJ EPO 1992, 511).

2. The contested decision concerns a request on the basis of Article 122 EPC for re-establishment in respect of the time limit for filing the request for examination or the corresponding period of grace under Rule 85b EPC. The department of first instance was of the opinion that this request was inadmissible since it related to time limits that were excluded from re-establishment by Article 122(5).

In the oral proceedings the appellant rightly no longer questioned this with regard to the normal time limit under Article 94(2) EPC (see Enlarged Board of Appeal decision G 5/92, OJ EPO 1994, 22).

3. What remains to be examined, therefore, is whether the provision in Article 122(5) EPC excluding the time limit for requests for examination from re-establishment also applies to the period of grace under Rule 85b EPC.

For the old version of Rule 85b EPC, which came into force on 4 June 1981, this question has already been answered in the affirmative by the Legal Board of Appeal (see J 12/82, OJ EPO 1983, 221). The appellant, however, is of the opinion that this decision no longer applies to the new version of Rule 85b EPC, which has been in force, with minor amendments, since 1 April 1989 (see OJ EPO 1989, 1 ff).

4. Before the introduction of the period of grace provided for in Rule 85b EPC, the consequence of Article 122(5) EPC in conjunction with Article 94(2) and (3) was that any failure to observe the time limit for filing the request for examination led irrevocably to the loss of the application. What emerged as particularly serious was that the irrevocable loss of the application occurred at an advanced stage of the procedure, when a considerable amount of fees had already been paid and it was also no longer possible to file the application again because of the prior publication (see CA/52/80, dated 10 October 1980, Explanatory Memorandum, Part I, II.1).

Against this background the purpose of original Rule 85b EPC was to provide some arrangement that, instead of re-establishment, which was ruled out, allowed the risk of an irrevocable loss of rights to be reduced in some other way. It was not therefore to open up new possibilities of re-establishment, circumventing the clear exclusion of Article 122(5) EPC (see J 12/82, OJ EPO 1983, 221, Nos. 7 to 9 of the Reasons).

5. The new version of Rule 85b EPC introduced in 1989 has not altered this in any way.

According to this version the period of grace no longer immediately follows the time limit for filing the request for examination, but begins to run only on notification of a communication from the Office pointing out the failure to observe the time limit.

This amendment was made because experience showed that often when a time limit was missed the period of grace immediately following it could not be observed either. The problem was the same for all periods of grace under Rules 85a and 85b (see CA/29/88, dated 16 May 1988, Part I, Art. 14).

The reason for the new version of Rules 85a and 85b EPC was therefore above all procedural. It was intended primarily to increase certainty for applicants with regard to the observance of periods of grace. It was not, however, intended that any change be made with regard to the exclusion from re-establishment of periods of grace, as is clear from the preparatory documents (CA/79/88 Add. 1, dated 21 November 1988, No. 3).

6. This was confirmed as regards Rule 85a EPC by Enlarged Board of Appeal decision G 3/91 (OJ EPO 1993, 8, No. 2 of the Reasons), according to which the period of grace under the new version as well of that Rule is closely linked to the corresponding normal time limits and therefore, like these, excluded from re-establishment.

The fact that the Enlarged Board of Appeal did not in that connection mention Rule 85b EPC does not, however, allow the inference that a certain latitude was to be left for assessing that period of grace differently. The situation was rather that this point of law was not relevant for deciding the case referred and was therefore, in line with established practice, not answered by the Enlarged Board (see G 4/91, OJ EPO 1993, 339; G 5/92, OJ EPO 1994, 22; G 6/92, OJ EPO 1994, 25).

On the other hand, the aforementioned decision G 3/91 makes clear that the exclusion under Article 122(5) EPC is not in general to be interpreted "narrowly". At least with regard to the period of grace under Rule 85a EPC there can be no doubt about this.

7. Turning to the period of grace under Rule 85b EPC, the Board sees no reason for interpreting the provisions of Article 122(5) EPC differently.

In the system established by the Convention Rules 85a and 85b EPC represent, from the procedural point of view, similarly arranged legal remedies relating to failure to observe time limits that are both excluded from re-establishment by Article 122(5) EPC. Article 122(5) itself also makes no distinction between the time limits excluded from re-establishment that it mentions.

Nor does the new version of Rules 85a and 85b EPC reveal any difference in the way the periods of grace are arranged with regard to the possibility of re-establishment (see 5. above). In both Rules the periods of grace are linked in exactly the same way to the normal time limit. The Board's conclusions in G 3/91 therefore also apply to Rule 85b EPC.

8. Even when original Rule 85b EPC was drafted the legislator took into consideration that the corresponding loss of rights as a result of deemed withdrawal under Article 94(3) EPC could have more serious consequences for an applicant than the loss that occurs with failure to observe one of the time limits mentioned in Rule 85a EPC (see 4. above and CA/52/80, dated 10 October 1980, Explanatory Memorandum, Part I, II.1). Nevertheless, and in full knowledge of the different legal consequences, the legislator introduced similar arrangements for both cases.

Thus even in view of the differing severity of the legal consequences, there can be no justification for any special interpretation of Article 122(5) EPC with regard to the period of grace under Rule 85b EPC.

9. It follows from the foregoing that there is no basis in the Convention for the appellant's interpretation of Article 122(5) EPC.

The Board therefore concludes that the period of grace under current Rule 85b EPC is excluded from re-establishment in the same way as the normal time limit mentioned in Article 122(5) EPC for filing the request for examination under Article 94(2) EPC.

10. The Board does have some sympathy for the appellant's argument that failure to observe the period of grace under Rule 85b EPC can never be completely ruled out, even when the greatest care is exercised, with the result that applicants may, where they fail to observe the time limit, suffer a final loss of rights. It is acknowledged that the current arrangements cannot rule out all risk of loss of rights. Nor, as has been shown, was this the legislator's intention. Amending the situation would, however, represent an assumption de lege ferenda, of which the Board is incapable when administering justice since it is bound by the existing legal situation created by the legislator.

ORDER

For these reasons it is decided that:

The appeal is dismissed.