J 0016/90 (Re-establishment of rights) 06-03-1991

1. A decision on this appeal, which is admissible, hinges on the question of whether Article 122(5) EPC in fact allows re- establishment of rights in respect of the period under Rule 85a EPC. Only after this point of law has been clarified will it be possible to consider whether the requirements for admissibility in Articles 122(2) and (3) EPC have been met. Lastly, it will be a matter of deciding whether the application for re-establishment of rights was justified, i.e. whether due care had been taken within the meaning of Article 122(1) EPC.

1.1 As the department of first instance, the EPO's Receiving Section dealt only with the first point of law mentioned above and found the answer to be negative. Logically speaking, the Receiving Section acted correctly in not examining any points of law other than that concerning the exclusion under Article 122(5) EPC.

1.2 The Legal Board of Appeal, however, refers to the Enlarged Board of Appeal the question as to whether re-establishment of rights is ruled out. Under Article 112(1)(a) EPC the Board of Appeal making the referral must consider a decision by the Enlarged Board to be "required". It is not sufficient for the point referred to be of general interest: an answer to it must also be necessary to a decision on the appeal in question. Unlike the department of first instance, therefore, the Legal Board is obliged, before making the referral, to consider whether it cannot leave open the question of exclusion under Article 122(5) EPC on the grounds that the appeal would have to be dismissed for other reasons anyway.

1.3 If the question of exclusion from re-establishment of rights under Article 122(5) EPC did not arise, the Legal Board would no doubt grant the present appeal. The requirements for admissibility in Articles 122(2) and (3) EPC have been met. The applicant's inability to work and confinement to bed during the period in question have been attested by the two medical certificates. The Board would therefore grant re-establishment of rights - provided that were possible under Article 122(5) EPC - without requiring any further proof.

2. The appellant requests re-establishment of rights in respect of the period under Rule 85a EPC. The periods referred to in Rules 85a and 85b EPC are periods of grace, which are not themselves mentioned in Article 122(5) EPC but are related to the normal time limits referred to there. It is clear to the Board that the question whether re-establishment can apply to periods of grace depends on whether it applies to the normal periods to which they are related. Otherwise, Rules 85a and 85b EPC would not only establish periods of grace but also open up the possibility of re-establishment where this is excluded by the Convention. The Administrative Council of the European Patent Organisation was neither able nor disposed to provide for that when creating these rules (for a fundamental commentary on periods of grace see J 4/86, OJ EPO 1988, 119, Reasons 4). The two periods of grace apply both to European patent applications and to international applications under Article 153(1) EPC in which a European patent is requested ("Euro-PCT" filings). That Rules 85a and 85b EPC, originally intended purely for European applications, also cover international filings, can be seen from past case law (most recently J 12/87, OJ EPO 1989, 366). This is expressly stated in the new version of these rules in force since 1 April 1989 (OJ EPO 1989, 1). Whether re-establishment of rights can apply to a period of grace depends therefore not on whether the application is a European or an international one but on whether re-establishment is possible in respect of the normal period to which the period of grace for European or international applications relates. The fact that since the revision of Rules 85a and 85b EPC the periods of grace mentioned no longer follow on immediately from the normal periods but are set in motion by communications, does not alter their legal relation to these normal periods (but see 6.1 below).

3. On the question whether re-establishment of rights is possible in respect of the normal periods, Legal Board of Appeal case law has led to European and international applications being treated differently. Reference is made to the following decisions in particular: J 6/79, OJ EPO 1980, 225 on the request for examination; J 5/80, OJ EPO 1981, 343 on the basic fees payable upon filing; J 12/87, OJ EPO 1989, 366 on the basic fees (these decisions granted re-establishment for international applications); J 12/82, OJ EPO 1983, 221 on the request for examination; J 18/82, OJ EPO 1983, 441 on the basic fees; J xx/87, OJ EPO 1988, 177 on the request for examination (these ruled out re-establishment for European applications). These decisions show differences both in the periods for payment of the basic fees payable upon filing (for European applications Articles 78(2) and 79(2) EPC, for international applications Article 158(2) and Rule 104b(1) EPC) and in the periods for filing the request for examination (for European applications Article 94(2) EPC, for international applications Article 150(2) EPC).

3.1 It is therefore understandable that the appellant - invoking the principle of equitability - should request that case law concerning international applications be taken into account for European applications too. The Board cannot dismiss this argument without examining its existing case law and the differences in the way European and international applications have been treated up to now. This could result in three different conclusions:

3.1.1 The differences could be confirmed as legitimate provided that the periods for international applications are regarded as essentially different from those for European ones. But this alone would be unlikely to provide a satisfactory answer to the appellant's question on the fairness of this difference, particularly when one considers that both groups of applicants benefit from the periods of grace under Rules 85a and 85b EPC and that the periods for payment are in fact longer for PCT applicants than for applicants seeking European patents.

3.1.2 The differences could be considered unjustified, so that periods relating to international applications would also be excluded from re-establishment of rights. This would mean extending an exclusion - as formulated in Article 122(5) EPC - to international applications. Article 48(2)(a) PCT requires that any delays in meeting time limits should be excused for reasons admitted under national or regional law (cf. Article 2(x) PCT). Under Rule 82bis.2 PCT, such reasons include re-establishment of rights. Any failure to observe a time limit occurring in the course of "entry into the regional phase" in accordance with Articles 22 and 39 PCT can be regarded as entailing a "delay" in meeting that time limit. This includes failure to observe the time limit for filing the request for examination, since the latter (cf. Article 150(2), 4th sentence, EPC) is linked to the aforementioned provisions of the PCT.

Article 48(2)(a) PCT need not always exclude analogous application of Article 122(5) EPC to international applications. It could do so, however, in respect of the "time limit referred to in Article 87(1) EPC" - the priority period - which is mentioned in Article 122(5) EPC. For international applications are governed not by the requirements concerning priority in Article 87 et seq. EPC but, under Article 8(2)(a) PCT, by the provisions of Article 4 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property.

3.1.3 There is also a third possibility. For the reasons just given the question arises whether re-establishment of rights should not also be granted in respect of European patent applications, i.e. whether Article 122(5) EPC should not be regarded as also inapplicable to European patent applications on the grounds that patent law had been evolving "praeter legem". Not applying a rule of law to situations for which the rule is obviously intended is a serious and quite exceptional step, and can only be considered where:

(a) the circumstances on the basis of which the rule was enacted have since changed fundamentally,

(b) the legal principles on which the rule was based have since changed fundamentally. In the case in question there is some basis for assuming the latter. Although the legal institution of re-establishment of rights only found its way into the Convention with difficulty (cf. Singer in GRUR Int. 1981, 719, 720-722 and IIC 1982, 269 and Münchner Gemeinschaftskommentar, 8th instalment, January 1986, point 225 re Article 78 EPC with references), non-observance of time limits in the circumstances under consideration here can now be rectified by re-establishment of rights under current legislation in the Contracting States. The patent laws of Germany (§ 123), Austria (§§ 129-136) and Switzerland (Article 47) recognised relatively unrestricted re-establishment of rights before the signing of the Convention. Denmark (§§ 72, 73), Italy (Article 90), Sweden (§ 72) and the Netherlands (Article 17A) introduced corresponding rules between 1977 and 1979, i.e. after the Convention had been signed. The United Kingdom has a system of extending time limits which is comparable in its effect. Despite procedural differences between the Convention and national patent laws, the legal principles prevailing in the Contracting States can therefore be said to have undergone a certain evolution.

4. The Board accordingly considers itself unable to evade the question posed, partly because the material requirements for re- establishment of rights appear to have been met (see 1.3 above). Given the aforementioned discrepancies in the law's application and the fundamental nature of the question, the Board feels the latter should be referred to the Enlarged Board under Article 112(1)(a) EPC.

5. In the present case - J 16/90 - there is a difference only in respect of the time limits for payment of the basic fees. However, the Legal Board of Appeal also includes in its question the differences regarding the time limit for filing requests for examination. The main reason for this is that in past Legal Board case law both issues have been closely bound up with each other (see the decisions quoted in 3 above.). Apart from that, appeals are also pending in which the question of re-establishment of rights in respect of requests for examination for European patent applications is posed either directly or indirectly. In J 15/90 an application for re-establishment was refused simply because, for European applications, re-establishment in respect of requests for examination is precluded by Article 122(5) EPC. In other cases this is already assumed and the only question then is whether, under the particular circumstances of the case, the examination request fee can be considered as having been paid on time.

6. The points of law referred to the Enlarged Board raise another two questions on which it could be useful from a general point of view to have that Board's opinion.

6.1 The first of these concerns the possibility of re- establishment of rights in respect of the periods of grace in Rules 85a and 85b EPC (cf. 2 above). The Legal Board's opinion as expressed in point 2 is not self-evident. The new version of the rules in particular, under which the period of grace is first set in motion by a communication, may give rise to doubts as to whether these periods are still indirectly, via the normal periods, covered by the exclusion rule of Article 122(5) EPC (cf. also Singer, Kommentar zum EPÜ, re Article 122, point 6, p. 568, 3rd paragraph).

6.2 Any examination of the scope of the exclusion from re- establishment in Article 122(5) EPC ought no doubt also to encompass the periods for the payment of fees falling due at the beginning of the international phase under the PCT. These are the fees provided for in Articles 3(4)(iv) and 4(2) and in Rules 14, 15 and 16 PCT - i.e. the transmittal fee, the international fee, the search fee and the designation fees. If these fees are not paid within the prescribed period, the legal consequences under Article 14(3)(a) PCT are that the international application is considered withdrawn and is declared withdrawn by the international receiving Office. The same applies under Article 14(3)(b) PCT in the case of non-payment of individual designation fees.

Notwithstanding these provisions, which can be said to "terminate" the international phase (cf. Gall in GRUR Int. 1981, 417 and IIC 1982, 65), each designated Office can maintain the effects of the international application for its own territory. Re-establishment should be granted under Article 48(2)(b) in conjunction with Rule 82bis.2 PCT if national law allows delays in meeting time limits to be excused. Under Article 2(x) PCT "national law" in this context means the European Patent Convention. The only means of "excusing" that can be considered in this case is re-establishment of rights under Article 122 EPC, bearing in mind the exclusions under Article 122(5) EPC. It will therefore be a matter of comparing the periods for payment for European applications expressly referred to in Article 122(5) EPC with, firstly, the national fee under Article 158(2), 2nd sentence, EPC and, secondly, the fees dealt with above, payable at the beginning of the international phase under the PCT.