J 0009/92 (Re-establishment) 04-09-1992

1. The Legal Board of Appeal has resolved, in the cases of Appeals J 15/90, J 8/91, J 9/92 and J 20/92, to refer to the Enlarged Board of Appeal the same questions of law as in case J 16/90 and to do so with the same reasoning. In addition a further question of law is referred relating to the PCT cases.

1.1. In the present case J 9/92 and the other mentioned cases J 15/90, J 8/91 and J 20/92, the respective decision to refer is made separately. There is no consolidation of appeal proceedings within the meaning of Article 9 of the Rules of Procedure of the Boards of Appeal (OJ EPO 1983, 7). The decisions are, apart from the language of the proceedings, in substance identical. Thus each decision to refer also contains exposition relating to the other cases. In this manner the appellants obtain an overview over the whole situation.

2. In view of the interrelation of the questions of law, renewed referral of the same questions of law does not, it is true, appear absolutely necessary. The existing referral in G 3/91 is based on Article 122(1)(a) EPC. While being occasioned by proceedings J 16/90 (compare Article 122(1)(a) EPC: "bei - during - en cours"), the questions of law are however - because they re of fundamental importance - general questions of law which go beyond the specific case J 16/90. The questions are also interrelated because they concern an application of the general principle of equality before the law.

2.1. The Legal Board of Appeal, nevertheless, prefers to follow the example of Decision T 184/91. There a further case (G 11/91) was referred to the Enlarged Board of Appeal putting the same question as had already been put in a previous referral (G 3/89) to the Enlarged Board of Appeal. In this way all the appellants are also formally given the status of parties in the sense of Article 112(2) EPC.

Admittedly this does not apply to the applicants in those cases which are pending before the Receiving Section. Further the status of parties within the meaning of Article 112(2) EPC can only be accorded to PCT-applicants in those cases which primarily turn on other questions than re-establishment. As is known, re-establishment was hitherto considered as permitted in PCT-cases.

2.2. Finally the Legal Board of Appeal wishes to make it possible for the Enlarged Board of Appeal to give a comprehensive answer to all the questions of law, in view of the pending and stayed cases before the Legal Board of Appeal and above all before the Receiving Section. All questions await a decision of equal authority. As it is conceivable that there will be a departure from the hitherto applicable jurisprudence, such change should not also take place in stages.

3. The Legal Board of Appeal also considers that a decision of the Enlarged Board of Appeal is required within the meaning of Article 112(1)(a) EPC in the cases mentioned below.

3.1. In the newly referred cases the appeal is - with the exception of case J 20/90, Klehr - admissible. In case J 20/92 it would first be necessary to have re- establishment for the time limit for filing the grounds of appeal, before the substantive question of re- establishment can be considered in the suit. Thus twofold re-establishment would be necessary to allow the appeal, firstly for the time limit for filing the grounds of appeal and secondly for the time limit for payment of the entry fees on entry of the regional phase at the EPO. If it should result from the decision of the Enlarged Board that the latter is precluded by Article 122(5), then there would hardly be any point in the appellant making efforts to obtain re-establishment into the time limit for filing the grounds of appeal.

3.2. In the present newly referred case J 9/92, Decknology, it is only secondarily a question of whether for a Euro-PCT case there exists re-establishment on failure to meet the time limit for the request for examination (more precisely: the period of grace of Rule 85(b) EPC). Prior to that question comes the question of whether the communication pursuant to Rule 85(b) had been effectively delivered. However this question is only of decisive importance, if it is certain that re-establishment is precluded. Euro-PCT cases which depend only on re- establishment, are not pending before the Legal Board of Appeal, because the first instance on principle applies Article 122 to these.

4. By the referral of the new cases the Enlarged Board of Appeal now has before it all types of cases corresponding to the referred questions of law 1a, 1b, 2a and 2b, namely:

Question of law 1a: J 16/90-Fabritius Question of law 1b: J 20/92-Klehr Question of law 2a: J 15/90-Duriron and J 8/91-Houpt Question of law 2b: J 9/92-Decknology.

5. In the opinion of the Legal Board of Appeal answers by the Enlarged Board of Appeal to the questions of law referred as a whole, will dispose of all the referrals.

6. Now PCT-cases too have been referred to the Enlarged Board of Appeal. The possibility cannot be excluded that - contrary to the hitherto applicable jurisprudence as continually applied in practice - the Enlarged Board of Appeal will declare that re-establishment is precluded. In this case the transition might cause a problem. The additional question of law relates to this.