J 0005/79 (Party adversely affected by a decision) 17-01-1980
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I. The applicant for a European patent whose right of priority has been declared lost for failure to file a copy of the priority document within the permitted 16-months period but whose right has been restored before publication of the European patent application is not thereafter adversely affected by the decision that the right had been lost.
II. Third party rights to continue use of an invention where an applicant's rights have been lost and restored cannot arise if the loss and restoration of the applicant's rights occur before publication of the European patent application.
Summary of Facts and Submissions
I. On 23 February 1979, the Appellant filed an application for a European patent at the European Patent Office, claiming priority from a German national patent application made on 24 February 1978.
II. By letter dated 29 March 1979, following Rule 38 EPC, the Appellant was invited by the Receiving Section, in accordance with Article 88 (1) EPC, to file the necessary copy of the specification of the earlier application before the end of the sixteenth month from the priority date. The Appellant failed to respond to this invitation. On 12 July 1979, the Receiving Section informed the Appellant, in accordance with Article 91(3) EPC, that the claim to priority had been lost. On 1 August 1979, the Appellant submitted in writing that the Appellant was entitled to a declaration that the claim to priority had not been lost and that to that extent the communication of 12 July 1979 was ill-founded. In the alternative, the Appellant applied for restitution of rights in accordance with Article 122 EPC and filed a copy of the specification of the earlier application.
III. By a decision of 22 August 1979, the Receiving Section confirmed that the claim to priority had been lost.
IV. On 12 September 1979, the Receiving Section granted restitution of rights, in writing.
V. On 21 September 1979, the Appellant lodged an appeal against the decision of 22 August 1979, claiming a) that the decision of 22 August 1979 should be set aside b) a declaration that the claim to priority for the European application had not been lost. The Appellant contends that the restoration of rights granted does not suffice to protect its rights, because it could possibly suffer adverse legal consequences if third parties could have acquired rights to use the invention in accordance with Article 122 (6) EPC.
Reasons for the Decision
1. It is first necessary to decide whether the appeal is admissible. It was lodged in the correct form and within the period prescribed by Article 108 EPC and a written statement setting out the grounds of appeal was duly filed. However, in accordance with Article 107, first sentence, EPC, it is necessary that the Appellant should be adversely affected by the decision under appeal.
2. As the Receiving Section had restored the Appellant's rights to file the specification of the earlier application by its letter of 12 September 1979, the Appellant could be adversely affected by the decision under appeal only if third parties could have acquired rights to continue use of the invention (rights of user) under Article 122 (6) EPC.
3. In the present case, the decision appealed from did not relate to the loss of the application, but only to the loss of priority claimed. It is difficult to conceive how any third party rights of user could arise in such a case. However, this matter can be left open.
4. According to Article 122 (6) EPC, third party rights of user arise only where the restoration relates to an already published European patent application or a European patent; those whose commercial interests are at stake should be entitled to be sure that protection, the existence of which is public knowledge, and which has fallen into the public domain, no longer has effect. This principle was already to be found in Article 156 (6) of the "Preliminary draft for a Convention on a European Patent Law", published in 1962, and was set out both in Article 142 (6) of the "Second preliminary draft of a Convention establishing a European System for the Grant of Patents", published in 1971, and in the provisions of the first Preliminary draft for the Implementing Regulations "Re Article 142, No. 1, second paragraph". The basis of this rule has never been questioned. In the present case, the restoration relates to an application that was unpublished at the material time, so on that ground alone there could be no third party rights of user.
5. There is another requirement of Article 122 (6) EPC, before third party rights can arise, which is also lacking in the present case, namely that the restoration of rights should be made public. Publication concerning European patent applications and Patents takes place in the "European Patent Bulletin". According to Article 129 (a) EPC, this Bulletin is to contain entries made in the Register of European Patents as well as other particulars the publication of which is prescribed by the Convention. Particulars of the restoration of rights within the period in default in the present case constitute no such "other particulars". In accordance with Article 127, second sentence EPC, no entries can be made in the Register of Patents prior to publication of the European patent application. Even in the case of published applications, Rule 92 (1) (u) EPC, provides that the date of re-establishment of rights is to be entered only if loss of the application (Rule 92 (1) (n) EPC) or the revocation of the patent (Rule 92 (1) (r) EPC) has been entered in the Register. That is not so in the present case.
6. It follows from the finding that no rights of user could be claimed by a third party on the facts in this case that the appellant is not adversely affected by the decision under appeal. The appeal must therefore be rejected as inadmissible in accordance with Rule 65 (1) in conjunction with Article 107, first sentence, EPC.
7. As the appeal is inadmissible, in accordance with Article 110(1) EPC, it is not possible to examine whether it would be allowable on its merits.
ORDER
For these reasons, it is decided that:
The appeal against the decision of the Receiving Section of the European Patent Office of 22 August 1979 is rejected as inadmissible