J 0011/86 06-08-1986

Summary of Facts and Submissions

I. On 9 July 1985, the appellants filed European patent application No. 85 304 874.2 claiming priority from a British national patent application filed on 10 July 1984.

II. On 5 November 1985, a Formalities Officer of the Receiving Section of the EPO issued a notification pursuant to Articles 90(3) and 91(4) EPC informing the appellants that the European patent application was deemed to be withdrawn because no filing fee, no search fee and no designation fee had been paid with the time limits pursuant to Articles 78(2), 79(2) and Rule 85(a) EPC.

III. On 18 November 1985, the appellants applied under Article 122 for re-establishment of their rights after having paid the amount of the unpaid fees (however without the surcharges provided for in Rule 85(a) EPC) and the fee for re-establishment of rights on 13 November 1985.

IV. In their statement of case in support of the application for re-establishment of rights and in their further correspondence with the Receiving Section of the EPO, the appellants alleged that they had not been given an opportunity to correct the non-payment of the fees in accordance with Articles 90 and 91 EPC and had not received any communication according to Rule 41 EPC.

The appellants contended that whilst Article 78 EPC (which relates to the normal period for payment of the fees) is excluded from Article 122 EPC, the requirements of Article 90 and 91 EPC were not so excluded. The EPO was under the obligation by virtue of Article 91(2) EPC to give the applicant an opportunity to correct the deficiencies which may be corrected and the non-payment of these fees was, in their opinion, such a deficiency. Since the appellants had not paid the fees because they had not received any such notification, they were entitled to restore the European patent application under Article 122 EPC. For this reason, the appellants had not paid the extension fee payable under Rule 85(a) EPC since this did not apply in this instance.

V. By the decision under appeal, given by the Receiving Section of the EPO on 12 February 1986, the application for re- establishment of rights was rejected on the ground that Article 122(5) EPC excluded restitutio in integrum where the time limits provided for in Article 78(2) and 79(2) EPC are not observed. This was also applicable to the period of grace laid down in Rule 85(a) EPC and the applicants could derive no claim in respect of the omission of the notification usually sent by the EPO drawing attention to the fact that the fees have not been paid in time, but may still be paid with a surcharge, because this notification was only a voluntary service of the EPO.

VI. In their grounds of appeal and in their answer to a communication from the Rapporteur of the Legal Board of appeal, the appellants essentially repeated their submission that the EPO was under the obligation pursuant to Article 91(2) EPC to notify the applicant of the non-payment of the filing, search and designation fees which, according to them, was a correctable deficiency and that, in the absence of such notification, the appellants were entitled to restore the European patent application by virtue of Article 122 EPC since the provisions of Articles 90 and 91 EPC were not excluded from the scope of Article 122.

The appellants explained also that the reason why they had not paid the fees was a clerical error due to the introduction in their office of a computerised office management system.