J 0014/86 (Expiry of time limit expressed in months) 28-04-1987
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1. For the purposes of computing time limits expressed in months, the indications contained in Rule 83, paragraph 2 EPC with respect to the point in time from which a time limit runs may on their own appear inadequate. However, the expiry date of time limits expressed in years, months and weeks is explicitly defined in the subsequent paragraphs of the same rule. Computation of the time limits in accordance with Rule 83 EPC produces the same results as when Rule 80 PCT is applied.
2. The fact that Rule 83(2) EPC fixes the point in time from which all the time limits run and defines this point as the day following that on which the event giving rise to the time limit occurred cannot be interpreted as requiring the addition of a day to time limits expressed in years, months and weeks, hence the grant of an additional day for reasons of equity.
3. The expiry date of time limits expressed in years, months or weeks derives from Rule 83 paragraphs 3, 4 and 5 EPC. These paragraphs, in conjunction with paragraph 2 of the same rule, establish unequivocally that the time limits are fixed in full years, months and weeks, without any possibility of their being reduced or extended.
Expiry of time limit expressed in months
Rule 50 Communication
Grace Period allowed by Rule 85b
Notice concerning grace period
Summary of Facts and Submissions
I. European patent application No. 84 400 877.1, claiming a priority date of 11 May 1983, was filed on 2 May 1984. In a communication dated 26 September 1984 the applicants' representative was informed that the technical preparations for publication of the European patent application within the meaning of Rule 48 EPC had been completed and that the publication would be mentioned on 21 November 1984 in issue No. 47 of the European Patent Bulletin. In a communication dated 29 November 1984 the same representative was informed in accordance with Rule 50 EPC that the mention had been published on 21 November 1984 and his attention was drawn to the provisions of Article 94(2) and (3) EPC, the text of which was attached to the communication.
II. On 22 May 1985 the applicants' representative deposited a cheque for the examination fee with the Banque Nationale de Paris, Agence France-Etranger (hereinafter referred to as "BNP"), which holds an account in the name of the EPO; the BNP credited the payment to the EPO's account on 23 May 1985.
III. By registered letter dated 20 June 1985 (Form 1149) the applicants were notified that the examination fee had been paid late but that they could rectify this deficiency by paying a surcharge within the period of grace laid down in Rule 85b EPC. The French postal authorities confirmed that this letter had been delivered to the address of the applicants' representative on 21 June 1985 but that, in the latter's absence, another person residing at the same address had taken receipt of it.
IV. On 3 September 1985 the EPO notified the representative in accordance with Rule 69(1) EPC that the European patent application was deemed to be withdrawn since the examination fee had not been paid in due time. It was only at that point that the representative's attention was drawn to the loss of rights. He stated that his office had erroneously noted the date of the communication of 29 November 1984 as being that of publication in the European Patent Bulletin (21 November 1984). He had then falsely concluded that the period of six months laid down for filing a request for examination was due to expire on 29 May 1985. He added that he had not received a notice (Form 1149) drawing his attention to the period of grace provided for in Rule 85b EPC. He requested a decision to the effect that the time limit had been observed.
V. The EPO's Receiving Section issued an interim communication furnishing proof, based on information obtained from the postal authorities, that notice (Form 1149) had been served by registered letter as indicated in point III above.
VI. In a decision dated 31 January 1986 the EPO's Receiving Section stated that the European patent application was deemed to be withdrawn and that the examination fee had to be reimbursed since it had been paid too late and no surcharge had been paid subsequently. It also pointed out that the applicants' representative could not derive any rights in law from any error in serving notice of the period of grace provided for in Rule 85b EPC (Form 1149).
VII. On 28 March 1986 the applicants' representative filed an appeal against this decision, paying the appeal fee, and on 27 May 1986 filed a statement setting out the grounds for appeal. His essential argument, as in the oral proceedings of 28 April 1987, was that the late payment of the fee on 22 May 1985 - according to him still inside the time limit - was due to the fact that the computer-printed communication dated 29 November 1984 highlighted the latter date whereas the date to which the communication should have drawn attention, i.e. 21 November 1984, was "buried" in the text and barely discernible. Notice of the period of grace (Form 1149) had been delivered to an unauthorised person and therefore not received by him. He also pointed out that even if these facts were irrelevant at law, they nevertheless showed that the late payment on 22 May 1985 could not be attributed to negligence. He would be entitled, under the circumstances, to call into question the provisions of Rule 83 EPC, which were unintelligible, and to infer from them, on the principle whereby the inventor has the benefit of the doubt, that a time limit expressed in months expires one day after the date computed in accordance with this rule by those familiar with the system. Rule 83 EPC is indeed unclear. It first of all lists various periods of time in an order which bears no relation to their importance in practice. Paragraph (2) then deals with the date from which a period runs, and suggests that one day must always be added to each period. Only when the specific provisions of paragraphs (3), (4) and (5) are read does it become clear that this is not the case for periods expressed in years, months or weeks. In fact paragraph (2) makes no sense, since the Convention does not provide for periods expressed in days which might be computed using this paragraph. The only sensible function this paragraph could have would be to add a day to the periods laid down in paragraphs (3), (4) and (5). This is the impression gained from reading the rule. As long as it remains in a form likely to mislead the reader, therefore, this rule should be interpreted, for the benefit of applicants, as if one day should be added to periods expressed in years, months or weeks. The applicants' representative requested that the contested decision be set aside and asked the Board to confirm that he had paid the examination fee within the time limit by depositing a cheque on 22 May 1985 with a bank holding an account in the name of the EPO.
Reasons for the Decision
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.
2. With regard to the appellants' remarks on the form of the communication drawn up in accordance with Rule 50(1) EPC, it should be noted that no legal consequences can ensue from this form. Rule 50(2) EPC states that the applicant may not invoke "the omission of the communication", but this does not prevent him from invoking the fact that the form of the communication misled him. Such a case could pose complicated legal problems, particularly since Article 122(5) EPC excludes the possibility of reestablishment of rights in respect of the time limit for filing a request for examination. That the form was likely to mislead the applicant is not a tenable thesis in the present case, however, even if the decisive date to which attention needs to be drawn is not particularly highlighted on the computer-printed form - as it would be, for example, when an application is filed. Applicants may justifiably be expected to be capable of reading such forms competently. This does not mean that the Office should not, for its part, do all it possibly can to make the essential parts of a computer-printed text stand out from the less essential. Indeed, improving the presentation of this extremely important communication, which the EPO is obliged to send out under the Implementing Regulations to the EPC, does seem to be a realistic and desirable objective. However, this does not mean that the present form of the communication can be regarded as likely to mislead the reader.
3. Likewise, as the appellant himself admits, the fact that the notice on the period of grace provided for in Rule 85b EPC (Form 1149) was delivered to an unauthorised person, and consequently not received by the applicants' representative, is irrelevant at law. Observation of the period of grace is not dependent on this notice being either sent or received. In this connection the Board refers to the precedents established in its decisions J 18/82 "Force majeure/Cockerill" (OJ EPO 1983, 442, point 3 of the Reasons) and J 12/84 "Restitutio in integrum/PROWECO" (OJ EPO 1985, 108, point 4 of the Reasons).
4. To arrive at a decision on this case, the Board must thus determine whether the examination fee could still have been paid in time during the critical period of 21 to 23 May 1985. According to the usual method of calculating time limits, the period for payment expired on 21 May 1985. The cheque was deposited on 22 May with the BNP, a bank holding an account in the name of the EPO. The BNP then credited the amount to the EPO's account on 23 May 1985, the date on which payment was considered to have been made in accordance with Article 8(1)(a) of the Rules relating to Fees under the EPC.
4.1 Whether or not the time limit could still have been observed when the fee was credited to the account on 23 May 1985 depends on whether or not the depositing of the cheque on 22 May, with a bank holding an account in the name of the EPO, itself took place within the time limit. In the present case this question can be left in abeyance. The Board would merely point out that it cannot automatically be assumed that payment took place within the period laid down in Article 8(1)(a) of the Rules relating to Fees if the sum was not credited to the account until after the period had expired, even though payment was actually effected and the cheque deposited with a bank holding an account in the name of the EPO before it expired. No such assumption can be made on the basis of Board of Appeal case law since all the clear-cut cases the Boards have had to deal with have also been special cases. The Board refers to the following decisions: J 26/80 "Date to be considered as the date on which payment is made" (OJ EPO 1982, 7); T 214/83 "Giro payment/SIGMA" (OJ EPO 1985, 10); J 05/84 "Computer fault/RIPPES" (OJ EPO 1985, 306).
4.2 The appellants put forward some interesting arguments on the question of whether, given the wording of Rule 83 EPC, an extra day could be added to the whole months of a period expressed in months. However, the Board cannot agree with them.
4.2.1 The Board has already, in previous decisions, had to deal with the calculation of time limits under Rule 83 EPC. In decision J 09/82 "Calculation of aggregate time limits ACNO" (OJ EPO 1983, 57, point 5 of the Reasons), it stated that "Rule 83(2) cannot be regarded as somehow overriding the provision in Rule 83(4) ...". The Board looked again at the relation between paragraphs 2 and 4 of Rule 83 EPC in its decision J 22/85 "Payment order/NUSSER" dated 23 July 1986 (OJ EPO 1987, 455). This decision confirms (point 2 of the Reasons) that the provisions of paragraphs 2 and 4 of Rule 83 EPC form a whole, fixing the time from which a period runs and the time when it expires and thus determining periods in terms of whole months, i.e. neither adding nor deducting any individual days.
4.2.2 The calculation of time limits under Rule 80 PCT is identical, but the wording largely avoids the lack of clarity found in Rule 83 EPC.
4.2.3 The fact that the Board has had to deliver these decisions, and that the wording of the corresponding PCT provisions differs from that of Rule 83 EPC although the basis for each is identical, confirms the appellants' view that Rule 83 EPC presents problems in practice. This was also the conclusion reached by Gall in "European patent applications: Questions and Answers", Oyez Longman 1984 (question 9, pp. 14 and 89). The mere fact that the author considered the question worth addressing, as one which "always recurs" (op. cit., Preface), clearly shows how difficult Rule 83 EPC is to understand.
4.3 While it is true that failure to observe the time limit was not due to any problem in applying Rule 83, as the appellants themselves admit, it cannot be denied that it would be in their - and all applicants' - interest, in view of the problems posed by the current wording of Rule 83 EPC, to obtain an extra day's grace. However, the Board cannot allow this for the following reasons:
4.3.1 For the purposes of computing time limits expressed in months, the indications contained in Rule 83, paragraph 2 EPC with respect to the point in time from which a time limit runs may on their own appear inadequate. However, the expiry date of time limits expressed in years, months and weeks is explicitly defined in the subsequent paragraphs of the same rule.
4.3.2 The fact that Rule 83(2) fixes the point in time from which all the time limits run and defines this point as the day following that on which the event giving rise to the time limit occurred cannot be interpreted as requiring the addition of a day to time limits expressed in years, months and weeks, hence the grant of an additional day for reasons of equity.
4.3.3 The expiry date of time limits expressed in years, months or weeks derives from Rule 83, paragraphs 3, 4 and 5 EPC. These paragraphs, in conjunction with paragraph 2 of the same rule, establish unequivocally that the time limits are fixed in full years, months and weeks, without any possibility of their being reduced or extended.
5. If the present decision to dismiss the appeal - entailing, as it does, certain consequences - may seem excessively severe and therefore unsatisfactory, this has nothing to do with the way in which the Office's forms are presented nor with any shortcomings in the serving of notifications nor again with any problem in computing time limits in accordance with Rule 83 EPC, but with the fact that the Convention excludes the possibility of "restitutio in integrum" in respect of time limits for filing a request for examination. Admittedly, the applicants' representative and his office do bear some of the responsibility. If this exclusion did not exist, however, it would have been possible under the circumstances to regard this fateful error as excusable and accept that sufficient care had been taken for Article 122 EPC to be applicable.
ORDER
For these reasons, it is decided that:
The appeal against the decision of the Receiving Section of the European Patent Office dated 31 January 1986, stating that the European patent application was deemed to be withdrawn, is dismissed.