J 0008/94 (Re-establishment) 07-12-1995

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rules 1(1) and 64 EPC and is therefore admissible. The appellant has given its agreement to the decision's being written in German, which justifies the departure from the language of proceedings, which was English (see J 18/90, OJ EPO 1992, 511).

2. The contested decision concerns a request on the basis of Article 122 EPC for re-establishment in respect of the time limit for filing the request for examination or the corresponding period of grace under Rule 85b EPC. The department of first instance was of the opinion that this request was inadmissible since it related to time limits that were excluded from re-establishment by Article 122(5).

In the oral proceedings the appellant rightly no longer questioned this with regard to the normal time limit under Article 94(2) EPC (see Enlarged Board of Appeal decision G 5/92, OJ EPO 1994, 22).

3. What remains to be examined, therefore, is whether the provision in Article 122(5) EPC excluding the time limit for requests for examination from re-establishment also applies to the period of grace under Rule 85b EPC.

For the old version of Rule 85b EPC, which came into force on 4 June 1981, this question has already been answered in the affirmative by the Legal Board of Appeal (see J 12/82, OJ EPO 1983, 221). The appellant, however, is of the opinion that this decision no longer applies to the new version of Rule 85b EPC, which has been in force, with minor amendments, since 1 April 1989 (see OJ EPO 1989, 1 ff).

4. Before the introduction of the period of grace provided for in Rule 85b EPC, the consequence of Article 122(5) EPC in conjunction with Article 94(2) and (3) was that any failure to observe the time limit for filing the request for examination led irrevocably to the loss of the application. What emerged as particularly serious was that the irrevocable loss of the application occurred at an advanced stage of the procedure, when a considerable amount of fees had already been paid and it was also no longer possible to file the application again because of the prior publication (see CA/52/80, dated 10 October 1980, Explanatory Memorandum, Part I, II.1).

Against this background the purpose of original Rule 85b EPC was to provide some arrangement that, instead of re-establishment, which was ruled out, allowed the risk of an irrevocable loss of rights to be reduced in some other way. It was not therefore to open up new possibilities of re-establishment, circumventing the clear exclusion of Article 122(5) EPC (see J 12/82, OJ EPO 1983, 221, Nos. 7 to 9 of the Reasons).

5. The new version of Rule 85b EPC introduced in 1989 has not altered this in any way.

According to this version the period of grace no longer immediately follows the time limit for filing the request for examination, but begins to run only on notification of a communication from the Office pointing out the failure to observe the time limit.

This amendment was made because experience showed that often when a time limit was missed the period of grace immediately following it could not be observed either. The problem was the same for all periods of grace under Rules 85a and 85b (see CA/29/88, dated 16 May 1988, Part I, Art. 14).

The reason for the new version of Rules 85a and 85b EPC was therefore above all procedural. It was intended primarily to increase certainty for applicants with regard to the observance of periods of grace. It was not, however, intended that any change be made with regard to the exclusion from re-establishment of periods of grace, as is clear from the preparatory documents (CA/79/88 Add. 1, dated 21 November 1988, No. 3).

6. This was confirmed as regards Rule 85a EPC by Enlarged Board of Appeal decision G 3/91 (OJ EPO 1993, 8, No. 2 of the Reasons), according to which the period of grace under the new version as well of that Rule is closely linked to the corresponding normal time limits and therefore, like these, excluded from re-establishment.

The fact that the Enlarged Board of Appeal did not in that connection mention Rule 85b EPC does not, however, allow the inference that a certain latitude was to be left for assessing that period of grace differently. The situation was rather that this point of law was not relevant for deciding the case referred and was therefore, in line with established practice, not answered by the Enlarged Board (see G 4/91, OJ EPO 1993, 339; G 5/92, OJ EPO 1994, 22; G 6/92, OJ EPO 1994, 25).

On the other hand, the aforementioned decision G 3/91 makes clear that the exclusion under Article 122(5) EPC is not in general to be interpreted "narrowly". At least with regard to the period of grace under Rule 85a EPC there can be no doubt about this.

7. Turning to the period of grace under Rule 85b EPC, the Board sees no reason for interpreting the provisions of Article 122(5) EPC differently.

In the system established by the Convention Rules 85a and 85b EPC represent, from the procedural point of view, similarly arranged legal remedies relating to failure to observe time limits that are both excluded from re-establishment by Article 122(5) EPC. Article 122(5) itself also makes no distinction between the time limits excluded from re-establishment that it mentions.

Nor does the new version of Rules 85a and 85b EPC reveal any difference in the way the periods of grace are arranged with regard to the possibility of re-establishment (see 5. above). In both Rules the periods of grace are linked in exactly the same way to the normal time limit. The Board's conclusions in G 3/91 therefore also apply to Rule 85b EPC.

8. Even when original Rule 85b EPC was drafted the legislator took into consideration that the corresponding loss of rights as a result of deemed withdrawal under Article 94(3) EPC could have more serious consequences for an applicant than the loss that occurs with failure to observe one of the time limits mentioned in Rule 85a EPC (see 4. above and CA/52/80, dated 10 October 1980, Explanatory Memorandum, Part I, II.1). Nevertheless, and in full knowledge of the different legal consequences, the legislator introduced similar arrangements for both cases.

Thus even in view of the differing severity of the legal consequences, there can be no justification for any special interpretation of Article 122(5) EPC with regard to the period of grace under Rule 85b EPC.

9. It follows from the foregoing that there is no basis in the Convention for the appellant's interpretation of Article 122(5) EPC.

The Board therefore concludes that the period of grace under current Rule 85b EPC is excluded from re-establishment in the same way as the normal time limit mentioned in Article 122(5) EPC for filing the request for examination under Article 94(2) EPC.

10. The Board does have some sympathy for the appellant's argument that failure to observe the period of grace under Rule 85b EPC can never be completely ruled out, even when the greatest care is exercised, with the result that applicants may, where they fail to observe the time limit, suffer a final loss of rights. It is acknowledged that the current arrangements cannot rule out all risk of loss of rights. Nor, as has been shown, was this the legislator's intention. Amending the situation would, however, represent an assumption de lege ferenda, of which the Board is incapable when administering justice since it is bound by the existing legal situation created by the legislator.