5. Merit of request for re-establishment of rights
5.1. Submissions to be taken into account
In J 5/94 it was decided that the grounds on which a request for re-establishment of rights was based could be elaborated on, provided this completed the submission that had been filed in due time and thus did not alter the basis on which the original request for re-establishment had been filed (see also J 19/05, T 585/08, J 15/10, T 592/11).
In T 324/90 (OJ 1993, 33) the board held that evidence proving the facts set out in the application could be filed after expiry of the two-month time limit laid down in Art. 122(2) EPC 1973. Only the grounds and a statement of the facts had to be filed within the two-month period. Likewise in T 261/07 the board allowed the patentee, who had initially given an account of all the relevant facts to the best of its knowledge, to subsequently adduce further clarifying evidence supporting the case.
In J 5/11 the Legal Board held that the applicant for re-establishment of rights who failed to substantiate his request adequately in the first instance proceedings, in particular after being expressly invited to do so, could not normally make good that failure by submitting additional evidence with the grounds of appeal. While it was true that the primary function of the boards was to give a judicial decision on the correctness of a first-instance decision of the Office (see J 18/98), that does not necessarily mean that new evidence submitted for the first time on appeal was automatically inadmissible. A rigid rule excluding all new evidence on appeal might lead to injustice and unfairness in some cases and would not be compatible with the principles of procedural law generally recognised in the contracting states (cf. Art. 125 EPC).
In J 18/98 the examining division had refused the applicant's application for restitutio in integrum. An appeal was filed against that decision. From the established case law on Art. 122(3) EPC 1973 the Legal Board concluded that facts submitted only with the statement of grounds of appeal could not be taken into account, since the function of appeal proceedings was only to give a judicial decision upon the correctness of an earlier decision of the department of first instance (T 34/90, OJ 1992, 454).
In T 257/07 the board stated that it had been only one year after the removal of the cause for non-compliance that the appellant qualified certain statements previously made and added new facts that previously went unmentioned, in particular regarding the system for managing files and deadlines. This omission could not be subsequently remedied by the addition of further facts, as case law would only allow the appellant to "submit further evidence which clarifies the facts which were set out in the application for re-establishment" (J 2/86, OJ 1987, 362; T 261/07; see also T 742/11, T 2274/11, J 6/14).
In J 16/11 the Legal Board pointed out that the boards of appeal had consistently ruled that facts pleaded for the first time during the appeal proceedings should in principle not be taken into consideration (see J 18/98, T 257/07). In the case at issue, the board had, by its communication, informed the appellant that the evidence currently on file did not seem convincing enough and, exceptionally, gave the appellant an opportunity to improve its case at this late stage of the proceedings. However, the representative, instead of filing evidence, produced a "sworn statement" written by the appellant himself. Given that the new submission did not complement the already existing facts, but presented a new situation, these facts and evidence had to be disregarded.
- T 178/23
Abstract
In T 178/23 the appellant requested re-establishment of rights under Art. 122 EPC in relation to the non-observance of the time limits under Art. 108 EPC for filing the notice of appeal and paying the appeal fee, and for filing the statement of grounds of appeal.
As regards the admissibility of the request for re-establishment of rights, the board observed that, since the appellant had missed two different time limits, it could be argued that each of the two time limits, which expired independently of one another, had to be considered separately, notwithstanding the fact that they were triggered by the same event (see J 26/95, T 2017/12). In this case, the appellant's request for re-establishment would be inadmissible because it paid only one re-establishment fee within the two-month time limit under R. 136(1) EPC. However, there was also case law in which one fee was considered sufficient because re-establishment in respect of both periods had to be examined together and the result would inevitably be the same (see T 315/87, J 7/16, T 1823/16). In the board's view, the question of whether one or two re-establishment fees were required could be left undecided in the case in hand.
Regarding the substantiation of the request for re-establishment of rights, the board found that in the letter requesting re-establishment of rights, the appellant had not presented any core facts to make it possible for the board to consider whether the appellant had taken all due care required by the circumstances in order to comply with the time limits under Art. 108 EPC. Rather, the appellant had merely stated that it had failed to observe the time limits despite exercising all due care, without setting out any concrete facts demonstrating that it had taken all the due care required by the circumstances. The mere statement that it "could not be reasonably expected" that the drawings would be missing in the examining division's communication under R. 71(3) EPC was not sufficient in this regard. It was only with the letter of reply to the board's communication that the appellant went into more detail for the first time on possible facts regarding whether the appellant had taken all due care required by the circumstances. According to the board, the appellant had not merely adduced further evidence clarifying the facts which had already been set out in due time, but had (belatedly) attempted to make a conclusive case. Therefore, the new submissions in the letter of reply were not to be taken into account. Consequently, the request for re-establishment of rights was found inadmissible for lack of substantiation.
The board then moved on to the issue of inability to observe a time limit vis-à-vis the EPO. It noted that according to established case law the word "unable" in Art. 122(1) EPC implied an objective fact or obstacle preventing the required action, e.g. a wrong date inadvertently being entered into a monitoring system.
In the case in hand, the board could not see any objective fact or obstacle that prevented the appellant from observing the time limits under Art. 108 EPC. The facts relied on by the appellant did not relate to an error in the carrying out of a party's actual intention to meet a specific time limit, but only to an error in relation to the intention to use a legal remedy entailing a time limit. The appellant was able to file an appeal in due time but failed to do so because of a previous error as to motive, i.e. because it was unaware of the need to file an appeal to rectify the absence of the drawings in the patent specification. According to the board, this situation differed from those governed by Art. 122 EPC where a party did intend to observe a time limit but failed to do so due to objective obstacles.
Consequently, the board found that the appellant's request for re-establishment of rights was also inadmissible on the ground that the appellant was not unable to observe the time limits under Art. 108 EPC. In view of the considerations above, whether the appellant had complied with the "all due care" criterion under Art. 122(1) EPC was irrelevant. The request for re-establishment of rights was thus refused as inadmissible and the appeal was deemed not to have been filed.