G 0005/93 (Re-establishment) 18-01-1994

Summary of the Facts of the Case

I. The Legal Board of Appeal in its decision J 4/93 of 24 May 1993, has referred to the Enlarged Board of Appeal the following questions of law in application of Article 112(1)(a) EPC:

1. Is the EPO and are the Boards of Appeal, in the light of Article 172 EPC, competent to exclude, by way of interpretation of Article 122(5) EPC, the time limit provided for in Rule 104b(1)(b) EPC from re-establishment of rights?

2. If the answer is yes (and Decision G 3/91 is confirmed with regard to the time limit provided for in Rule 104b(1)(b) EPC):

Is the former constant practice of the EPO regarding the applicability of Article 122 EPC to the time limit referred to in Rule 104b(1)(b) EPC a sufficient basis for the legitimate expectation of a party to have its request for re- establishment examined according to this former practice, if the request was filed before the party was duly informed of Decision G 3/91?

3. If the answer to question 2 is yes:

From which date can the users of the EPO be assumed to have been duly informed of Decision G 3/91?

II. In the reasons for its decision, the Legal Board held that the Enlarged Board of Appeal will have "to consider the fact that Article 122(5) EPC provides an exception to the general rule of Article 122(1) to (4) EPC and, applying general principles of interpretation, cannot just be extended to cover situations to which it does not specifically apply."

The Legal Board drew also attention to the fact that in the case of the "claims fees", the application of the principle of Decision G 3/91 would, in its opinion, bring the danger that Euro-PCT applicants would be put to a disadvantage compared with Euro-applicants since the latter were entitled to re-establishment of rights for the claims fees. In this connection, the question arose whether re-establishment of rights in respect of the time limit for the payment of the "national" fee referred to in Rule 104b(1)(b) EPC could be granted on the ground that part of this composite fee, namely the claims fees, was not excluded from re-establishment.

The Legal Board of Appeal also submitted, as regards the third question, that the date of publication of Decision G 3/91 in the Official Journal should be the date after which the Euro-PCT applicants could no more legitimately expect to be re-established in the time- limit of Rule 104b(1)(b) EPC.

III. Oral proceedings were held on the 1 December 1993, at which the Appellant was represented by Mr Brian Reid.

IV. In his submissions to the Enlarged Board of Appeal, the Appellant essentially argued as follows.

1. As concerns the first question:

(a) The part of Decision G 3/91 which concerns Euro-PCT applications was only an "obiter dictum" because, in the case concerned, a European application and not a Euro-PCT application was involved. Therefore, this decision could not be considered as having created a precedent in this respect.

(b) Article 122(5) EPC was specifically restricted to the time limits referred to and should be interpreted narrowly. The exclusion of any time limit not mentioned would be a change of the EPC which, according to Article 172 EPC, can only be made by a Conference of the Contracting States. The same reasoning applied (mutatis mutandis) to the Rules which can only be amended by the Administrative Council and not by the Enlarged Board of Appeal. Therefore, the time limits not expressly mentioned in Article 122(5) EPC, including, in particular, the time limit under Rule 104b(1)(b) EPC, were impliedly excluded from the operation of Article 122(5) EPC. The Enlarged Board of Appeal was not entitled to decide that Euro- PCT applicants are excluded from re- establishment of rights but had to apply the EPC as it stands.

(c) Article 150(2) EPC states that in case of conflict between the provisions of the EPC and those of the PCT, the provisions of the PCT shall prevail. Article 150(2) EPC as a whole, taken in conjunction with Article 48(2) PCT, clearly indicated that an applicant for a Euro-PCT application was intended to enjoy separate, and different, rights regarding adherence to time limits as compared to an applicant for a European patent. Therefore, Article 122(5) EPC could not be considered as applying to Euro-PCT applications.

(d) The time limits with which Article 78(2) and Article 79(2) EPC are concerned are connected with the completion of the filing requirements of a European patent application. On the other hand, the filing requirements for international applications are set out in Article 11 PCT. Once these requirements have been fulfilled, the international application is deemed to be a European application (Article 11(3) PCT). The time limits for paying the search fee (Article 157(2) EPC) and the national fee (Article 158(2) EPC) are long after the filing requirements had been completed on the deemed European application. Thus, these fees were not "a filing fee" because the patent application had already been filed. Therefore, there was no real analogy between the "national fee" and the filing fee provided for European applications.

(e) According to Article 48(2)(b) PCT, where national law does not allow delays to be excused in equivalent circumstances for a national application, a Contracting State may still excuse such a delay for International application. There was therefore a specific basis for a difference in treatment between international and national applications.

(f) Decision G 3/91 was contrary to consistent jurisprudence that re-establishment of rights is possible in the circumstances of failure to meet the time limits of Article 157(2) and 158(2) EPC. Indeed, the decision was also contrary to the statements published by the EPO itself such as "Information for PCT Applicants" (OJ EPO 1991, 333).

(g) In most of the Contracting States where a national patent application, as an alternative to European patent application, can be designated in an International patent application, re-establishment of rights on grounds very similar or identical to Article 122 EPC is permitted to excuse delays in meeting the time limits for entry of the national phase. In view of this clear expression of opinion by the Contracting States whose laws have been harmonised with the EPC, the EPC should be interpreted by the EPO to allow delays in meeting the time limits for entry of the regional phase at the European Patent Office to be excused.

(h) The application of Decision G 3/91 to Euro- PCT applications would leave PCT-applicants at a disadvantage as they were therefore excluded from re-establishment for the claims fees which was not the case for European applicants. Both kinds of applicants should be treated equally, in accordance with general legal principles.

2. As concerns the second question:

The principle of the protection of the legitimate expectations of the users of the EPO should be applicable to the present case since, until Decision G 3/91, re-establishment of rights for Euro-PCT applications was granted by the EPO.

3. As concerns the third question:

The previous practice of the EPO should be applied at least to the cases entered before the date of publication of Decision G 3/91 in the Official Journal of the EPO. However, since a relatively long time span necessarily elapsed between this date and the time where the Official Journal was delivered to European attorneys and the latter were able to advise their clients correspondingly, a two-months grace period (period corresponding to the time limit of Article 122(2) EPC) taking effect at the date of publication of the Official Journal would be advisable in order to avoid expenses incurred for the preparation of requests for re-establishment which would become useless.