G 0001/86 (Re-establishment of rights of opponent) 24-06-1987

1. The European Patent Convention provides for a number of procedural steps to be taken within time limits laid down either in the Convention itself or by the European Patent Office. Failure to observe these time limits frequently involves the person concerned in an irrevocable loss of rights. This is particularly harsh when that person was not actually at fault and the failure was attributable to an oversight which occurred in spite of all due care required by the circumstances having been taken.

2. Restitutio in integrum was instituted to mitigate this hardship (Article 122 EPC).

3. Article 122(1) EPC contains the following passage: The applicant for or proprietor of a European patent who ....... was unable to observe a time limit vis-à-vis the European Patent Office shall, upon application, have his rights re-established .....". In the view of the Enlarged Board of Appeal this formulation must not be interpreted as excluding a priori all other persons not expressly referred to in Article 122(1) EPC from re-establishment of rights, as this would clearly have inequitable and logically unjustifiable consequences. Other parties who are not applicants or patent proprietors may also through no fault of their own fail to observe a time limit in proceedings before the EPO and as a result run the risk of an irrevocable loss of rights. These include, for example, professional representatives before the EPO (Article 20 EPC), inventors (Rule 19 EPC) and persons who, although not applicants, are entitled to a European patent (Article 61 EPC). It is not clear on what grounds these persons should be excluded from re-establishment of rights. In opposition cases, for instance, Rule 63(3) EPC stipulates that the request for a decision by the Opposition Division on the awarding of costs by the Registry, stating the reasons on which it is based, must be filed with the European Patent Office within one month after the date of notification of the awarding of costs. This decision is appealable in accordance with Article 106(5) EPC. It would hardly be reasonable if one of the parties were able to have his rights re-established in connection with the fixing of costs, but the other were not. In drafting Article 122 EPC, therefore, the authors of the Convention intended only to exclude certain cases and time limits from restitutio in integrum, not to restrict that facility to applicants and patent proprietors. To answer the question, it must first be established how Article 122(1) EPC is to be interpreted. This will involve applying the principles of interpretation defined by the Board in its earlier decisions (see points 1 to 6 of Decisions Gr 01/83, Gr 05/83 and Gr 06/83 of 5 December 1984, OJ EPO 3/1985, p. 60 and point 1 of Decision Gr 01/84 of 24 July 1985, OJ EPO 10/1985, p. 299).

4. The historical documentation relating to the EPC indicates that when preparatory work on the European patent began, only one of the the States involved (Germany) was familiar with the principle of re-establishment of rights and applied it in patent law (see the comments by the Patents Working Party at its meeting from 8 to 19 January 1962, minutes for 10 January, IV/215/62, p. 23). In the "Second Preliminary Draft of a Convention establishing a European System for the Grant of Patents" published in April 1971, Article 142 (corresponding to the present Article 122 EPC) was limited to the "applicant". However, a note to this Article is worded as follows: "It should be examined whether Article 142 should be extended to cover patentees and opponents". This examination was carried out by a working party during a meeting in Luxembourg from 22 to 26 November 1971. The minutes of this meeting contain the following passage: The Working Party examined the question of extending the field of application of Article 142 to the proprietor of the patent and to the opponent, in conformity with the remark contained in the Second Preliminary Draft. With regard to the proprietor of the European patent, the Working Party was of the opinion that it was logical and necessary that he be granted, throughout the period within which opposition could be brought or when an opposition procedure was pending, the right to have his rights re- established. Article 142 was supplemented accordingly. With regard to the opponent, on the other hand, the Working Party was, in the majority, of the opinion that it would not be advisable to grant him such a right, since he had other means of availing himself of his rights, in particular by bringing an action for revocation before the national courts, if prevention through force majeure had as a direct consequence the loss of a right or of the grounds of appeal within the context of opposition proceedings." (BR/144/71)

5. The exclusion of opponents from having their rights re- established in respect of time limits for appeals is explained by the fact that the proprietor has a legitimate interest in not being left unduly in the dark as to whether an appeal can still be filed. Giving the patent proprietor the advantage of being able to have his rights re- established in respect of this time limit is justified by the fact that revocation or limitation of the patent involves an irrevocable loss of his rights. This is not the case for an opponent, who, as indicated above, can still pursue an action for revocation before the national courts if his opposition is rejected. The Enlarged Board of Appeal points out that German and Austrian law also incorporates express provisions ruling out re-establishment of an opponent's rights in respect of time limits for appeals ( 123(1) of the German Patent Law - cf. the "Schlitzwand" decision of the Federal Court of Justice of 22 December 1983, GRUR 1984, p. 337 - and 129.2 of the Austrian Patent Law). Under the law of those other Member States which have both an opposition procedure and restitutio in integrum (the Netherlands, Sweden, Switzerland), re-establishment of rights is expressly available only to the applicant (Article 17A of the Netherlands Patents Act) or to the applicant and patent proprietor ( 72 of the Swedish Patents Act and Article 47 of the Swiss Patents Law). Under Netherlands law opposition takes place prior to grant (Article 25.4), so the applicant's rights can be re- established if he fails to observe the time limit for appeal. In Sweden, on the other hand, where the Patent Appeals Court is independent of the Patent Office, none of the parties to opposition appeal proceedings can have their rights re-established in respect of the time limit for appeals under 72 of the Swedish Patents Act, which applies only to proceedings before the Patent Office but not to those before the Patent Appeals Court. Re-establishment before the latter can be granted only exceptionally and in special cases by the Supreme Administrative Court.

6. Thus the wording of Article 122(1) EPC, the historical documentation relating to the Convention and a comparison of the national laws of Members States suggest that opponents may not have their rights re-established in respect of time limits of appeals. However, that does not clarify the question of whether they are also barred from restitutio in integrum in respect of time limits for filing the statement of grounds for appeal.

7. At the time when its authors decided to exclude opponents from restitutio in integrum, the draft Convention made no provision for a separate time limit for filing the statement of grounds for appeal. Article 111 of the Second Preliminary Draft of a Convention establishing a European System for the Grant of Patents, published in April 1971, specified the formality requirements and the time limit applying to them; and it provided the basis for the Working Party's decision at its meeting on 10 December 1971 (see point 5) not to allow re-establishment of opponents' rights. It was worded as follows: An appeal must be lodged in writing at the European Patent Office within a period of two months from the date of notification of the decision appealed from; it must set out the grounds on which it is based. An appeal shall not be deemed to be lodged until after the payment of the fee for appeal prescribed by the Rules relating to Fees adopted pursuant to this Convention. An additional written statement setting out the grounds of appeal in greater detail may be submitted within a period of one month after the lodging of the appeal." It was only at the Munich Conference in October 1973 that a separate time limit for filing the statement of grounds for appeal was incorporated in the former Article 111 - now Article 108 EPC (see M/PR/1, p. 55).

8. This amendment created a new legal situation. An appeal is regarded as lodged only when it has been filed and the appropriate fee paid. In performing these two acts the appellant initiates the procedure. The legal process has begun. The actual expiry of the two-month time limit laid down in Article 108 EPC ends the patent proprietor's uncertainty as to whether the patent granted by the department of first instance has been definitively maintained or not. The same does not apply, however, to the expiry of the four-month time limit for filing the statement of grounds, specified in the same Article, since it presupposes a legally effective appeal. Expiry of the four-month time limit therefore impinges upon the patent proprietor's legitimate interests in a different way from expiry of the two-month time limit. It was not possible to take account of this difference when Article 122 EPC was being prepared, because it was not until the Munich Conference that the decision was taken to incorporate a separate time limit for the statement of grounds for appeal. The Conference itself did not take into consideration the effect of this change on Article 122 EPC. The Enlarged Board of Appeal consequently believes it is entitled to examine whether the patent proprietor's interests, by virtue of which re-establishment of rights in respect of the time limit for appeals is denied to opponents but accorded to patent proprietors (see point 6), also justify refusing re-establishment of rights in respect of the time limit for filing the statement of grounds for appeal.

9. The patent proprietor undoubtedly has a legitimate interest in no longer being left uncertain as to whether an appeal has been lodged, once the two-month time limit for appeal under Article 108 EPC has expired. But where the appeal has already been filed, i.e. when the opponent has validly made known his intention of having the Opposition Division's decision set aside, this uncertainty no longer exists, since the appeal procedure has now been set in motion. The legal process has begun: the patent proprietor must comply with the procedural requirements like all the other parties and wait until the Board arrives at a final decision on the appeal's admissibility. The additional delay caused by re-establishment proceedings will as a general rule hardly make any appreciable difference compared with the usual duration of the procedure. Appellant and respondent are informed immediately by the Registry of the Boards of Appeal that the time limit for filing the statement of grounds for appeal has not been observed. Moreover any possibility of abuse is ruled out by the strict conditions attaching to restitutio in integrum under Article 122 EPC. The Enlarged Board of Appeal therefore takes the view that the legitimate interests of the patent proprietor do not in these circumstances justify refusing an opponent re-establishment of his rights in respect of the time limit for filing the statement of grounds for appeal.

10. Accordingly - and this concords with the principle of "Cessante ratione legis cessat ipsa lex" (Digest 35.1.72 6) - Article 122(1) EPC must not be interpreted to mean that opponents are automatically barred from re- establishment of rights in respect of the time limit for filing the statement of grounds for appeal and other time limits provided for in appeal proceedings whose non- observance after the appeal has been filed may involve him in a loss of rights.

11. Thus, neither the wording of Article 122(1) EPC, nor the historical documentation relating to the European Patent Convention, nor the legal background to the Article in question, oppose the possibility of opponents applying to have their rights re-established under Article 122 EPC during valid appeal proceedings. It therefore remains to be determined whether the question in hand can be answered in the affirmative in the light of general legal principles.

12. General legal principles are a recognised source of legal information and can help in the interpretation of written law. They are applied by the national courts of Contracting States to fill gaps in the law or to deviate from a strictly literal interpretation of existing provisions where such interpretation would lead to inequities (see, e.g. International Institutional Law, Henry G. Schermers, Sijthoff & Noordhoff, 1980, 1189 et seq. and Traité de droit civil, eduted by J. Ghestin, Introduction générale, J. Ghestin and G. Goubeaux, LGDJ 1983, point 446, et seq.).

13. The Contracting States to the EPC recognise the principle that all parties to proceedings before a court must be accorded the same procedural rights. This principle, like those of a fair hearing, the right to defend oneself, etc., derives from the general principle of equality before the law and thus before the courts which administer that law. Several judgements of the Court of Justice of the European Communities have given formal recognition to this principle, which requires that "similar situations shall not be treated differently unless differentiation is objectively justified" (judgement of the Court of Justice of 8 October 1980 in case 810/79 - Peter Überschär, Reports of Cases before the Court of Justice of the European Communities 1980, p.2747).

14.Those EPC provisions governing the independence of members of the Boards of Appeal (Article 23 EPC), their competence and method of work and the nature of the decisions they take, indicate that the Boards act as courts with the task of ensuring that the law is respected when the EPC is applied. The principle of equal treatment of parties to court proceedings must therefore also be applied to proceedings before the Boards of Appeal of the EPO. Moreover there is no right of appeal against decisions of the Boards of Appeal. In the Member States of the European Patent Organisation decisions by departments of last instance, i.e. those terminating proceedings concerned with checking the legality of administrative actions and the protection of the rights of the individual, can only be taken by courts of law.

15. The Enlarged Board of Appeal therefore takes the view that in opposition appeal proceedings the Boards of Appeal must apply the principle of equal treatment of all parties (see point 13 above) in connection with the time limit for the statement of grounds for appeal laid down in Article 108, 3rd sentence, EPC. Under this principle an opponent must not be treated differently from the patent proprietor when it comes to granting re-establishment of rights in respect of failure to observe a time limit for filing the statement of grounds for appeal, as that would result in unjustifiable discrimination against the opponent. The question put by the Board of Appeal is therefore to be answered in the affirmative.