T 0522/88 19-12-1989

1. For the reasons set out in Decision T 26/88 ("AKZO") dated 7 July 1989 (to be published), in the Board's judgment, according to the proper interpretation of Article 102(5) EPC, a patent becomes immediately and automatically revoked upon expiry of the relevant three-month time limit under Rule 58(5) EPC, if the required translation is not filed within such time limit. Such immediate automatic revocation upon expiry of the relevant time limit is mandatory under Article 102(5) EPC. No decision of revocation is therefore necessary in order that revocation should occur, nor is such a decision of revocation appropriate, since there is nothing to be decided.

2. In the present case, it is accepted by the Patentee that no translation was filed before expiry of the relevant time limit on 14 August 1988. Thus the patent was automatically revoked on 15 August 1988. In view of the mandatory nature of such revocation as stated above, there is nothing left to be decided, either by the Opposition Division or by way of appeal. In particular, there is no possibility under the EPC of extending the time limit under Rule 58(5) EPC (except under Rule 85 EPC which is not applicable in the present case).

3. Accordingly, for the reasons set out in Decision T 26/88, in the Board's view the document which was issued by the Formalities Officer of the Opposition Division on 30 September 1988 should be interpreted as a notification under Rule 69(1) EPC of the revocation of the patent which had already occurred on 15 August 1988. On this basis, there has been no decision within Article 106(1) EPC, and the appeal should therefore be regarded as not having existed. The appeal fee should therefore be refunded.

4. The Board notes that the grounds of appeal, being in reality grounds which are appropriate for an application for re-establishment under Article 122 EPC, are effectively confirming that the patent should be revoked under Article 102(5) EPC. In all normal cases, the filing of an application for re-establishment of rights is equivalent to an acceptance that the relevant time limit has not been observed, with consequent loss of rights as a direct consequence by virtue of the Convention. Rights cannot be re-established unless they have previously been lost.

As pointed out in Decision T 26/88, the essential feature of an appeal is to consider whether a decision at first instance is correct on its merits. Grounds of appeal are, as a matter of principle, the antithesis of grounds for re- establishment, since the former should be setting out a case why the appellant should not have lost rights or otherwise been "adversely affected", and the latter should be setting out a case why in the particular circumstances rights which have been lost should be re-established.

Thus, the grounds of appeal in the present case would in any event be inadmissible as such.

5. For the above reasons, grounds of appeal should not be confused with grounds for re-establishment. An appeal is quite different from an application for re-establishment. The procedure is different (Article 108 EPC, cf. Article 122(2) and (3) EPC). The fee is different. The object is different. The grounds should be different. In all normal cases an appeal under Article 106 EPC cannot be considered as equivalent to an application for re- establishment under Article 122 EPC.

6. Nevertheless, in the Board's view the present case is not a normal case. As discussed in paragraphs 1 to 3 above, the Formalities Officer of the Opposition Division issued a document which appeared to be a decision in circumstances when loss of rights (revocation) was the direct, automatic and mandatory consequence of non-observance of the relevant time limit by virtue of the Convention. In the Board's view, the issuing of such a document with its accompanying communication stating that the decision was open to appeal was inevitably a direct cause of confusion to the Patentee as to the procedure which should be followed if he wished to contend that the conditions for re-establishment set out in Article 122(1) EPC were satisfied. In this circumstance it is understandable that the Patentee did not formally file an application under Article 122 EPC at that time. In the event, the Patentee filed an appeal (this having been indicated in the Formality Officer's communication as a possible course for the Patentee to take), and did not file an application under Article 122 EPC until this was suggested to him in the communication on behalf of the Board of Appeal which was issued on 1 June 1989.

On its face, therefore, the application for re- establishment was not filed "within two months from the removal of the cause of non-compliance with the time limit" under Rule 58(5) EPC, since the Patentee admits that he knew that the time limit had not been complied with upon receipt of the document issued on 30 September 1988.

Nevertheless, in the Board's view, in the exceptional circumstances of this case, the letter from the Patentee dated 10 October 1988 (filed 11 October 1988), which set out the notice and grounds of appeal (these being exactly the same as the grounds for re-establishment, which were formally filed on 15 June 1989), should be considered as constituting an application for re-establishment under Article 122 EPC. Furthermore, the fee for the application for re-establishment (being less than the fee for appeal) should be considered as having been paid on 11 October 1988, when the appeal fee was paid. Consequently, the application for re-establishment should be treated as it if had been filed within two months from the removal of the cause of non-compliance with the time limit. This course is consistent with the application of the principles of good faith between the EPO and parties before it, as discussed in particular in Decision J 3/87 (Membranes/Memtee) (OJ EPO 1989, 3) in its Reasons, paragraph 7.

The application for re-establishment being therefore admissible (the Board having exercised its powers under Article 111(1) EPC to decide upon such admissibility), this application under Article 122 EPC should be decided by "the department competent to decide on the omitted act" (Article 122(4) EPC), namely the Formalities Officer of the Opposition Division. This is also in accordance with the principle of two instances of decision discussed in Decision T 26/88.

7. The Board is aware of Decision T 14/89 dated 12 June 1989 (to be published), in which in similar circumstances the Board of Appeal in that case also held that an application for re-establishment, which was filed at the suggestion of the Board of Appeal, was admissible on the basis of the principles of good faith referred to above, but on the basis of different reasoning: the Board of Appeal in that case also went on to decide the application for re- establishment.

Having regard to Decision T 26/88, especially paragraphs 7.4 and 13 thereof, and the reasoning set out above, the present Board makes the following decision.