J 6/08 - Amazing Grace

One of the best French experts on EPC matters smilingly told us students: “When you’re lost, file an appeal. If you do not know what could possibly save you, the Boards might know !” The present decision illustrates this sentence of wisdom.

What is interesting here is not so much the particularities of the legal situation concerning missing drawings – as it has changed under the EPC 2000 – but the way the Board handles things.

The applicant had filed its application without the drawings. It filed the missing drawings one week later. When receiving an invitation by the EPO to request a new filing date, the applicant did not react – as it should have under the EPC 1973.

Here is a timeline resuming the essential moments of the proceedings (click to enlarge).

[…] The forms used for the notifications of loss of rights (as here the notification dated 13/6/05) contain both a reference to a request for a decision under R 69(2) EPC 1973 and a reference to re-establishment. However, these remedies have very different and to some extent, contradictory requirements. A request under R 69(2) can only succeed if the notification of loss of rights has been wrongfully sent, e.g. when the applicant has carried out the allegedly omitted action. If the applicant has not done so, only a request for re-establishment can be successful. It follows that an interpretation of the meaning of the response of the applicant to a notification of loss of rights may be needed in order to establish whether the request is to be understood as a request for a decision under R 69(2) or as a request for re-establishment. [6.2]

In the present case, a request for a decision under R 69(2) would have been reasonable and appropriate if the applicant had in fact made a request for a new date of filing and if the EPO for whatever reason had found this request not to have been made. No such request has been made before the notification dated 13/6/05. However, a request for re-establishment, to which there is also a reference under the heading “information on legal remedies” (Rechtsmittelbelehrung), would be an appropriate legal remedy if the applicant – as here – had not made a request for a new date of filing but completed this omitted act within the time limit under A 122(2), first sentence. This is what the applicant has done in its letter dated 20/6/05. […] The applicant has confirmed in the oral proceedings that its letter dated 20/6/05 also intended to request re-establishment. [6.3]

The appellant has also given reasons which determined the erroneous missing of the time limit. […] The appellant refers to the proceedings concerning another EP application where it proceeded in the very same way. The EPO had fixed the date of filing to the later date of its own motion although it had also sent a communication concerning late filed drawings. [6.4]

When looking for an interpretation of this request oriented towards the objective intention and taking into account the procedural situation, the Office could also have interpreted the letter dated 20/6/05, which not only completed the omitted act but also gave reasons for missing the time limit, as a request for re-establishment into the time limit under R 43(1) EPC 1973 instead of a request for a decision under R 69(2) EPC 1973. And not only could it have done so, but it would have had to do so. The request should at least have triggered the Office to inquire what the real intention of the appellant was. [6.5]

[…] According to A 122(3), second sentence, EPC 1973, a request for re-establishment shall not be deemed to be filed until after the fee for re-establishment of rights has been paid. As the request for re-establishment is only admissible within the year immediately following the expiry of the unobserved time limit, the payment of the fee also has to be done within this time limit. [9]

The appellant has paid the fee for re-establishment by handing over a debit order during the oral proceedings on 10/2/09 after having been informed that the Board was inclined to interpret its letter to be a request for re-establishment. […] Therefore, the payment of the fee for re-establishment has taken place more than three and a half years after the expiration of the time limit under A 122(2), third sentence, EPC 1973. A 122(3), second sentence, EPC 1973, this would entail the fiction of the request being deemed not to have been made. [9.1]

According to the case law of the Boards of appeal, the legal fiction of A 122(3), second sentence, is an automatic and necessary consequence of the non payment of the fee for late payment of the fee for re-establishment, without there being any discretion for the Board or any possibility to take into account reasons for the belated payment. [9.2]

However, the Board, taking into account the particular circumstances of the case and considering the sense and purpose of the one-year time limit under A 122(2), third sentence, considers that the fact that only the fee for re-establishment has not been paid within this time limit is not legally sufficient to refuse re-establishment.

The Office would have had to made inquiries concerning the real intention of the appellant behind its letter dated 20/6/05. By not doing so, it has violated its duty of clarification (Aufklärungspflicht). [10]

The Board then discusses decisions J 15/92 (where re-establishment was granted on the basis of the principle of good faith), J 34/92, J 6/90, and J 6/98 (where re-establishment was refused on the basis of legal security). As to the latter decisions, the Board adds :

The said decisions concern cases where the applicant did not manifest any intention whatsoever to overcome the loss of rights or to pursue the application, within the one-year time limit. In such situations the Boards have given priority to the legal security of third parties. However, the present situation is not comparable, so that re-establishment is not excluded. [11]

Considering the particular circumstances, i.e. the close temporal connection of the application under consideration and the proceedings concerning [a parallel] application [by the same applicant], the facts of the procedural situation being oriented in the same way (gleichgelagert), and taking into consideration the procedural errors which the EPO made in this parallel application [NB : the EPO had rectified the date of filing of its own motion, in violation of R 43 EPC 1973], one may consider that the appellant has made an excusable legal error concerning the necessity to make a separate request for re-dating the application. [17]

The Board thus grants re-establishment and remits the case to the Examining Division.

To sum up, the Board has interpreted a letter of the applicant in which it required the Receiving Section to set aside a finding under R 69(1) as an implicit request for re-establishment. Moreover, it has accepted a payment of the corresponding fee more than three years after the expiration of the time limit, the payment having been made after the Board informed the appellant of its interpretation of the request.

I cannot help but find such overwhelming judicial benevolence ... amazing.

Seriously, one sometimes wonders whether the Boards remember that third parties and the public in general also have legitimate expectations.

To read the whole decision (in German), click here.