Thursday, 21 January 2010

J 12/07 – If You Need More Time, Justify In Time

The present appeal was filed after the Examining Division (ED) had rejected a further extension of the time limit for filing observations pursuant to A 96(2) EPC 1973.

[…] The decision under appeal correctly ruled that the right criteria had been applied in the decision refusing an extension of the time limit.

The existence of exceptional circumstances was not sufficiently substantiated within the time limits whose extension was requested.

The request, filed within the time limits, contained the mere statement that the client was a start-up company which had only very recently authorised the representative to draft and file a reply to the communication.

The applicant’s status as a start-up company is not an exceptional circumstance. In the request filed within the time limits, the applicant did not give any reasons for the fact that it had authorised the representative only a short time before the expiry of the time limit. Thus, in the decision under appeal, it was correctly regarded as no more than a delay in the applicant’s decision-making process and therefore an avoidable circumstance. [2.3]

Reasons given after the time limit for the request has expired cannot be considered.

The appeal is based essentially on the fact that the department of first instance should have accepted the reasons given in the appellant’s letter filed months after the refusal of the time-limit extension in reply to the ED’s communication noting a loss of rights under R 69(1).

Whether an extension of a time limit may be granted or ought to be refused can only be decided on the basis of the reasons put forward by the applicant at the time when the department of first instance makes its decision.

If these reasons do not justify a further extension of the time limit, the department of first instance has exercised its discretion properly and taken a correct decision by refusing the request.

Reasons given after the extension has been refused cannot be considered, and in subsequent appeal proceedings the board has no power to set aside the decision of the department of first instance and instead to exercise its own discretion in the light of reasons given at a later time.

In the present case, the request for extension was based on the late authorisation of the appellant’s representative as a result of the appellant’s being a start-up company. That reasoning does not in any way suggest that the late authorisation was due to financial difficulties rather than a lack of experience on the part of the appellant in patent matters.

Furthermore, even though the letter states the reasons referred to above, it still does not explain what specific circumstances prevented the company from dealing with the case. A mere general reference to financial difficulties is not sufficient.

The ED was therefore right to refuse reimbursement of the fee for further processing. Hence, the appeal is not allowable. [2.4] 

To read the whole decision, click here.