The present decision deals with a situation where the applicant was allowed to enter the European phase very late (51 months from the priority date) because the EPO could not prove that the applicant had received the notification under R 108(3). However, the bliss was short-lived: it was indeed a dead application that entered the European phase as it was too late to pay the renewal fees that had fallen due.
The following timeline summarises the situation. (click to enlarge)
NB: All the articles and rules referred to are provisions in force under the EPC 1973.
[…] The renewal fees in respect of European patent applications are basically due under A 86 for the first time in respect of the third year calculated from the date of filing of the application.
Under A 150(3), an international application (IA) for which the EPO acts as designated Office shall be deemed to be a European patent application. According to A 153(1), first sentence, the EPO shall act as a designated Office for those Contracting States to the EPC which are designated in the IA if the applicant informs the receiving Office in the IA that he wishes to obtain a European patent for these States. Therefore, A 86 also applies in principle to the payment of renewal fees for an IA designating the EPO. [3]
R 107(1)(g) relates to the specific situation in which the first renewal fee to be paid has fallen due under R 37(1) before the end of the period of thirty-one months from the filing date or from the priority date of the IA for entry into the European phase. In this case, under R 37(1), the applicant must pay the renewal fee - only - within the thirty-one months period. R 108 relates to the consequences of non-fulfilment of certain specific requirements for entry into the regional phase before the EPO. A communication under R 108(3) is due from the EPO only in case of loss of rights under paragraph 1 or 2 of that Rule, which does not encompass the lack of payment of the renewal fee in respect of the third year due upon entry into the regional phase under R 107(1)(g).
It appears from the above that the time limit under R 107(1)(g) for the payment of the renewal fee in respect of the third year is excluded from the communication and noting of loss of rights under combined R 108 and R 69. Hence, there is no applicant’s right to a reminder on that legal basis concerning the time limit for payment of the renewal fee. A fortiori, such a right could not originate or derive indirectly from a specific legal context to be considered under R 108(3). Such an extension would be against the rule of law enshrined in the other provisions setting up the regime which applies to the payment of the renewal fees. [4]
Anyway, in the present case, the renewal fee for the third year was not even due under R 107(1)(g) at the time for entry into the European phase but became due only later. Also on that basis, no right can be derived, as to the lack of payment of the renewal fee for the third year, from the absence of a communication under R 108(3). [5]
The appellant argued that Rule 108(3) did not only deal with all the acts to be performed under Rule 107(1) but that it would result in a general extension of the period to comply with all requirements for entry into the European phase.
As mentioned above, R 108 has a specific scope of application, which cannot be applied generally to all acts to be performed at the time of the entry into the European phase. A fortiori, there is no legal basis, either from the text itself or from any interpretation of the intention of the lawmaker, to support a further generalisation of R 108(3) which would result in a general extension of the period for entry into the European phase until after expiry of the time limit for completing any omitted acts after issue of a communication under R 108(3), first sentence. On the contrary, paragraphs 1, 2 and 3 of R 108 clearly stipulate that the loss of rights takes place if the necessary acts are not performed within the thirty-one months period and completion of the omitted acts mentioning payment of the required surcharge within two months from the notification of the loss of rights communication under R 108(3) - only - has the effect that the loss of rights is then deemed not to have occurred. Hence, the issue of a communication under R 108(3) does not extend the original time limit of thirty-one months for entry into the regional phase but solely provides the applicant with an opportunity to make good the loss of rights having actually occurred upon expiry of the thirty-one months, by performing the outstanding acts mentioning payment of a surcharge within the period under R 108(3). Therefore, in the present case, the renewal fee for the third year had not fallen due before the end of such an “extended” period for entry into the regional phase and R 107(1)g is not applicable. [6]
Instead, in the present case, as it concerns the payment of the renewal fee and since the IA is to be treated as a European application from its international filing date, the legal basis for that payment to become due is to be found in A 86. As regards the time limit for the payment of the renewal fees for a European patent application under A 86, the EPO is under no obligation to remind the applicant of its expiration and the applicant can derive no right from the absence of any such reminder (established jurisprudence following J 12/84; J 1/89). [7]
The appellant also submitted that if a further prosecution of the application is refused based on non-payment of the renewal fee, it would defeat the purpose of R 108(3).
The above analysis demonstrates that there are distinct applicant’s obligations and rights, on the one hand for the payment of the renewal fees and on the other hand for the entry into the European phase, with different time limits, different rights to reminders and different legal consequences. In the present case, the due date for the payment of the renewal fee and the deadline for its payment with surcharge had to be managed by the applicant independently from the requirements for the entry into the European phase. The lack of payment of the renewal fee for the third year is an omission which cannot be associated with the other omissions and which has to be considered on its own, independently.
Hence, even if the requirements for entry into the European phase have been fulfilled, the non-payment of the renewal fee in due time remains by itself a sufficient ground for having the application deemed to be withdrawn.
That is the context of the present case and does not generally deprive R 108(3) of any application in any situation, e.g. in cases where the applicant had not complied in due time with the requirements for entry into the European phase, had then received a communication under R 108(3) and had consequently complied with all due requirements for entry into the European phase when the time limit for payment of the renewal fee had not elapsed. [8]
As to the reference made by the appellant to Article 48(2)(b) and Rule 82bis.1.(iii) PCT, the Board notes that these provisions establish that the EPO “may” excuse any delay in meeting any time limit for reasons not admitted under its own law, not that the EPO must excuse all such delays (distinguished from Art 48(2)(a) PCT). Therefore, not to generally excuse all delays does not constitute a breach of any obligation of the EPO under the PCT nor, contrary to the appellant’s argument, does it raise any conflict between the provisions of the EPC and of the PCT in which PCT’s provisions should prevail under A 150(2). This is in line with decision G 3/91 [1.5; 1.8] where Article 48(2)(b) PCT had been considered and where, however, equal treatment of the time limits which must be observed by Euro-PCT and direct European applicants was recognised as consistent with the law.
In the present case, the Board sees no reason to depart from said decision nor any legal basis which could justify a different and more favourable treatment of the application in suit as to the time limit for payment of the renewal fee because of its origin as [an] IA. [9]
The decision then deals with arguments concerning an alleged lack of good faith on behalf of the EPO and finally dismisses the appeal.
To read the whole decision, click here.
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