Saturday, 30 July 2011

Oldies But Goldies – Failure To Forward

J 3/80 deals with a request for re-establishment of rights in a case where the applicant was not responsible for having missed a time limit.

The applicant had filed a European patent application at the United Kingdom Patent Office (UKPO), London, on August 28, 1979. The application claimed a priority of August 28, 1978. The UKPO issued a “secrecy direction” under section 22 of the Patents Act 1977, one effect of which was that the application could not be forwarded to the EPO unless and until the Ministry of Defence gave notice to the UKPO that the “secrecy direction” could be revoked.

The “secrecy direction” was subsequently revoked and the notice informing the appellant that this had been done was issued on October 29, 1979. By letter dated October 30, 1979, the UKPO informed the Receiving Section (RS) of the EPO that the application “would now be forwarded … in the normal way”. This letter was received by the EPO on November 2, 1979. The application itself arrived there on November 5, 1979.

As the period of fourteen months had already expired, the RS issued a notice in accordance with R 69(1) that, pursuant to A 77(5), the application was deemed to be withdrawn.

The applicant applied for restitution of rights pursuant to A 122.

The RS refused restitution of rights on the single ground that A 122 provides only for restoration of rights where there has been failure to observe a time limit which it is for the applicant to observe, whereas the time limit not observed in the present case was one which it was for the UKPO to observe.

The Board agrees with the RS:

[2] While it is clear that the appellant and its representative were in no way responsible for what has happened and did all they could to see that it did not happen, it is, however, not possible to interpret the provisions of either A 77 or A 122 in the manner contended for or in any other way that would entitle the appellant to succeed on this appeal.

[3] The appellant does not contest the proposition of the RS that A 122(1) refers to a time limit for the observation of which vis-à-vis the EPO the applicant for or proprietor of a European patent is responsible. That proposition is plainly correct.

[4] The appellant asserts that A 77(3), in contrast to A 77(1) and (2), does not attribute responsibility for forwarding applications to any specific party and that the applicant has overall responsibility for observance of the relevant time limits. This assertion cannot be accepted. The obligation to forward European patent applications filed nationally to the EPO rests, and rests alone, upon the relevant central industrial property office, in accordance with A 77(1), to which the provisions of A 77(3) are merely supplementary. The central industrial property office is in no sense the agent of the applicant, so far as concerns the forwarding of the application. It follows that the appellant cannot bring itself within the language of A 122(1) by any argument that it had responsibility for forwarding the application.

[5] It is clear from the provisions of A 77(5), taken together with A 135(1)(a) and A 136(2), that an applicant who suffers the misfortune suffered by the present appellant should not be entitled to claim restitution of rights under A 122. On the contrary, A 77(5) expressly provides for refund of the filing, search and designation fees and A 135(1)(a) and A 136(2) provide facilities for conversion to national patent applications on request filed within three months after notification has been made that the European patent application is deemed to be withdrawn. It follows that there is no scope for an argument that the spirit of A 122 should be invoked: specific alternatives to restoration of rights are provided.

[6] It is, of course, true, as Mathély has pointed out (“Le droit européen des brevets d’invention” Librairie du Journal des Notaires et des Avocats, Paris 1978, p. 244), that the sanction of A 77(5) EPC is grave, because it is imposed on the applicant for a default for which he is not responsible, but neither Mathély nor any other author whose writings are known to the Legal Board of Appeal, suggests that A 122 is applicable to relieve the applicant in such circumstances as those of the present case. Van Empel (“The Granting of European Patents” Sijthoff, Leyden 1975, para. 382) observes that once the time limit referred to in A 77(5) has expired without the European application reaching the EPO, the applicant’s “only hope” for obtaining a patent resides in the possibility of conversion of the European application into national ones.

[7] Van Empel also rightly points out that the loss of the European application represents a loss to the applicant. In the present case, the extra expenses incidental to conversion are likely to be considerable as no fewer than nine national applications would have to be made to secure the applicant’s lost position. However, any complaint or claim for compensation against a national authority is a matter for national law exclusively. Some of the appellant’s submissions in this appeal may be relevant to such a complaint or claim but are not relevant to the matters with which this Board has to deal.

[8] In the circumstances, the Decision of the RS was correct in all respects and must be affirmed.

Nowadays, the relevant provisions are A 77 and R 37, but as far as I can see, the logic and the time limits are still the same.

To read the whole decision, click here.

NB: I shall be absent for a fortnight and might not have any Internet access. I have pre-programmed posts for the case law addicts among you, but I will not be able to react to comments etc. Have a good time !