EPO express
rendered 28 September 1994
Our title:
The level of due care expected from an individual applicant is lower than that of a professional representative or the patent department of a company.
If an applicant is informed by the EPO that he can file the reasons for re-establishment of rights by a certain point in time, the applicant can rely on this information in accordance with the recognized principle of the protection of legitimate expectations.
The justification for a request for re-establishment of rights can also be supplemented after the deadline has expired, provided that the supplement represents a completion of the earlier submission that was filed within the prescribed time limits, i.e. the supplement filed after the deadline does not put the original request for re-establishment on a new basis.
In a decision of the board of appeal the decision will most of the time speak of the appellant which is the person, or company in which name an appeal has been lodged. To make the decision more comprehensive this annotated summary uses the term “applicant” for the applicant of the European patent application also for the time after the applicant had lodged the appeal. This desicion was rendered under the provision of EPC 1973. In the current version of EPC 2000, enering into force 13 December 2007, some Articles and Rules have been re-organized and therefore their numbers do not correspond. In order to track the cited provisions we replace the EPC 1973 numbers of the Articles and rules with their EPC 2000 correspondence.
Decision J 0005/94 relates to a European patent application was filed on June 23, 1992. Field 25 of the request for grant (form EPA 1001.2) claims two priorities from June 24, 1991 and one priority from June 29, 1991, stating the country, filing date and file number of the previous applications. Field 25 also contains the addition "No. of the patent will be filed later" in a further line.
By decision of 23 November 1992, the applicant was requested by the Receiving Section to submit the missing copies of the priority applications within 2 months of the notification being served. By letter of January 18, 1993, the applicant asked for information "whether there was anything else he had to submit". Among other things form 1111 was sent again to him by fax. In response to his request the deadline was extended by two months. In two further requests, the applicant alleged that he had not yet received the priority documents from the German Patent Office. The deadline was again extended by one month. By letter of June 8, 1993, received on June 10, 1993, the applicant submitted the priority documents, namely three priority documents for the applications expressly mentioned in box 25 of the request for grant and one further priority document for those filed in Germany on 29 June 1991 Registration number P 41 21 68 2.2.
The Receiving Section sent a notification under Rule 69 (1) EPC on 30 June 1993, to inform the applicant that the four priority claims had lapsed because the priority documents had not been filed within the time limit.
In a letter dated 5 July 1993, received on July 7, 1993, the applicant applied for further processing and re-establishment of his rights because he had received the priority documents too late from the German Patent Office despite a warning. He paid the prescribed fees on 22 July 1993.
By notification of 21 July 1993, he was informed of the requirements of an application for re-establishment of rights. He was advised that the facts on which the grounds were based had to be made credible, with an example being given of the reasons why the German Patent Office had not provided the priority ordered documents. By fax of 19 and 21 August 1993, the applicant alleged that he had reminded the German Patent Office of his deadline of 29 March 1993 with letters of 23 April and 7 May 1993, but he did not receive the priority documents until 25 April 1993 against cash on delivery. At that time, he was unable to react due to kidney colic and an ulcerated jaw.
On 3 September 1993, the Receiving Section informed the applicant that it intended to reject the request for re-establishment of rights, as the reasons given did not indicate that he had taken all due care. In particular, he did not do anything between the end of November and the end of March to order the priority documents. The alleged illnesses are neither proven nor a reason to postpone the dispatch of the priority documents. By fax of 29 October 1993, the applicant submitted a dental incapacity certificate for the period from 21 May to 10 June 1992.
By decision of 3 December 1993, the Receiving Section rejected the application for re-establishment of rights in the previous status essentially on the grounds of the interim decision and declared the priority claims to have lapsed.
By fax of 23 December 1993, the applicant filed an appeal in which he was pursuing his request for re-establishment of rights. He paid the appeal fee on 20 January 1994. In the statement of grounds of appeal received on 28 March 1994, he added to his previous submission that on 18 January 1993, he asked the Receiving Section whether there was anything else to be submitted, since files had been stolen from his secretary’s office. Therefore he only knew "what had been missed" since the faxes of 28 January 1993 had been sent. After the requested extension of the deadline, his secretary requested the priority documents by telephone from the German Patent Office on 5 February 1992, and on 29 March 1993 she found that they were missing. He then gave instructions to order the files by letter.
By interim decision of the rapporteur of 26 May 1994, the applicant was informed of gaps and ambiguities in his previous submissions. In his replies of 6 July and 18 August 1994, he essentially submitted the following:
The board found the admissible appeal was well founded.
According to the board of appeal the Receiving Section correctly interpreted the letter of 5 July 1993 as an application for re-establishment of rights. A request for further processing would not have been admissible since the failure to meet the deadline did not trigger one of the legal consequences provided for in Article 121 (1) EPC. The request for re-establishment of rights within the deadline for submitting the priority documents must be granted as the applicant supplemented the reasons.
The request for re-establishment of rights has been filed and the fee necessary for its effectiveness has been paid within the two-month period under Article 122 (2) EPC. The two-month period could not begin before the end of the extended deadline for filing priority documents on 3 June 1993, so the actions taken on 7 and 22 July 1993 were in time.
The reasons for the request for re-establishment were not received until 19 August 1993. No further clarification is required as to when the applicant recognized or was able to recognize that he had missed the deadline for filing the priority documents, which led to the removal of the obstacle within the meaning of Article 122 (2) sentence 1 EPC (see J 27/90, OJ EPO 1993, 422, point 2.4 of the reasons). In any event, he had been advised in the Receiving Section's decision of 21 July 1993 that he could submit the reasoning by 10 September 1993. In accordance with the established case law of the Boards of Appeal, he was entitled to rely on the accuracy of this information, so that the time limit is to be regarded as met.
The reasoning, which was accordingly submitted in due time, contained the core of the facts put forward in support of the request for re-establishment of rights, namely the delay in issuing the priority documents by the German Patent Office and the complainant's illness upon receipt of these documents before the deadline for submission. The facts presented originally required further explanations and additions. However, these explanations and additions did not go beyond the scope of his earlier submission, which was filed within the prescribed time limits. Thus the explanations and supplements are regarded as a completion, as they do not put the original request for re-establishment of rights on a new basis. Such a supplement is also permissible after the lapse of the deadline.
The applicant has also adequately demonstrated that he was prevented from submitting the priority documents in due time despite all due care required under the circumstances.
In doing so, the board took into account that the applicant is an unrepresented individual who is neither familiar with the requirements of the EPC in detail, nor does he have at his disposal an established office organization that is particularly directed towards compliance with procedural deadlines. In such a case, the same standards of care cannot be assumed as with a professional representative or the patent department of a large company. However, an individual applicant who does not make use of the help of a professional representative must, within the scope of his possibilities, ensure that he can take the necessary actions in the course of the granting procedure in an orderly and timely manner in order to prevent loss of rights. He can neither generally invoke ignorance of the law nor omit reasonable precautions to meet the deadline.
In view of these principles, the board considers it sufficient that the appellant first entrusted his secretary with handling the decision of 23 November 1992. As a result, he has repeatedly tried to provide the priority documents within the extended deadline granted by the receiving office. With regard to the last extension of the deadline, which was relevant here, this failed essentially because the applicant was not responsible for and was not expected to delay the issue of the documents by the German Patent Office, which coincided with his illness before the deadline. Although the illness presented here would not justify the fact that no adequate precautions are taken for foreseeable necessary actions for a longer period of time, it seems to the board understandable that, under the specific circumstances here, the period expiring on the sixth working day after receipt of the supporting documents was no longer observed. The board assumes that the applicant did not actually receive the documents until May 25, 1993, as originally submitted in the fax of 19 August 1993 and in the appeal proceedings. Deviating from this, the date of May 21, 1993 mentioned in the fax of 29 October 1993 for receipt, from which the Receiving Section assumed in its decision, appears unlikely, since the priority documents were only signed on this day by the responsible official of the German Patent Office.
For these reasons it is decided:
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