EPO express
rendered 25 June 1992
J 0413/91 : Re-establishment of rights is an extraordinary means of judicial remedy. It offers no choice to a party as a substitute for the proper action to be taken, nor does it imply any right to have the fatal effect of an intentional step cancelled, even if this step later on proved to have been a mistake. A party thus cannot deliberately abstain from fulfilling the conditions for a valid appeal, and then achieve an appellate review through the back door of a request for re-establishment of rights. The party in question must have been objectively unable to observe the time limit.
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.
By a decision of 27 March 1991, the Opposition Division maintained European patent No. 100 xxx in amended form. The patent was based on European patent application filed on 2 August 1983. The mention of grant was published on 10 February 1988.
The Opponents filed on 27 May 1991 a Notice of Appeal against the above decision. The appeal fee was paid on the same date.
On 9 April 1992, the Registrar of the Boards of Appeal issued a communication to the opponents pursuant to Article 108 and Rule 65(1) EPC, drawing attention to the fact that a written statement setting out the grounds of appeal appeared not to have been filed within the time limit laid down in Article 108 EPC.
In response to this communication, the opponents submitted on 20 May 1992 a request for re-establishment of rights, a Statement of Grounds and paid the required fee.
As grounds for the request for re-establishment of rights the following was submitted by the opponents:
Shortly before the decision of 27 March 1991 by the Opposition Division, the patentees declared themselves prepared to give the opponents a right of co-use of the invention, under certain conditions. For reasons not understood by the opponents, such an agreement was however never reached. The opponents had neither seen any concrete steps by the patentees to have the patent lapse as they had been led to believe. This caused the opponents to use the communication of 9 April 1992 to request re-establishment of rights.
In J 0019/05 the board of appeal confirmed that the request for re-establishment of rights is admissible.
The board noted that the Notice of Appeal and the appeal fee were submitted within the stipulated time limit under Article 108 EPC. As however the Statement of Grounds was submitted out of time, the question whether or not the appeal is admissible depends on the outcome of the request for re-establishment of rights.
Article 122 EPC on re-establishment of rights contains two fundamental requirements: The applicant or proprietor (or as in the present case the opponent, cf. G 1/86, OJ EPO 1987, 447) must establish that he was
The opponants' reasons for not filing any Statement of Grounds are that they had expected an agreement with the proprietor, which however did not come about.
The first condition under Article 122 EPC explicitly states that the party in question must have been unable to observe the time limit. The word "unable" (in the French version "n'a pas eté en mesure", and German version "verhindert worden ist") implies an objective fact or obstacle preventing the required action. Such an obstacle could e.g. consist of a wrong date inadvertently being entered into a monitoring system, or an outside agency influencing the observance of the time limit (for example a delay in delivery service). Only when such a fact made the party unable to observe the time limit would the circumstances of the case be examined as to the second condition "in spite of all due care".
Re-establishment of rights is an extraordinary means of judicial remedy. It offers no choice to a party as a substitute for the proper action to be taken, nor does it imply any right to have the fatal effect of an intentional step cancelled, even if this step later on proved to have been a mistake. A party thus cannot deliberately abstain from fulfilling the conditions for a valid appeal, and then achieve an appellate review through the back door of a restitutio request. The party in question must have been objectively unable to observe the time limit.
The Appellants of the present case however chose not to file any statement of grounds. The reason given, that the counterparty was not behaving as expected, is irrelevant, as it would not have objectively prevented the opponent from filing file a statement of grounds within the time limit given by the EPC. Thus, the opponents have not fulfilled the first condition under Article 122 EPC of being unable to observe a time limit.
The request for restitutio is therefore refused.
As the Statement of Grounds, given the above refusal, has to be considered as not filed on time, the appeal must be declared inadmissible.
ORDER
For these reasons, it is decided that:
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(c) EPO express 2020