EPO express
Re-establishment is the last resort when an applicant or an opposing party has lost a right. It is a kind of grace and will only be allowed if the party reqeusting the re-establishment of rights can prove that they lost the right despite having exercised due care to avoid such a situation. The case law for re-establishment of right embraces nearly 900 cases. Re-establishment of a right is rarely granted and a party unexperienced in such a reqeust probably will sobotage his request when trying to submit this request without the support of a European Patent Attorney with sufficient experience in such cases.
The following overview is not intended to be complete or to give advise. The information is provided to demonstrate how complex a request for re-establishment of rights is. Unlike an answer to an examinaton report, where it is in the discretion of the Examining Division if they grant the right for another reply before the Examining Division may reject a patent application, a party requesting a re-establishment of rights practically has only "one shot"
Re-establishemnt of rights is codified in Art. 122 EPC
Art. 122 EPC makes reference to any other requirements and time limits laid down in the Implementig Regulations. These Implementing regulations have been adopted by decision of the Administrative Council of the European Patent Organisation of 7 December 2006 and as last amended of 27 March 2020. (Status of this web page is August 2020) The applicable rules are Rule 136 EPC and Rule 142 (1) (u) EPC
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(n) date on which the application is refused, withdrawn or deemed to be withdrawn;
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(r) date and purport of the decision on opposition;
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(u) date of re-establishment of rights where an entry has been made under sub-paragraphs (n) or (r);
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The word "unable" in Article 122(1) EPC implies an objective fact or obstacle preventing the action required from being taken. In decision J 2/02, the boards have also taken this approach on the legal interpretation of the term "unable" in Article 122(1) EPC.
Unawareness of the expiry of a time limit must be distinguished from a deliberate course of action taken by the applicant.
Article 122 EPC is an exceptional means of judicial remedy, not a usual way of extending an initial time limit. A party, however, cannot deliberately choose not to fulfil the conditions for a valid appeal, and then achieve an appellate review through the back door of a request for re-establishment of rights because an opponent erred in the assummption that he will come to an agreement with the patent proprietor and therfore does not need to continue with his appeal (J 0413/91) or that an applicant deliberately ignored a deadline for tactical or strategic reasons (J 0002/02) and (T 0578/14).
In J 005/94 it was stated that 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. 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 case a person is represented by a professional representative the EPO very early made it clear that in such a case the due care has to be proven for both, the applicant and the professional representative (J0008/80)
However, in J 005/13 the board of appeal decided that the scope of duties of a representative who retains only a "secondary responsibility" to inform and advise his client with respect to the due date for renewal fees cannot be the same as it would be if he were responsible for the payment itself. In this case the European representative was not in charge of paying the annuities as his main responsibility. He was however vigilant to monitor if the annuities had been paid and sent reminders to the applicant. Sending three reminders, which were not answered, was found to be a sufficient exercise of due care.
The requirements of due care relate not only to the selection but also to the instruction and supervision of an assistant, specifically to those tasks relating to patent matters (J0005/80). If the professional representative has entrusted to an assistant the performance of routine tasks such as typing dictated documents, posting letters and parcels and noting time limits the same strict standards of care are not expected of the assistant as are expected of the applicant or his representative. A culpable error on the part of the assistant made in the course of carrying out routine tasks is not to be hold against the representative if the latter has himself shown that he exercised the necessary due care in dealing with his assistant. In this respect, it is an obligation for the professional representative to select for the work a suitable person, properly instructed in the tasks to be performed, and to exercise reasonable supervision over the work (J0005/80).
The same standard of selection, instructing and supervision applies to a substitute of an assistant, even when the substitute replaces an assistant only temporarily, for example in case of leave or illness. It is a commonly experienced fact of life that assistants do have to be temporarily replaced from time to time. Thus the professional representative cannot validly argue he was not prepared for such a situation. Where a qualified assistant is absent, therefore, the applicant or representative must either be able to call on a similarly qualified substitute or else must himself take over the work assigned to the assistant. The substitute must in fact have been given comprehensive instruction and must be supervised, particularly in the initial stage. It is not enough that, when entrusted with the work, the assistant appeared reliable in the light of his training and previous experience, for this is a normal condition for engaging an employee (J 0016/82),
If a letter to the EPO was correctly addressed and correctly stamped and was posted in what should have been sufficient time to reach the EPO on or before the time limit that should have been met, the delay in delivery must be attributed to the postal authorities concerned (J 0081/83). In such a situation it is considered that all due care required by the circumstances had been taken.
Critical is here the term "should have been sufficient time". From time to time the EPO publishes decisions of the president of the EPO in which he states which delivery times have to be observed by an applicant. In the decision from 11 March 2015 for example a letter must have been sent at least five days before the time limit to profit from Rule 133 EPC, if it arrives late. It should be expected that these accepted delay times should have also been observed by a person exercising due car when sending mail to the EPO.
In case the professional representative delegates non routine matters to his assistant which, by virtue of his professional qualification, normally falls to him, as for example the interpretation of laws and treaties, this is an indication of lack of due care under the given circumstances(J 0005/80).
It is a general acknowledged principle that everyone is presumed to know the law, especially if advised by qualified persons. The failure to interpret the law correctly demonstrates lack of due care and hinders a re-establishemnt of rights (J 0031/89)
In case of doubt or legal uncertainty, the applicant must take all those steps which can be reasonably expected from a diligent person (J 0017/03). When having encountered difficulties in contacting the current representative, the patent applicant should at least seek advice with respect to the payment of a renewal fee either from his former representative, or from another representative or the European Patent Office before expiry of the deadline.
When presenting the circumstances under which the time limit was failed, the apllicant has to present a conclusive and substantiated case that persuades the Board of Appeal that the applicant took all due care required by the circumstances. It is not sufficient that there was a mere possibility that for example the assistant of a professional representative had made an error. If there was a time limit monitoring system in place, the applicant must explain why the time monitoring system failed. As the applicant in this case failed to explain why the time limit monitoring system did not warn him about the time limit the board assumed to the disadvantage of the professional representative that the time limit was not used at all. The board considered the non use of the time monitoring system in this case as the real cause for the missed deadline. (T 0013/82). However, not using a time monitoring system is an indication of lack of due care and excludes the applicant from being re-established in the missed time limit.
Pursuant to Article 122(2) and Rule 136(2), first sentence, EPC, the request for re-establishment of rights must state the grounds on which it is based and must set out the facts on which it relies. As a condition for the admissibility of the request, a statement of grounds which is sufficiently substantiated must be submitted within the time limit for filing the request for re-establishment of rights (J 0019/05). If this requirement has been fulfilled, it is then admissible to supplement the facts on condition that the supplementary submissions do not extend beyond the framework of the previous submissions (J 5/94; J 0019/05; T 585/08).
A request for re-establishment of rights complies with the requirement of Rule 136(2), first sentence, EPC if a conclusive case is made, setting out and substantiating the grounds and facts on which the request relies. Thereby it is ascertained that the factual basis for the requested decision is not altered after the expiry of the time limit for the request (cf. J 0019/05; T 585/08).
J 0015/10 listed that the request for re-establishment of rights must
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(c) EPO express 2020