Key points
- The Legal Board expressly abandons the established line of case law, according to which the date of removal of the cause of non-compliance under Rule 136 EPC is determined with reference to “the date on which the person responsible for the application is made aware or ought to have become aware of the fact that a time limit has not been observed.”
- “In the appealed decision the Receiving Section followed the approach developed in a substantial body of case law of the Boards of Appeal, according to which, for determining admissibility of a request for re-establishment, the relevant date is that on which the responsible person ought to have noticed the error, had all due care been taken”
- “The line of jurisprudence requiring that "removal" under Rule 136 EPC is assessed on account of the due care applied by the responsible person, essentially relies on the consideration that due care is a permanent obligation, which must be exercised not only at the moment when the time limit has not been observed, but also subsequently”
- “The Board doubts that this approach correctly reflects the requirements for re-establishment of rights laid down in Article 122 and Rule 136 EPC. Whereas due care may be regarded as a permanent obligation of a party to the proceedings in general, no legal basis is apparent for applying the due-care requirement in assessing the admissibility of a request for re-establishment.”
- “the established approach is not based on the wording of the EPC. The admissibility criteria in accordance with Rule 136 EPC (see point 1. above) are of a purely formal nature and are clearly distinct from the substantive requirements established by Article 122(1) EPC for allowability”
- “Second, as a consequence of this approach, due care is assessed in the context of the circumstances related to the removal of the cause of non-compliance [], rather than of those concerning the missed time limit ” [Note, this sentence appears to refer to the admissibility of the RE request]
- “However, Article 122 EPC refers to due care only in respect of missing a time limit. The removal of the cause of non-compliance is distinct from missing a time limit vis-à-vis the EPO. ”
- “Based on this analysis the Legal Board considers that the established approach does not lead to a correct determination of the date of removal. Instead the Legal Board deems that, for the purposes of establishing the admissibility of a request for re-establishment of rights under Rule 136 EPC, the legal due-care criterion must not be relied on when determining "removal".
- “In the Board's view, removal of the cause of non-compliance with the period is a purely factual criterion. Removal occurs on the date on which the person responsible for the application/patent (normally the authorised representative) becomes aware of an error. If a loss-of-rights communication is served there is (i) a presumption that removal occurs on the date of receipt of such communication and (ii) an obligation for the recipient not to ignore it, and to take action. This presumption is, however, rebuttable, in the sense that it is valid unless, due to exceptional circumstances, the cause for non-compliance persisted. Taking into account this exception and although it substitutes real facts, such a presumption is not unfair to the parties”
- As a comment, the presumption suggests that the burden of proof is initially on the EPO to show that the RE request is late-filed, not on the requester to show that it is timely. Only if the presumption applies, the burden of proof is shifted to the requester. The obligation that the Board appears to be referring to is not entirely clear to me, perhaps it is simply the two-month period of Rule 136 but then logically there is no obligation if the exception applies that " the cause for non-compliance persisted".
1. The established approach of applying the due-care criterion to the question of removal of the cause of non-compliance under Rule 136 EPC leads to an additional admissibility requirement, by expanding the scope of the substantive due-care criterion, which has no basis in the EPC.
2. Removal of the cause of non-compliance is a question of fact which occurs on the date on which the person responsible for the application or patent actually became aware of an error (actual knowledge), rather than when this person ought to have noticed the error (presumption of knowledge).
3. Pursuant to Article 122(1) EPC, if failure to observe a time limit is due to an error of fact, the due-care criterion is to be assessed only in the context of the merits of a request for re-establishment of rights.
4. The same applies if failure to observe a time limit is based on an error of law. Thus, the due-care criterion is to be assessed only in the context of the merits of the request and removal of the cause of non-compliance occurs when the responsible person actually became aware of the error of law.
J 1/20 - J 0001/20
https://www.epo.org/law-practice/case-law-appeals/recent/j200001eu1.html
Thank you very much for the post. It is a very interesting case. From my point of view, any type of law is established on the basis of a balance between attaining a proper protection and avoiding setting undue hurdles to target people of the law. In the present case, there are two hurdles: admissibility and allowability. The hurdle for admissibility should be lower than that for allowability. The presumption condition would against the factual nature of "removal" and set an undue hurdle to the applicant, as there is almost no room to rebut. Similarly, the obligation condition should be rather considered in the context of second hurdle, i.e. allowability, and setting this hurdle for admissibility would make less sense, which would be unfair for the parties. Thus, in my opinion, the board might not mean presumption and obligation are subsequential conditions to be satisfied, but two parallel considerations for lowering the first hurdle.
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