J 0013/16 - Restoration of priority by dO

EPO Headnote

1. If, in the international phase, a receiving Office (RO) has restored a right of priority under the "unintentional" criterion of Rule 26bis.3(a)(ii) PCT, the restoration is not effective in proceedings before the EPO acting as designated Office, since the EPO applies the "due care" criterion (Rule 49ter.1(b) PCT). In such cases [] the applicant must file a (new) request for restoration of a right of priority under Rule 49ter.2 PCT with the EPO acting as designated Office [within the period specified in Rule 49ter.2(b)(i) PCT] [i.e. within one month from the 31-month time limit or from the date of early entry]. For the purposes of Rule 49ter.2 PCT, the request filed with the RO under Rule 26bis.3(b) PCT cannot be taken into account in the proceedings before the EPO acting as designated Office.

2. In proceedings before the EPO, re-establishment of rights under Article 122 EPC is ruled out in respect of the period under Rule 49ter.2(b)(i) PCT for filing a request for restoration of a right of priority.

Key points

• Rule 49ter.2 PCT allows for the filing of a request fo restoration of priority with the dO within 1 month from the 31-month time limit (for EPO) or from the date of early entry; independently of whether restoration of priority was requested with the rO during the international phase. The Board considers this to be analogous to RE (for the priority periond, Rule 136(1), second sentence, EPC , and because Rule 136 EPC rules out RE for the period for RE, the same applies to Rule 49ter.2 (following G 5/93, 1.1.3). 

EPO J 0013/16 (J 13/16) - link

3. Restoration of the right of priority claimed in the present application

3.1 An international application for which the EPO acts as designated Office and which has been accorded an international filing date is equivalent to a regular European application and is referred to as "Euro-PCT application" (Article 11(3) PCT and Article 153(2) EPC). However, this principle of equal treatment between a regular European application and a Euro-PCT application has to be applied in the light of Article 150(2) EPC. This provision stipulates that international applications filed under the PCT may be subject to proceedings before the EPO (first sentence) and that in such proceedings, the provisions of the PCT and its Regulations are to be applied, supplemented by the provisions of the EPC (second sentence). However, in the case of conflict, the provisions of the PCT and its Regulations prevail over the provisions of the EPC (Article 150(2), third sentence EPC).

3.2 Where the international application was not filed within the period of 12 months from the date of filing of the priority application, Rule 26bis.3 PCT stipulates that the applicant may file a request for restoration of the right of priority up to two months after expiry of the priority period.

In the international phase, restoration of the right of priority can be granted under both the "due care" and "unintentional" criteria (Rule 26bis.3(a)). This means that the receiving Office (RO) ascertains whether the failure to file the international application within the priority period

- occurred in spite of due care required by the circumstances having been taken ("due care" criterion), or

- was unintentional ("unintentional" criterion).

Rule 49ter.1 PCT foresees in its paragraph (a) that, where the RO has restored a right of priority under the "due care" criterion, that restoration must, subject to its paragraph (c), be effective in each designated State. However, in accordance with Rule 49ter.1(b) PCT), a decision by a RO to restore a right of priority based on the "unintentional" criterion is effective only in those designated States the applicable laws of which provide for restoration of the right of priority based on that criterion or on a criterion which, from the viewpoint of applicants, is more favorable than that criterion.

For the procedure before the EPO as designated Office, this means that, if the right of priority was restored by the RO under the "due care" criterion, the EPO will, in principle, recognise the decision of the RO.

If, as in the present case, the RO has restored the right of priority under the "unintentional" criterion, the restoration is not effective in proceedings before EPO acting as designated Office, since the EPO applies the "due care" criterion (which corresponds to the criterion referred to in Article 122(1) EPC).

In this case, however, Rule 49ter.2 PCT applies. The remedy of Rule 49ter.2 PCT has not been implemented in the EPC, and is directly applicable to Euro-PCT applications in proceedings before the EPO acting as designated Office. Accordingly, an applicant still has the possibility to have his right of priority restored in proceedings before the EPO. For that purpose, the applicant must file a (new) request for restoration of the right of priority with the EPO. Such request is only admissible under Rule 49ter.2(b) and (d) PCT if it was filed within one month from the applicable time limit under Article 22 PCT for entering the regional phase, it contains the reasons for the failure to file the international application within the priority period, and the further requisite fee for restoration is paid.

3.3 As a consequence, in the present case the restoration of the right of priority decided by the USTPO, acting as RO, is not effective before the EPO. Contrary to the appellant's view, his request filed with the RO under Rule 26bis.3(b) PCT cannot be taken into account in the present proceedings for the purposes of Rule 49ter.2 PCT. As set out above, he should have filed a new request for restoration of the right of priority under Rule 49ter.2 PCT. However, it is undisputed that the applicant failed to file such request within the prescribed period, which expired on 13 January 2014. Therefore, the Board concludes that point A of the contested decision was justified.

4. Re-establishment of rights under Article 122 EPC

4.1 According to Article 122(1) EPC, an applicant can have his rights re-established upon request if, in spite of all due care required by the circumstances having been taken, he was unable to observe a time limit vis-à-vis the EPO if the non-observance of this time limit has the direct consequence of causing the refusal of the European patent application or of a request, or the deeming of the application to have been withdrawn, or the revocation of the European patent, or the loss of any other right or means of redress.

4.2 It follows clearly from the foregoing that the legislator has provided only for re-establishment of rights under Article 122 EPC to remedy the non-observance of a time limit vis-à-vis the EPO. Article 122 EPC is an exceptional means of remedy, not a usual means of correcting any deficiency in a request. Therefore, the Board cannot share the appellant's view that the request which he filed with the RO in accordance with Rule 26bis.3(b) PCT should be treated by the EPO as a defective request that could be corrected under Article 122 EPC. Contrary to the appellant's view, the request which he filed with the RO cannot be taken into account in the present proceedings before the EPO, either for the purposes of Rule 49ter.2 PCT or for the purposes of Article 122 and Rule 136 EPC. Thus, the appellant's argument that he filed a request for "recognition of priority" within the two-month period under Rule 136 EPC but only in an incorrect manner and that that error was one which should be remediable under Article 122 EPC must fail.

4.3 However, in the present case, the appellant failed to observe the period under Rule 49ter.2(b)(i) PCT for filing a request for restoration of the right of priority with the EPO. Therefore, the question arises whether he can have his right of priority re-established following the failure to observe this time limit vis-à-vis the EPO.

4.4 Article 48(2)(a) PCT requires a Contracting State to excuse, for reasons admitted under its national law, any delay in meeting any time limit. Rule 82bis.2 PCT specifies that the provisions under national law referred to in Article 48(2) PCT include provisions which provide for reinstatement of rights, restoration, restitutio in integrum or further processing in spite of non-compliance with a time limit, and any other provision providing for the extension of time limits or for excusing delays in meeting time limits.

It follows from these provisions that an applicant of a Euro-PCT application who has not carried out a certain procedural act within the time limit prescribed in the PCT can take advantage of the relevant provisions of the EPC concerning re-establishment of rights in all cases where the direct European applicant may invoke them if he fails to observe the relevant time limit. For this reason, the provisions of Article 122 EPC, which relate to the possibility of re-establishment of rights if a time limit has not been respected, should apply to Euro-PCT applicants to the same extent as they apply to "direct" European applicants (see decisions G 3/91, OJ EPO 1993, 8, point 1.4 of the Reasons, and G 5/93, OJ EPO 1994, 447, point 1.1.3 of the Reasons).

4.5 Article 122 and Rule 136 EPC provide for the possibility of re-establishment of rights in respect of the priority period under Article 87(1) EPC. A request for re-establishment in respect of the priority period must be filed within two months of expiry of that period (Rule 136(1), second sentence, EPC). If, however, an applicant of a direct European application fails to observe this two-month period for filing a request for re-establishment in respect of the priority period, re-establishment in respect of the period for requesting re-establishment is expressly ruled out (Article 122(4) and Rule 136(3) EPC).

4.6 Re-establishment of rights in respect of the priority period under Article 122 and Rule 136 EPC for a European application and restoration of the right of priority under Rule 49ter.2 PCT for an international application are counterparts of one another, because these provisions were introduced in the EPC and the PCT, respectively, to reflect the provisions of Article 13(2) PLT and Rule 14(4) and (5) of the Regulations of the PLT. Consequently, the period for filing a request for re-establishment under Article 122 EPC is directly comparable to the period for filing a request for restoration of the right of priority under Rule 49ter.2 PCT, even if they differ in terms of duration. Therefore, because re-establishment of rights is excluded under Article 122(4) and Rule 136(3) EPC for direct European applicants in the event of failure to observe the period for filing a request for re-establishment in respect of the priority period under Rule 136(1), second sentence, EPC, the provision of Article 48(2)(a) PCT does not oblige the EPO to give to the Euro-PCT applicant the possibility to be re-established in respect of the period for filing a request for restoration of the right of priority under Rule 49ter.2 PCT.

4.7 Even if there is no such obligation under Article 48(2)(a) PCT in the present case, the EPO could still offer the possibility of re-establishment in respect of the time limit for filing a request for restoration under Rule 49ter.2 PCT for other reasons, in accordance with Article 48(2)(b) PCT. Such a reason could be that neither Article 122(4) EPC nor Rule 136(3) EPC expressly mentions the period for requesting restoration of the right of priority (see also decisions G 3/91 and G 5/93). However, the exclusion from re-establishment of rights of the period for requesting re-establishment under Article 122(4) and Rule 136(3) EPC extends to certain time limits for Euro-PCT applications, even if the latter are not explicitly mentioned there (see also decisions G 3/91, point 1.5 ff. of the Reasons, and G 5/93, point 1.1.5 ff. of the Reasons). According to these decisions of the Enlarged Board of Appeal, it is decisive that the "legal nature" of the relevant time limits under the EPC and the PCT is in essence identical. These decisions also state that certain time limits for Euro-PCT applicants and certain time limits for direct European applicants do not differ in their legal nature, if they have an equivalent function, which make both time limits identical. The Enlarged Board of Appeal also took the view that the different duration of the time limits under the EPC and the PCT do not alter the fact that they are "perfectly comparable" or affect their equivalent legal nature.

4.8 In view of the above principles, the period under Rule 49ter.2(b)(i) PCT for requesting restoration of the right of priority for an international application is essentially identical to the period for requesting re-establishment of rights in respect of the priority period under Article 122 and Rule 136 EPC and that therefore these periods do not differ in their legal nature and are equivalent in function.

The reasons for this are as follows:

(c) Both the PCT and the EPC introduced the possibility for the applicant to request restoration and re-establishment of the priority right, respectively, in the event of failure to comply with the priority period in order to reflect the provisions of Article 13(2) of the Patent Law Treaty (PLT) 2000 (which entered into force on 28 April 2005) and of Rule 14(4) and (5) of the Regulations of the PLT 2000 (which entered into force on 1 January 2006).

(d) Further requirements for requesting re-establishment in respect of the priority period under Article 122 and Rule 136 EPC and further requirements for requesting restoration of the right of priority under Rule 49ter.2 PCT are the same, for example:

(i) requirement to have filed the subsequent application within two months after expiry of the priority period;

(ii) requirement of due care, as applied by the EPO;

(iii) payment of the fee for requesting re-establishment in respect of the priority period under Rule 136 EPC and the fee for requesting restoration of the right of priority under Rule 49ter.2(b)(iii) and (d) PCT, which in both cases is the same amount (Article 2.13 RFees);

(iv) statement of the grounds for the failure to file the subsequent application within the priority period.

4.9 The above systematic interpretation of the relevant provisions under the PCT and the EPC leads to the conclusion that the respective periods for filing a request for restoration and for re-establishment of the right of priority appear to be equivalent in function, and therefore should be treated equally. Indeed, it would be inconsistent with the well-established principle of equal treatment between direct European applicants and Euro-PCT applicants if Euro-PCT applicants could be re-established in respect of the period under Rule 49ter.2(b)(i) PCT for filing a request for restoration of the right of priority when, for direct European applicants, re-establishment is ruled out in respect of the period for requesting re-establishment under Article 122(4) and Rule 136(3) EPC.

4.10 It follows from the above that, in proceedings before the EPO, re-establishment of rights under Article 122 EPC is ruled out in respect of the period under Rule 49ter.2(b)(i) PCT for filing a request for restoration of right of priority.

5. Protection of legitimate expectations

5.1 The appellant submitted that the EPO's refusal to review the loss of his priority right and his request for restoration of it was inequitable and a breach of the rules of natural justice, i.e. a breach of the duty to act fairly insofar as he was concerned.

5.2 It is well established that the principle of protection of legitimate expectations applies in proceedings before the EPO (e.g. decisions of the Enlarged Board of Appeal G 5/88, OJ EPO 1991, 137, point 3.2 of the Reasons; G 2/97, OJ EPO 1999, 123). Users of the European patent system are to be protected in their legitimate expectations and are not to be disadvantaged by conduct of the EPO which was misleading or erroneous (J 3/87, OJ EPO 1989, 3; J 14/94, OJ EPO 1995, 824). This principle also requires the EPO to warn the applicant of any loss of rights if such warning can be expected in good faith, provided that the deficiency can be easily identified by the EPO. It further requires that communications addressed to applicants must be clear and unambiguous, i.e. drafted in such a way as to rule out misunderstandings on the part of a reasonable addressee.

According to decision G 2/97 of the Enlarged Board of Appeal, it is also incumbent on the users of the European patent system who are parties to proceedings before the EPO to act in good faith. They are responsible for taking all necessary steps to avoid a loss of rights. There is also no justification for the suggestion that the principle of good faith imposes on the EPO an obligation to warn a party of deficiencies falling under the party's own responsibility.

5.3 In the present case, the EPO in its capacity as designated Office had to apply the relevant PCT and EPC provisions as set out above. In the Board's view, there was nothing in the conduct of the EPO which could reasonably have given rise to a belief on the appellant's part that he could be given more time for filing his request for restoration of the right of priority under Rule 49ter.2 PCT or that his request filed with the RO under Rule 26bis.3(b) PCT could be taken into account in the present proceedings before the EPO and be remediable under Article 122 EPC. Nor was there any indication that the EPO would determine whether the appellant had taken all due care but was unable to observe the relevant time limit for claiming priority within the period of twelve months from the date of filing of the priority application. The Board also fails to see that any of the several communications from the Receiving Section of the EPO (see points III, V, VII, IX and XI above) contained information which could have misled the appellant into failing to act and thereby losing his right of priority. Indeed, in the light of the above, the information which the appellant received from the EPO was not erroneous; it was perfectly correct.

Furthermore, the appellant's responsibility for fulfilling the conditions for a request for restoration of the right of priority under Rule 49ter.2 PCT cannot be transferred to the EPO acting as designated Office. It follows from the above that the appellant, who had received all the necessary information for a request for restoration of the right of priority by the communication from the Receiving Section (EPO Form 1201) dated 27 September 2013 (see point III above), should have been aware that he had to file a further request for restoration of the right of priority no later than 13 January 2014, i.e. one month after the application's entry into the regional phase. It was the appellant's own responsibility to take all the necessary steps to avoid a loss of rights regarding his claimed priority. It is established jurisprudence of the Boards of Appeal that the applicant as a party to proceedings before the EPO, and, even more so, his professional representative are expected to know the relevant provisions of the PCT and the EPC, even if these provisions are intricate.

Finally, there is nothing on file which implies that the EPO should have warned the appellant of an impending loss of his right of priority following non-compliance with the requirements of Rule 49ter.2 PCT.

5.4 Accordingly, the Board sees nothing in the conduct of the EPO which could be considered "as a breach of duty to act fairly insofar as the appellant was concerned", as submitted by the appellant. Hence, there can be no legitimate expectation on the part of the appellant that his request for restoration of his right of priority, which he filed under Rule 26bis.3(b) PCT in the international phase, would be taken into account in the proceedings before the EPO or that his right of priority would be restored by the EPO.

6. Conclusion on the allowability of the appeal

In view of the above, the appellant's request is unallowable and, consequently, his appeal must be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.