J 0014/21 - Restoration of priority and authentic interpretation

Key points

• An applicant files a request for restoration of priority with the EPO as dO, such a request having been granted by the IB as rO based on the unintentional requirement. 
• The entry into the regional phase was carried out with further processing.
• This includes a further processing fee for the declaration under Rule 6(6) EPC.
• The Guidelines state that: "where the application is deemed withdrawn under Rule 160(1) for failure to comply with a requirement under Rule 159(1), the request for restoration of priority may still be filed together with a timely request for further processing in respect of the 31-month time limit under Rule 159(1)"
• However, the relevant provision of the PCT, Rule 49ter states that the request is to be "filed with the designated Office within a time limit of one month from the applicable time limit under Article 22 [PCT]", which is one month from the expiry of the 31-month time limit of Rule 159. 
• The Legal Board: "There is nothing in the law to indicate that the failure to observe the time limits under R. 159(1)(c) and (f) EPC, and the subsequent remedying of this failure with the grant of further processing, could have an impact on the failure to meet the time limit under R. 49ter.2(b)(i) PCT."
• The Board then notes that when the provision was adopted, the PCT Assembly adopted "Understandings" stating that "where ... the designated Office reinstates the rights of the applicant with respect to that international application in accordance with Rule 49.6 or 76.5(ii), respectively, such reinstatement will extend to ... the time limit under Rule 49ter.2(b)(i)." 
• Rule 49.6 PCT is implemented by the EPO as re-establishment (the exceptional case where RE is possible even though FP is also possible), but that appears to be no further discussed in the decision.
• The Board concludes that: " further processing (or the granting of further processing) "turns back the clock" so as to re-open the possibility for a request for restoration for which the time limit had already been missed." 
  
  
• PCT travaux préparatoires
• "There is no jurisprudence of the boards of appeal explicitly addressing the legal quality of "understandings" of the PCT Assembly, particularly not for a case like that in hand in which the relevant provision of the PCT Regulations is silent on the (intended) legal consequences of a particular factual situation, with only the "understandings" addressing that situation. " 
• The Legal Board then addresses the more general point: " Taking into account any such agreement or subsequent practice of the parties to a treaty, whereby the parties can be seen as the treaty's legislator, is commonly referred to as the method of "authentic interpretation" by the legislator or "authentic means of interpretation", although these, or similar, terms are used for a wide variety of situations and cases, and not always in a consistent fashion. The parties as the "masters" of "their" treaty are, in principle, not prevented from making (subsequent) understandings or agreements relating to the treaty. Any such agreements are, after all, an expression of the consensus of the parties, i.e. the legislator [follows a very useful reference to extensive legal literature]." 
• The Legal Board also refers to Art. 31(1) VCLT and Art. 31(2)(a) VCLT.
•  "The board understands Art. 31 VCLT, in particular its paragraphs (2)(a) and (3)(a), to be based on the general idea that an agreement, or a subsequent agreement, between the parties of the treaty may play a role when assessing the "context" within the meaning of Art. 31(1) VCLT. Any such agreement is then taken as formalised evidence of the intention of (all) the parties, i.e. of the legislator, that a specific provision should be interpreted or applied in a certain way. Accepting that agreement as being a part of the "context" within the meaning of Art. 31(1) VCLT has to be seen in contrast to the supplementary means of interpretation, including the preparatory work of the treaty and the circumstances of its conclusion, under Art. 32 VCLT, to which recourse may be had only for confirming the result of the interpretation under Art. 31(1) VCLT, or for the purpose of resolving an ambiguity or obscurity or of avoiding a manifestly absurd result. While the intention of the legislator might be deduced from the preparatory work of the treaty, often referred to in the EPC context as travaux préparatoires, the legislator's intention, which is formalised in an agreement between the parties, is accorded more weight for the interpretation of the treaty provisions. Whether it was indeed the legislator's intent that the agreement formed part of the "context", or was to be taken into account together with it, will depend on the circumstances of each case." 
• As a comment, the issue of whether, in the context of the EPC, the Administrative Council is competent to lay down authentic interpretations of the EPC Articles (say in Rule 28(2) EPC) was also at play in G3/19  "Pepper". However, in that case, the Enlarged Board, perhaps wisely, did not comment on whether Rule 28(2) EPC was binding on the Enlarged Board.
• Turning to the publicity requirement:  "there may be cases where an understanding of the PCT Assembly will have to be disregarded when interpreting the newly introduced rule, in spite of the "understanding" expressing the legislator's intention, failing its publication in a manner that allows users to readily take note of it without having to have in-depth insight into the PCT legislative procedure. This will be the case, in particular, if the "understanding" leads to the application of the law which is to the detriment of the party relying on a newly introduced rule." 
  
  
• The request for restoration of priority was hence filed timely but still fails on the all due care criterion: "the attorney [a "Russian-speaking patent attorney based in the United States"] knew that instructions from the appellant for filing the international application were missing. Nevertheless, he went on a weekend trip, which included the final day of the deadline, without access to his emails and without having reached out to the appellant (again) beforehand. Thus, he could not clarify beforehand whether the appellant would give the necessary instructions immediately. Lastly, the attorney did not find a substitute for the duration of his absence who could have ensured that any last-minute instructions from the appellant could have been implemented and that the application could be submitted on the last day of the deadline at the latest." 

EPO J 0014/21

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/j210014eu1.html