T 1482/21 - Review of grant of re-establishment priority

Key points

• If the EPO grants re-establishment in the priority period in the course of the grant proceedings, can the validity of the priority be contested on this ground later in opposition? (assuming that the priority date is relied on by the proprietor)
• Generally, a procedural defect in the grant proceedings is not a ground for opposition, e.g., an unjustified re-establishment for paying a renewal fee with a surcharge. On the other hand, the validity of the priority is examined in opposition. However, certain procedural aspects of claiming priority can not be contested in opposition, as far as as I know, i.e. non-compliance with Rule 52 EPC, e.g. whether the priority claim and priority document were timely filed (I admit I can't find quickly any case law on point). 
• The Technical Board considers itself not competent to review the decision to grant re-establishment in this opposition case.
• The headnote: " Based on its competence for the examination on filing and as to formal requirements up to the time when the Examining Division becomes responsible, the Receiving Section is under Rule 136(4) EPC also competent to decide on a request for re-establishment of rights in respect of the priority period. If the Receiving Section grants such a request, its decision becomes final immediately. Other departments of the EPO such as an Opposition Division or a technical Board of Appeal which decide on questions of priority in other, subsequent proceedings are prevented from reviewing and overturning the Receiving Section's decision granting the request for re-establishment of rights "
• The Board: " the effect of granting a request for re-establishment of rights is specifically regulated in Article 122(3) EPC. According to this provision, if a request for re-establishment of rights is granted, the legal consequences of the failure to observe the time limit concerned are deemed not to have ensued. The wording of Article 122(3) EPC does not limit the effect of granting a request for re-establishment of rights to the proceedings in which the decision to grant that request was taken." 
• " Secondly, while an examination of the same patentability requirements under Article 114(1) EPC may be undertaken by different departments in different proceedings (e.g. first in examination and then in opposition proceedings), a decision on re-establishment of rights presupposes that there is a corresponding request to be decided upon. In the case in hand, such a request was neither present in the opposition nor in the opposition appeal proceedings. Rather, it was only made in the proceedings before the Receiving Section, and decided upon only in these proceedings. As the Legal Board of Appeal is under Article 21(2) EPC exclusively competent to review decisions of the Receiving Section (G 1/11, Reasons 9, second paragraph), neither the Opposition Division nor the present technical Board of Appeal have any power to review the Receiving Section's decision on re-establishment of rights. They may also not do so indirectly by reassessing the same matter again of their own motion." 
• As a comment, G1/11 held in r.9 that: "  This, together with the Legal Board's (exclusive) competence for appeals against decisions of the Receiving Section or the Legal Division (Article 21(2) EPC), which by definition do not involve technical matters, results in an "efficient" composition of the boards geared towards the issues on which each case turns, and conducive to procedural economy."  This does not deal with any review by other first-instance departments but with whether the Legal Board or a technical board of appeal is competent to decide on an appeal against a decision of the Receiving Section.
• " Thirdly, any subsequent reopening of a favourable decision of the Receiving Section on re-establishment of rights would lead to considerable legal uncertainty for the party whose request was granted. It would also be in conflict with the principle of protection of legitimate expectations, as a party whose request for re-establishment of rights was granted in ex parte proceedings has every reason to believe that it can rely on this decision in its subsequent procedural conduct." 
• As a comment, the principle of protection of legitimate expectations is commonly understood to refer to expectations the party has before a decision is taken, based e.g. on incorrect information from the EPO or the EPO not drawing attention to an error while there is still sufficient time for the party to remedy (J10/84; T14/89). Possibly the Board implies that even if the re-establishment was incorrectly granted and theoretically open to review by the Examining Division, the applicant would thereafter be protected by a legitimate expectation.
• Note that decisions of the Receiving Section under R.56 can be reviewed by the Examining Division (C-III,1.1.1) (the GL speak of "findings"  of the Receiving Section; see however also B-XI 2.1, which speaks of a decision of the Receiving Section).
•  On a high level, the decision of the Examining Division to grant the patent with the priority claim also "becomes final immediately", and whether the OD can review it as to the issue of entitlement to the priority right, is the subject of referral G 1/22 (pending at the time of writing).
• As a general comment, there are two aspects to this decision: how to treat, in post-grant proceedings, the allegation that the priority of the patent is invalid because of an incorrect re-establishment in the priority period; and secondly, the power of the Examining Division to review decisions of the Receiving Section in the grant procedure. 

EPO 

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

https://new.epo.org/en/boards-of-appeal/decisions/t211482eu1.html

2. Priority and inventive step objection against the new auxiliary request starting from D24/D27

2.1 While the appellant did not maintain its novelty objections against the new auxiliary request, the inventive step objection starting from D24/D27 was not withdrawn in relation to that request.

2.2 Within 12 months from filing the earlier applications

2.2.1 Following a request for re-establishment of rights by the former applicant and now respondent, the Receiving Section held in its decision of 14 January 2016 that the application was deemed to have been filed during a period of 12 months from the earlier application. For the following reasons, the Board considers that the Receiving Section was competent to take the decision of 14 January 2016 on the respondent's request for re-establishment of rights.

2.2.2 Under Article 16 EPC in conjunction with Rule 10 EPC the Receiving Section is responsible for the examination on filing and as to formal requirements of a European patent application up to the time when the Examining Division becomes responsible for the examination of the European patent application under Article 94(1) EPC. In the present case search started on 15 February 2016 and the request for examination was only filed on 20 January 2017. Hence, when the Receiving Section took its decision of 14 January 2016, it was still responsible for the examination on filing and as to formal requirements.

2.2.3 Under Article 90(1) EPC, the examination on filing and as to formal requirements includes the examination whether the application satisfies the requirements for the accordance of a date of filing. If these requirements are fulfilled, a date of filing must be accorded. Both steps, i.e. the examination whether the requirements for the accordance of a date of filing are fulfilled and, if that is so, the accordance of a date of filing fall under the Receiving Section's competence.

2.2.4 Under Article 89 EPC, the date of priority counts as the date of filing for certain purposes. Under Rule 52(2) EPC, a declaration of priority shall preferably be made on filing the European patent application, i.e. at a time when the Receiving Section is responsible for the examination on filing and as to formal requirements.

2.2.5 Under Rule 136(4) EPC, the department competent to decide on the omitted act shall decide on the request for re-establishment of rights. In the case in hand, the omitted act was the filing of the application within the priority period of 12 months pursuant to Article 87(1) EPC. Based on its competence for the examination on filing and as to formal requirements up to the time when the Examining Division becomes responsible, the Receiving Section was under Rule 136(4) EPC also competent to decide on the request for re-establishment of rights in respect of the priority period. Pursuant to Rule 136(1), second sentence, EPC, the priority period can be subject to re-establishment of rights.

2.2.6 If the Receiving Section rejects a request for re-establishment of rights in respect of the priority period, an applicant can lodge an appeal against this decision with the Legal Board of Appeal (Article 21(1) and (2) EPC; see, for example, J 3/13). If the Receiving Section grants a request for re-establishment of rights in respect of the priority period, the applicant is not adversely affected under Article 107 EPC. As there is no other party to the proceedings before the Receiving Section than the applicant, a positive decision on such a request thus becomes final immediately.

2.2.7 As an interim conclusion, the Board therefore considers that the Receiving Section was competent to take the decision of 14 January 2016 on the respondent's request for re-establishment of rights in respect of the priority period, and that this decision is final.

2.2.8 Another question to be answered is whether the Receiving Section's decision of 14 January 2016 granting the request for re-establishment of rights is binding for the Receiving Section only, or whether it also prevents other departments of the EPO such as an Opposition Division or a technical Board of Appeal which decide on questions of priority in other, subsequent proceedings from reviewing and overturning the Receiving Section's decision granting the request for re-establishment of rights. For the following reasons, the latter is the case.

2.2.9 Firstly, the effect of granting a request for re-establishment of rights is specifically regulated in Article 122(3) EPC. According to this provision, if a request for re-establishment of rights is granted, the legal consequences of the failure to observe the time limit concerned are deemed not to have ensued. The wording of Article 122(3) EPC does not limit the effect of granting a request for re-establishment of rights to the proceedings in which the decision to grant that request was taken.

2.2.10 Secondly, while an examination of the same patentability requirements under Article 114(1) EPC may be undertaken by different departments in different proceedings (e.g. first in examination and then in opposition proceedings), a decision on re-establishment of rights presupposes that there is a corresponding request to be decided upon. In the case in hand, such a request was neither present in the opposition nor in the opposition appeal proceedings. Rather, it was only made in the proceedings before the Receiving Section, and decided upon only in these proceedings. As the Legal Board of Appeal is under Article 21(2) EPC exclusively competent to review decisions of the Receiving Section (G 1/11, Reasons 9, second paragraph), neither the Opposition Division nor the present technical Board of Appeal have any power to review the Receiving Section's decision on re-establishment of rights. They may also not do so indirectly by reassessing the same matter again of their own motion.

2.2.11 Thirdly, any subsequent reopening of a favourable decision of the Receiving Section on re-establishment of rights would lead to considerable legal uncertainty for the party whose request was granted. It would also be in conflict with the principle of protection of legitimate expectations, as a party whose request for re-establishment of rights was granted in ex parte proceedings has every reason to believe that it can rely on this decision in its subsequent procedural conduct.

2.2.12 In conclusion, the Opposition Division was correct in saying that it had to acknowledge the Receiving Section's decision to grant the request for re-establishment of rights in respect of the priority period.