Chapter 1. Application area
Section 1.1. terms
So that #8217; a restitutio in integrum (A122 EPC) is applicable to an unobserved deadline, several conditions must be respected:
- a time limit was not observed before the EPO (A122 (1) EPC);
- l & #8217; failure to observe this deadline resulted in direct consequence (A122 (1) EPC):
- the rejection of the European patent application or of a request,
- the fact that the application is deemed to be withdrawn,
- the revocation of the European patent,
- the loss of any other right or of a remedy.
- a request written must be presented (R136 (1) EPC) and respect the form conditions (signature, margin, etc.) of the R50 EPC, because it & #8217; is a part produced & #8220; later & #8221; (ie on the filing date);
- the request must be motivated and present the facts to the support of the motion (R136 (2) EPC): it is necessary to prove that the plaintiff / proprietor has exercised all the vigilance required by the circumstances (A122 (1) EPC);
- the person making the request must be:
- the applicant (A122 (1) EPC) registered in the REB,
- the holder (A122 (1) EPC) registered in the REB,
- a opposing who lodged an appeal, only as regards the time limit for filing the statement of grounds of appeal (G1 / 86 and Directives E-VIII 3.1.2). An opponent cannot benefit from this restitution if he does not observe the time limit for appealing (#8217;T210 / 89);
- in particular, this person can not be a national office concerning, for example, a transmission delay (J3 / 80), because this delay did not belong to the requester to observe.
- the request must be made:
- in the 2 months following the end of the impediment (R136 (1) EPC)
- and without exceeding 1 year (time limit for foreclosure) from the deadline not met (R136 (1) EPC).
- There are two exceptions for which the request for re must be presented in 2 months (shortened limitation period) as from the missed deadline (R136 (1) EPC):
- a tax must be paid within this period (R136 (1) EPC): 640 € (A2 (1) .13 RRT);
- the Incomplete acts must be within these deadlines (R136 (2) EPC).
Section 1.2. Focus on the unobserved delay
TheA122 EPC only applies if a delay has not been observed vis-à-vis the EPO #8217; If a date is missed, it is not possible to request a re.
For example, no re can not be requested for:
- the date fixed for oral proceedings (Directives E-VIII 3.1.1);
- the end of the period during which the application is pending (J21 / 96);
- failure to pay #8217; an annual fee before a national office.
In the event of non-observance of two time limits which expire independently of one of the other, two re must be presented with two taxes, even if #8217; it is possible to present them in the same letter and this, whether these non-observations are based on the same causes / reasons or not (J26 / 95).
Section 1.3. Focus on & #8220; vigilance required by the circumstances & #8221;
The objective is to allow that a mistake occurring in isolation in a system operating normally satisfactorily does not lead to a loss of rights. (#8217;T179 / 87).
Vigilance & #8217; means the vigilance which the holder / applicant / agent (normally competent) would demonstrate in the given circumstances (T30 / 90).
1.3.2. Persons to whom the duty of vigilance applies
1.3.3. Proof of vigilance
The claimant / holder (possibly the opponent) or his representative (if applicable, employee, lawyer, professional representative) must prove that he was sufficiently vigilant and that the failure to observe the deadline is due to extraordinary circumstances.
The proof of this vigilance (eg declaration of loss) can be brought out of time (T324 / 90) even if the reasoned report must be submitted in due time.
This vigilance is appreciated on the day of the non-observance of the time limit (#8217;J1 / 07).
1.3.4. Examples of insufficient vigilance
As an illustration, these & #8220; apologies & #8221; were not considered sufficient:
- a client order had been spam / quarantine and had not been seen (T1289 / 10) ;
- l & #8217; EPO or the PCT administrations had failed to transmit certain information to the representative for the continuation of the procedure (J23 / 87), because the latter should have noticed it;
- l & #8217; ignorance or misinterpretation of & # 1 TP38217; a provision of the EPC even if the person is not an agent (J2 / 02 or J31 / 92) ;
- the implementation of a new IT system (#8217;T489 / 04) ;
- an agent who practiced alone had not taken measures to ensure, in the event of absence or illness, that other persons ensure that deadlines are met (J41 / 92) ;
- the fact that & #8217; a reminder n & #8217; was not issued by the administrative service demonstrates that the deadline monitoring system is not working properly (T686 / 97) ;
- the fact that certain tasks have been entrusted to auxiliaries and that the agent has not been vigilant in his dealings with his auxiliary (choice of & #8217; a person qualified for this function, to inform him of the tasks to be carried out, to monitor their execution to the extent reasonable) (J5 / 80, ditto for a temporary worker replacing the auxiliary, J16 / 82). No task of interpreting the law can be entrusted to the auxiliary.
- the delay monitoring system had a computer programming error (T473 / 07) ;
- an agent did not verify that all the attachments were present before signing on EPOLINE (T1101 / 14): the fact of signing a wrong document is therefore incompatible with the vigilance required unless particular circumstances are invoked (T1095 / 06) ;
- a foreign representative believed that the order had been given to the European representative and entered the deadline as processed in the deadline monitoring system (J5 / 18, ie vigilance does not presume that the person has a good knowledge of the EPC).
1.3.5. Examples of sufficient vigilance
As an illustration, these & #8220; apologies & #8221; were deemed sufficient:
- an isolated mistake in the application of #8217; a deadline monitoring system which, moreover, works correctly (J2 / 86)
- an isolated misconception in the processing of outgoing mail which had been delegated to an assistant while this process works in ordinary (#8217;T1171 / 13);
- financial difficulties (J22 / 88) if they are not attributable to the person making the request and if steps have been taken to obtain financial assistance;
- overwork of the applicant (J6 / 14): this applicant was a natural person, for which the level of requirements is lower than for a professional representative or the patent department of a large company (#8217;J5 / 94);
- a move during which a notification has been misclassified (T14 / 89);
- documents were destroyed in a fire;
- documents were received very late by the EPO when the applicant had chosen a shipping route which would normally have allowed mail to arrive on time (T777 / 98);
- an action / payment was only carried out when the EPO sent an informal notification (e.g. delay in payment of the annual fee) (J23 / 87);
- an error during a complex transmission of companies (#8217;T469 / 93).
Section 1.4. Focus on the end of the impediment
1.4.1. Analysis according to the case of #8217; species
Often, the hindrance stems from the fact that a deadline has been poorly noted, forgotten, etc.
In practice, it is quite difficult to determine and depends on the facts of the case.
1.4.2. Date when you realize the problem
The end of the impediment is therefore the moment when the person handling the procedure vis-à-vis l & #8217; EPO s & #8217; realizes / is made aware of it:
- the date of the briefing of the agent's assistant is not relevant (T191 / 82);
- if the representative has changed, without the EPO being informed, service on the former representative will cause the period of 2 months (T32 / 04).
Thus, if a party instructs its representative not to transmit the notifications from the EPO to it, it may not rely on this non-knowledge to request a re (T840 / 94).
1.4.3. Case of notification of loss of rights
It is considered that the end of the impediment occurs later upon receipt by the responsible person of the notification of loss of rights or the rejection decision.
The 10-day rule does not apply since it is a question of fact and not of legal fiction (D7 / 82).
Section 1.5. Focus on the foreclosure period
The foreclosure period of 12 months (or the shortened foreclosure 2 months) is a compound delay (ie the first unobserved delay must be R134 (1) EPC before applying the foreclosure period).
It may happen that the request for re formed within the time limit for foreclosure without all the reasons being submitted within that period (but within the 2 months from the end of the impediment) (J6 / 90).
What matters is that the record shows clearly enough at the end of the foreclosure period that the applicant is doing everything to preserve his rights (J6 / 90).
Thus, the following situation is admissible:
Section 1.6. Focus on the loss of rights
In the event of loss of rights, the EPO notifies the party according to the R112 EPC.
It is often useful to request a decision, at the same time as making a request for restitution paying the corresponding fee. If the EPO decides that the loss of rights was not justified, the restitutio fee will be refunded, since it has been paid without cause.
Section 1.7. exclusions
Are excluded from re :
- the deadline for 2 months to present the re and the deadline for 12 months of foreclosure (A122 (4) EPC and R136 (3) EPC);
- deadlines which benefit from the continuation of the procedure (R136 (3) EPCnevertheless, the time limit for further processing may be re).
Chapter 2. Restoration
Section 2.1. Competent body
The body competent to verify the admissibility of the request is the body which was competent at the time of non-observance of the time limit. (#8217;R136 (4) EPC).
In case of refusal of the request, it is necessary to justify the refusal (Directives E-VIII 3.3). S & #8217; the request is granted, no reasons are required (except in opposition proceedings, because the other parties are parties to the proceedings Directives E-VIII 3.3 T552 / 02 and T1561 / 05).
This decision is subject to appeal (unless it is precisely delivered by a Board of Appeal)
Section 2.2. Effects
When the request is granted, the legal consequences of failure to observe the deadline are deemed not to have occurred (#8217;A122 (3) EPC).
Nevertheless, if a third party has started to exploit (or made effective and serious preparations to exploit the invention) in good faith l & #8217; invention between the loss of rights and the publication of the decision to restore rights, it will be possible for him to continue his exploitation free of charge himself or for his needs (A122 (5) EPC).
To benefit from this free license, it is still necessary that the patent application has been published (J5 / 79).
The decision to reinstate the rights is published in the REB (R143 (1) u) EPC).
Chapter 3. Restitutio by a Contracting State
A State may decide to grant a re (A122 (6) EPC) as regards the time limits laid down in the EPC and to observe it with the authorities of that State.
For example :
- the deadline for filing & #8217; a translation of the granted patent (A65 EPC);
- the delay for transformation (A135 (2) EPC and R155 (1) EPC);
- the time limit for the payment of the annuities of the granted patent (A141 EPC).