For 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);
- the failure to observe this deadline direct consequence (A122 (1) EPC):
- the rejection of the European patent application or an application,
- the fact that the application is deemed to be withdrawn,
- the revocation of the European patent,
- the loss of any other right or remedy.
- a request written must be presented (R136 (1) EPC) and respect the form conditions (signature, margin, etc.) of the R50 EPCbecause it is a document produced "later" (ie on the filing date);
- the request must be motivated and present the facts in support of the application (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 can not benefit from this restitution if he does not observe the time limit forT210 / 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 applicant to observe.
- the request must be made:
- in the 2 months depending on 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).
Focus on the missed deadline
TheA122 EPC applies only if a delay has not been observed vis-à-vis the EPO. 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 an annual fee before a national office.
In the event of failure to comply with two deadlines which expire independently of one another, two re must be presented with two taxes, even if it is possible to present them in the same letter, whether or not these observations are based on the same causes / reasons or not (J26 / 95).
Focus on "vigilance required by the circumstances"
The objective is to allow a misunderstanding occurring in isolation in a system normally operating in a satisfactory manner not to lead to a loss of rights (T179 / 87).
Vigilance refers to the vigilance of the holder / applicant / agent (normally competent) in the given circumstances (T30 / 90).
Persons to whom the duty of care applies
Proof of vigilance
The applicant / holder (possibly the opponent) or his authorized representative (if any, ie employee, lawyer, professional representative) must prove that he / she has been sufficiently vigilant and that non-observance of 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 assessed on the day of non-compliance with the deadline (J1 / 07).
Examples of insufficient vigilance
By way of illustration, these "excuses" were not considered sufficient:
- a client order had been put in spam / quarantine and had not been seen (T1289 / 10);
- the EPO or the PCT Administrations had failed to transmit certain information to the Trustee for the continuation of the proceedings (J23 / 87), because the latter should have noticed it;
- ignorance or misinterpretation of a provision of the EPC even if the person is notJ2 / 02 or J31 / 92);
- setting up a new computer system (T489 / 04);
- an agent who practiced alone had not taken any measures to ensure, in the event of absence or illness, that other persons ensure that deadlines are met (J41 / 92);
- the fact that a reminder was not issued by the administrative department shows that the time monitoring system is not working properly (T686 / 97);
- the fact that certain tasks have been entrusted to auxiliaries and the agent has not been vigilant in his relations with his auxiliary (selection of a qualified person for this function, to inform him of the tasks to be performed, monitor their execution to the extent reasonable) (J5 / 80, ditto for an interim replacing the auxiliary, J16 / 82). No task of interpretation of the law can be entrusted to the auxiliary.
- the delay monitoring system had a computer programming error (T473 / 07);
- an agent had not verified that all attachments were present prior to the signature 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 agent believed that the order had been given to the European representative and indicated the time limit as a treaty in the time monitoring system (J5 / 18, ie vigilance does not presume that the person has a good knowledge of the EPC).
Examples of sufficient vigilance
By way of illustration, these "excuses" were considered sufficient:
- an isolated mistake in the application of a time monitoring system which, moreover, works correctly (J2 / 86)
- an isolated mistake in the processing of outgoing mail that was delegated to an assistant when this process usually works (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 whom the level of requirements is lower than for a professional representative or a patent department of a large company (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 while the applicant had chosen a shipping route which would normally have allowed the courier to arrive on time (T777 / 98);
- an action / payment was only performed when the EPO sent an informal notification (eg late payment of the annual fee) (J23 / 87);
- an error in a complex business transfer (T469 / 93).
Focus on the end of the impediment
Analysis according to the specific case
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.
Date we realize the problem
The end of the impediment is therefore the moment when the person handling the procedure vis-à-vis the EPO realizes / is aware of:
- the date of notification of the proxy's auxiliary is irrelevant (T191 / 82);
- if the agent has changed, without the EPO being made aware, service on the former 2 months (T32 / 04).
Thus, if a party instructs its attorney not to send EPO notifications to it, it can not rely on this lack of knowledge to require re (T840 / 94).
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).
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 sufficiently clearly at the end of the time-limit that the applicant is making every effort to preserve his rights (J6 / 90).
Thus, the following situation is admissible:
Focus on loss of rights
In case of loss of rights, the EPO notifies the party according to the R112 EPC.
It is often useful to ask for a decision, at the same time as to submit a request for restitutio by paying the corresponding fee. If the EPO decides that the loss of rights was not justified, the restitutio fee will be refunded because it was paid without cause.
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).
In case of payment of the refund tax out of time, we have two situations (R1 / 18) :
- if the restitutio relates to one of the following periods, the request for restitutio is deemed not formed and the tax is then refunded
- otherwise, the request for restitutio is formed but not admissible: the restitutio fee is therefore not reimbursed.
The reason is that the second case requires to look precisely at the date of the end of the impediment (which is not the case for the first two deadlines which run from the end of the missed deadline). Therefore, it is not possible to verify that the conditions are met in considering that the request is formed.
The body competent to check the admissibility of the request is the body which was competent when the deadline was not met (R136 (4) EPC).
In case of refusal of the request, it is necessary to justify the refusal (Directives E-VIII 3.3). If the request is granted, no reasoning is necessary (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)
When the motion is granted, the legal consequences of non-compliance with the time limit are deemed not to have occurred (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 the invention between the loss of right and the publication of the decision to restore rights, it will be possible for him to continue his exploitation for 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).
Restitution by a Contracting State
A State may decide to grant 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 time limit for the filing of 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).