CHAPTER VIII TIME LIMITS, LOSS OF RIGHTS, FURTHER PROCESSING AND RE-ESTABLISHMENT OF RIGHTS
1. Time limits and loss of rights resulting from failure to respond within a time limit
1.1 Determination of time limits
The Convention and the Implementing Regulations impose time limits upon parties to proceedings.
»»Art. 120
Some of these are fixed by the Convention e.g. in Art. 78(2) (payment of filing and search fees), Art. 91(5) (designation of the inventor), Art. 94(2) (request for examination) and Art. 99(1) (opposition). Others are fixed in the Implementing Regulations, e.g. in Rule 36(5) (document reproducing contents of telegram or telex), and Rule 69(2) (applying for a decision after notification of loss of rights).
Others take the form of a stipulated range, e.g. 2 to 6 weeks as in Rule 46(1) (payment of further search fees), the precise period within this range being at the Office's discretion.
In other cases, e.g. those dealt with in Rule 41(1) (rectification of deficiencies in the form of the application documents) and Art. 96(1) (invitation to the applicant to indicate whether he desires to proceed further with the European patent application), a time limit, but not its duration, is laid down in the Convention or in the Implementing Regulations. The duration must be determined by the Patent Office in accordance with Rule 84 (see VIII, 1.2).
1.2 Duration of the time limits to be determined by the Patent Office on the basis of provisions of the Convention or the Implementing Regulations
The length of the time limits should be based, in principle, on the amount of work which is likely to be required to perform the operation in question. However in order to facilitate the work of parties and the Office it has been decided, as a general rule, to adopt a uniform practice with respect to time limits. This practice is at present as follows.
(i) If deficiencies to be corrected are merely formal or merely of a minor character; if simple acts only are requested, e.g. under Rule 59 the subsequent filing of documents referred to by a party; or if observations are required on amendments which are merely of a minor character - two months.
(ii) Communications from an Examining or Opposition Division raising matters of substance - four months.
A longer time limit of up to six months should be set only in the exceptional cases where it is clear that in the circumstances a four-month time limit cannot be adhered to. Each case must be judged on its individual merits and it is difficult to give general guidance but a six-month time limit might be justified e.g. if the subject-matter of the application or patent or the objections raised are exceptionally complicated. Where the applicant is invited to submit the statement provided for in Art. 96(1), a six-month time limit running from the publication of the search report is appropriate.
»»Art. 96(1)
Some Rules stipulate a minimum time limit, e.g. Rule 1(3) (translation of a document to be used in evidence) "not less than one month". Where this is so, the stipulated minimum period takes the place of the minimum period of two months referred to in Rule 84.
»»Rule 1(3)
1.3 Time limits which may be freely determined
Time limits for operations in respect of which the setting of a time limit is not explicitly provided for in the Convention or the Implementing Regulations are not subject to the restrictions as to the duration of time limits laid down in Rule 84. They may be fixed by the Patent Office at its own discretion. For example, if a party is requested to forward copies of his document where this was not submitted in the required number of copies (Rule 36(4)), a time limit of two to four weeks would be appropriate.
1.4 Calculation of time limits
Although Rule 83 allows other possibilities, any period fixed by the Office will usually be specified in full months which will be calculated from the receipt of the communication by the person to whom it is addressed (see Rule 78(2)). Rule 83 gives precise details for the determination of the day of expiry of the period, whilst Rule 85 contains provisions covering certain contingencies, e.g. that the Office is not open on the day on which a time limit expires, or that there is a general disruption in the postal facilities between the Office and a Contracting State.
»»Rule 83
»»Rule 78
»»Rule 85
When proceedings have been interrupted because of the death of the applicant or proprietor or for any of the other reasons specified in Rule 90, time limits are subject to the provisions of Rule 90(4). The time limits for the payment of the examination fee and the renewal fees are suspended (see J 07/83, OJ 5/1984, 211).
»»Rule 90
1.5 Effect of change in priority date
Certain time limits run from the date of priority, or in the case of multiple priorities, from the earliest date of priority. Where this date no longer applies (e.g. the right of priority is lost in accordance with the provisions of Art. 91(3)), any such time limits become determinable from the amended date of priority. This does not restore any loss of right resulting from a time limit having already expired before the loss of priority date. The Formalities Guidelines deal with the procedure to be followed (see A-III, 6.11).
»»Art. 88(2)
1.6 Extension of a time limit
Apart from the automatic extension of time limits under Rule 85 (see VIII, 1.4) and cases in respect of which the Convention or the Implementing Regulations specify a fixed period which may not be extended, the duration of time limits may be extended, but the applicant must request this extension in writing, before the expiry of the period that has been set. The extended period is to be calculated from the start of the original period (see Legal Advice No. 5/93 rev., Point III, OJ 4/1994, 229). No written confirmation is required for requests for extension of time limits filed by telegram, telex or facsimile. For any communication raising a matter of substance, a request for extension, even if filed without reasons, should normally be allowed if the total period set does not thereby exceed six months. A short time limit for correcting a mere formal or minor deficiency should be extended under the same circumstances by two months. However, a request for a longer extension, especially if the total period set exceeds six months, should be allowed only exceptionally, when the reasons given are sufficient to show convincingly that a reply in the period previously laid down will not be possible. Such exceptional circumstances might be e.g. the fact that a representative or client is so seriously ill that he cannot deal with the case in time; or the need to perform extensive biological experiments or tests. On the other hand foreseeable or avoidable circumstances (e.g. leave, pressure of other work) should not be accepted as a sufficiently exceptional circumstance (cf. notice of the Vice-President of the Directorate-General for Examination/Opposition of the EPO, OJ 5/1989, 180).
»»Rule 84
If the request for an extension of time is granted, the party should be informed of the new time limit. Otherwise, he should be told that the relevant sanction has taken effect or will take effect (see VIII, 1.9.2).
If the request for extension of a time limit filed in good time has been rejected and the applicant considers this unjust, the ensuing loss of rights can only be overcome by a request for further processing under Art. 121. At the same time, he may request reimbursement of the fee for further processing. A decision rejecting the request for reimbursement is open to appeal, either together with the final decision or separately, as the case may be (see J 37/89, OJ 4/1993, 201).
»»Art. 106(3)
1.7 Late receipt of documents
The fiction that a time limit has been observed is created provided a document received late was posted or delivered to one of the delivery services recognized by the President of the EPO (DHL, Express Post, Federal Express, TNT, UPS) at least five days before expiry of the time limit and was received no later than three months after expiry of the time limit (see Decision of the President of the EPO, OJ 1/1999, 45, and OJ 5/1999). Rule 84a applies to all time limits to be observed vis-à-vis the Office and/or the national authorities, including the priority period laid down in Art. 87(1). The document must have been sent as a registered letter or in a form of consignment corresponding to registration and, if posted outside Europe, by airmail. Within the meaning of Rule 84a a document is deemed to have been posted or delivered to a delivery service within Europe if it was dispatched
in one of the states belonging to the European Conference of Postal and Telecommunications Administrations (CEPT) (in addition to the EPC Contracting States these are the states listed below) or in a state which is generally understood to be part of Europe. At the request of the EPO, confirmation of registration by the post office or of receipt by the delivery service must be provided as evidence that the document was posted in due time. Despite this legal fiction that the time limit has been observed, the filing date of the document remains the day on which it was actually received.
The following non-Contracting States belong to the CEPT:
Albania, Andorra, Bosnia and Herzegovina, Bulgaria, Croatia, Czech Republic, Estonia, Hungary, Iceland, Latvia, Lithuania, Malta, Moldova, Norway, Poland, Romania, Russian Federation, San Marino, Slovakia, Slovenia, The former Yugoslav Republic of Macedonia, Turkey, Ukraine and the Vatican.
1.8 Failure to respond within a time limit
If a party has not acted within a time limit, various sanctions may be applied depending on the circumstances. For instance, under Art. 90(2), the application will not be proceeded with; under Art. 91(3) the application may be refused or a right of priority lost; under Rule 5 a document may be deemed not to have been received. If the request for examination has not been filed in time the application is deemed to be withdrawn (Art. 94(3)) and this sanction may also apply in those cases where the applicant fails to meet a time limit set by the Office (e.g. the time limit for replying to an invitation to amend under Art. 96(2)).
If a particular time limit is not complied with and, in contrast to cases where mandatory legal sanctions are laid down (e.g. revocation of the European patent if the printing fee is not paid in due time (Art. 102(4))), no specific legal sanction is laid down in the Convention or the Implementing Regulations, submissions and requests from the parties made after the expiry of the time limit but before a decision is handed over to the EPO's internal postal service for transmittal to the parties (see Decision G 12/91, OJ 5/1994, 285), are to be regarded in the rest of the proceedings as if they had been received in time; any facts or evidence are, however, to be treated as not filed in due time (Art. 114(2), see also VI, 2).
1.9 Loss of rights
1.9.1 Cases of loss of rights
»»Rule 69
If a party to the proceedings or a third party fails to comply with a time limit laid down in the Convention or fixed by the Patent Office this will result in a loss of rights in certain cases specified in the Convention, "without any decision concerning the refusal of the European patent application or the grant, revocation or maintenance of the European patent, or the taking of evidence".
1.9.2 Noting and communication of loss of rights
»»Art. 119
»»Rule 69(1)
If there has been a loss of any right as described in VIII, 1.9.1, a formalities officer will note such loss of rights and "communicate this to the person concerned". The communication will be notified to the person concerned as a matter of course (see also D-IV, 1.4.1).
1.9.3 Decision on loss of rights
"If the person concerned considers that the finding of the EPO is inaccurate, he may, within two months after notification of the communication, apply for a decision on the matter by the EPO."
»»Rule 69(2)
The competent department of the Patent Office will give such a decision "only if it does not share the opinion of the person requesting it; otherwise it shall inform the person requesting the decision"
and then continue with the proceedings. Since such decisions are subject to appeal the reasons on which they are based must be stated. Only the person affected by the loss of rights noted will be party to the proceedings.
2. Further processing and re-establishment of rights
2.1 Request for further processing of the European patent application
"If the European patent application is to be refused or is refused or deemed to be withdrawn following failure to reply within a time limit set by the EPO"
(as distinct from those fixed by the Convention or in the Implementing Regulations), the application is allowed to proceed if the applicant makes a written request for further processing of the application. This request must, however, be filed within two months of the notification of refusal or notice that the application is deemed to be withdrawn; and the omitted act must be completed and a fee for further processing must be paid within this period. "The request shall not be deemed to have been filed until this fee has been paid. The department competent to decide on the omitted act shall decide on the request"
for further processing.
»»Art. 121(1)
»»Art. 121(2)
»»Art. 121(3)
2.2 Re-establishment of rights
2.2.1 General remarks
"The applicant for or proprietor of a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit"
not specifically excluded by Art. 122(5) may apply to have his rights re-established. The conditions governing such application are fully set out in Art. 122(1) to (6). The provisions of this Article might be invoked if e.g. the applicant's working documents had been destroyed by fire and he had been obliged to prepare fresh ones; or if a specialist agency had sent him the wrong set of drawings relating to a priority document, and the error was not immediately apparent. In all instances it is necessary for the applicant or proprietor or representative, as the case may be, to supply evidence that he had exercised all due care required by the circumstances and that the delay was caused by unforeseeable factors. Errors of law, however, do not constitute grounds for re-establishment (see e.g. D 6/82, OJ 8/1983, 337).
»»Art. 122
2.2.2 Extension of re-establishment of rights to opponents
Re-establishment of opponents in respect of the time limit for filing the appeal itself is excluded under Art. 122(1) (see T 210/89, OJ 8/1991, 433). However, an opponent who has filed an appeal can request re-establishment of rights in respect of the time limit for submitting the grounds for appeal (see Decision G 1/86, OJ 10/1987, 447).
2.2.3 Relevant time limits
»»Art. 122(1)
"Time limit"
shall be taken to mean a specific period of time within which an act vis-à-vis the EPO has to be completed. A time limit is therefore not a date, i.e. an appointed day. Accordingly, no provision may be made for re-establishment of rights in the event of failure to be present on the date appointed for oral proceedings.
The following are examples of cases where re-establishment of rights is possible in the event of failure to comply with a time limit. They concern the time limits for:
»»Art. 102(3) - (5)
»»Rule 58(6)
»»Rule 90(3)(a)
»»Rule 63(3)
- the payment of the fee for the printing of the new specification of the European patent,
- the filing of the translation of any amended claims,
-
informing the Office of the appointment of a new representative,
- filing the request for a decision by the Opposition Division on the awarding of costs by the registry and
- for appeals filed by applicants or patent proprietors (see XI, 6).
2.2.4 Time limits not covered
Re-establishment of rights is expressly excluded as regards the time limits for the application for restitutio in integrum (see VIII, 2.2.5) and the time limits laid down in Art. 61(3), Art. 76(3), Art. 78(2), Art. 79(2), Art. 87(1), and Art. 94(2). The time limits for the payment of the filing fee, search fee, designation fee and examination fee in respect of a Euro-PCT application under Art. 150(2), as well as the periods of grace under Rule 85a and Rule 85b are excluded from re-establishment of rights (see Decisions G 3/91, OJ 1-2/1993, 8; G 5/92 and 6/92, OJ 1-2/1994, 22 and 25; as well as J 18/82, OJ 11/1983, 441). However, Euro-PCT applicants may be re-established in the time limit for paying the above mentioned fees in all cases where re-establishment was applied for before Decision G 3/91 (see above) was made available to the public, (see Decision G 5/93, OJ 7/1994, 447). Furthermore, re-establishment of rights will not be permitted in cases of failure to comply with time limits which do not have the "direct consequence of causing the refusal of the European patent application, or of a request, or the deeming of the European patent application to have been withdrawn, or the revocation of the European patent, or the loss of any other right or means of redress". For example, there can be no re-establishment of rights as regards the time limits for submission by the patent proprietor in opposition proceedings of his observations on the written statements of the other parties to the proceedings or on communications from the Opposition Division.
»»Art. 122(1), (5)
2.2.5 Applications for re-establishment of rights
»»Art. 122(2), (3)
"The application" for the re-establishment of rights "must be filed in writing within two months from the removal of the cause of non-compliance with the time limit. The omitted act must be completed within this period. The application shall only be admissible within the year immediately following the expiry of the unobserved time limit."
"The application must state the grounds on which it is based, and must set out the facts on which it relies. It shall not be deemed to be filed until after the fee for the re-establishment of rights has been paid"
to the amount laid down in the Rules relating to Fees under the European Patent Convention.
2.2.6 Special considerations in proceedings with more than one party
If, for instance, in opposition proceedings, the proprietor of the patent files an application for re-establishment of rights, the opponents and any third parties, although not involved in the procedure for the re-establishment of rights must be informed of the application for re-establishment of rights and the subsequent decision, if this involves the re-establishment of rights as regards a time limit connected with the opposition procedure.
2.2.7 Decision on re-establishment of rights
"The department competent to decide on the omitted act shall decide upon the application" for re-establishment of rights. The grounds for the decision need only be stated if the application is disallowed. This also applies in opposition proceedings since the opponents are not involved in the procedure for re-establishment of rights.
»»Art. 122(4)
The department which took the contested decision will have to consider re-establishment of rights in respect of an unobserved time limit for appeal when the conditions for granting interlocutory revision are fulfilled (see XI, 7). It can, however, only decide to allow re-establishment if it can do so within the three-month time limit of Art. 109(2) and the conditions for re-establishment (see VIII, 2.2.1 to 2.2.5) are fulfilled. In all other cases, the appeal, together with the application for the re-establishment of rights, must be submitted to the competent Board of Appeal.
3. Accelerated prosecution of European patent applications
Applicants requiring a more rapid search or examination can request accelerated prosecution of their applications (see Notice of the President of the EPO, OJ 7/1997, 340).
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