CASELAW - reviews of EPO Boards of Appeal decisions

J 4/22 – Request for re-establishment deemed admissible but no decision on the merits - After 13 years still no communication on the substance of an application.

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Brief outline of the case

The ED rejected applicant’s request for re-establishment of rights in respect of the time limit for the payment of the renewal fee for the thirteenth year with surcharge and stated that European patent application No. 06755766.0 was deemed to be withdrawn as of 01.12.2019. For the ED the request for re-establishment was not even admissible.

The board’s decision

The board set aside the decision and granted re-establishment at least at a formal level.

The Board has established the relevant facts of its own motion.

The Board has done so because the applicant claimed in her appeal that it was not clear to her what the ED had meant when asking her about when she had gained “financial support“.

In the circumstances of the case, this term was indeed not clear. Gaining “financial support” might be understood to be receiving money for her daily living expenses or – as the appellant put it – receiving a regular income. The question asked by the ED was ambiguous and not precise enough in the circumstances. Indeed, it is not relevant when the applicant received “financial support”.

What was decisive is on which date the applicant received the monetary funds to pay the renewal fee for the thirteenth year (and the surcharge).

The Board accepted the appellant’s submission that she received the necessary funds on 31.05. and on 24.06.2019, as evidenced by a bank statement.

Based on these facts, the Board found that the request for re-establishment was filed within two months of the removal of the cause of non-compliance.

Remittal

The case was remitted to the ED. The requirement of “special reasons” within the meaning of Article 11, first sentence, RPBA 2020 is met. The ED’s decision was based on the finding that the request for re-establishment was inadmissible.

No findings were made on the merits of the request.

The applicant’s submissions on appeal do not enable the Board to take a decision on the merits. These circumstances constitutespecial reasons“.

Comments

The decision of the BA is certainly correct.

What is much less correct is the way the EPO dealt with the case.

The present application was filed on 11.07.2006 claiming three GB priorities of 25.07.2005, 26.07.2005 and 28.03.2006.

The international search by the EPO was carried out on 07.09.2006 and the application published under WO2007/012802 A1 on 01.02.2007. The ISR mentions one X and 6 A documents for all claims 1-14.

The request for examination and the examination fee was paid on 25.02.2008 at the entry in the regional phase.

In this case no examination has ever started.

The applicant seems to have had financial problems a few times during the life of its application as at multiple moments the application was deemed withdrawn for late payment of the renewal fee. This culminated in the decision J 4/22.

The file has been remitted to the ED with order to examine the merits of the request for re-establishment.

This means that we are far from an examination on the merits of an application filed on 11.07.2006.

It can well be that the ED decides that re-establishment will not be granted for reasons of substance and the application will die for good for this reason alone.

The applicant might be a natural person with apparently little money, but it deserves the same treatment as any other applicant. In spite of the apparent financial problems encountered by the applicant, at least one communication on the substance should have been issued. The applicant deserved some orientation in matters of patentability.

The ED seems to have willingly left the application aside in the apparent hope that it would die for lack of financial resources of the applicant.

It cannot be considered as being correct to leave the applicant without indication of the substantial merits of an application for which the examining fee has been paid in 2008

https://www.epo.org/law-practice/case-law-appeals/recent/j220004eu1.html

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