The patent relates to an apparatus and method for filling a plurality of inflatable containers with a liquid, e.g. to fill a large number of water balloons simultaneously
Brief outline of the case
Opponent 2 appealed the decision of maintenance in amended form.
The former applicant, now proprietor/respondent filed a request for re-establishment of the priority.
The board held that a partial priority could be validly claimed.
During the OP before the OD, the proprietor filed a new MR in which claim 6 as granted was deleted.
The priority could be acknowledged but not for the subject-matter of claim 6.
The patent was eventually maintained according a new AR.
The decision is interesting as it deals with the re-establishment of the priority by the Receiving Section (RS) and the ensuing consequences of this decision.
The re-establishment of the priority – Role of the Receiving Section
Pursuant to R 136(1), second sentence, the priority period can be subject to re-establishment of rights.
The RS granted the request and the application was deemed to have been filed within 12 months from the earlier filings from which priority was claimed. Only claim 6 did not benefit from the priority
The board’s position
The Receiving Section is competent
Based on its competence for the examination on filing and as to formal requirements up to the time when the ED becomes responsible, the RS was under R 136(4) also competent to decide on the request for re-establishment of rights in respect of the priority period.
If the RS 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, cf. Art 21(1) and (2) EPC; see, for example, J 3/13.
If the RS grants a request for re-establishment of rights in respect of the priority period, the applicant is not adversely affected under Art 107.
As there is no other party to the proceedings before the RS than the applicant, a positive decision on such a request thus becomes final immediately.
Binding character of the Receiving Section’s decision
For the board, it had to be decided whether the RS’s decision granting the request for re-establishment of rights is binding for the RS only, or whether it also prevents other departments of the EPO such as an OD or a technical BA which decide on questions of priority in other, subsequent proceedings from reviewing and overturning the RS’s decision granting the request for re-establishment of rights.
The board decided that the RS’s decision was binding for all the other deciding bodies of the EPO.
Firstly, the effect of granting a request for re-establishment of rights is specifically regulated in Art 122(3). 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 Art 122(3) 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 Art 114(1) may be undertaken by different departments in different 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 RS, and decided upon only in these proceedings. As the Legal Board of Appeal is under Art 21(2) EPC exclusively competent to review decisions of the RS, cf. G 1/11, Reasons 9, second paragraph, neither the OD nor the present technical BA have any power to review the RS’s decision on re-establishment of rights. They may also not do so indirectly by reassessing the same matter again of their own motion.
Thirdly, any subsequent reopening of a favourable decision of the RS 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.
The board concluded that the OD was correct in saying that it had to acknowledge the RS’s decision to grant the request for re-establishment of rights in respect of the priority period.
Partial priority
The present case is also interesting as only a partial priority could be granted.
The board held that P1 and P2 solely and consistently disclose a housing with a threaded opening or a threaded liquid inlet and this feature was not presented as optional in P1.
Therefore, the person skilled in the art cannot derive directly and unambiguously any non-threaded opening from P1 or P2.
Consequently, in accordance with G 2/98, the “same invention criterion” is fulfilled by the present application only by subject-matter having a housing with a threaded opening (claim 1) or a threaded liquid inlet (claim 9). Thus, priority of P1 and P2 can only be claimed for such subject-matter (partial priority).
Claim 6 was not benefiting from any priority and there was prior art published in the priority interval which could have been detrimental, hence the deletion of claim 6 in the further request.
Comments
The possibility of restoring priority was only introduced with the EPC 2000.
Like for any other request for re-establishment the EPO has adopted the requirement of “due care” and unlike in the PCT, the criteria of “unintentionally” when it comes to the restoration of priority.
Deciding upon re-establishment of priority is a decision which is normally taken at the beginning of the grant procedure. According to R 52(2), the declaration of priority shall preferably be made on filing the European patent application. It may still be made within sixteen months from the earliest priority date claimed. The possibility of requesting re-establishment of priority lapses thus with the latest moment at which a declaration of priority has to be filed at the EPO.
It is thus not really convincing when the board takes pretext that such a request was neither presented in the opposition nor in the opposition appeal, to deny the possibility of revising the discretionary decision of the RS as, for the board, on top, the decision was final. A request of re-establishment of the priority can only be filed within 16 months of the earliest priority.
The present decision is problematic
The decision is somehow problematic as the RS could have allowed re-establishment for the wrong reasons. After all, re-establishment of priority is a discretionary decision of the RS. By its decision, the board did not allow any possibility of challenging the decision of re-establishment, i.e. challenging a discretionary decision of a department of the EPO. Legitimate expectations of the applicant cannot be given more weight than the revision of a discretionary decision. As any discretionary decision of a first instance department of the EPO can be challenged, why should a discretionary decision of the RS in matters of re-establishment of priority not be opened to revision?
The protection of legitimate expectations is certainly an important aspect in procedures before the EPO, but since priority has a direct impact on the available prior art, it can also have direct consequences for third parties. It is not comparable with re-establishment after missing a deadline set by the EPO, e.g. in examination or the EPC, e.g. for the payment of an annual fee.
Different treatment of Euro-Direct applicants and Euro-PCT applicants
The decision is also problematic as it appears to make a difference between applicants of Euro-direct applications and those of Euro-PCT applications, cf. Decision J 14/21.
J 14/21 appears important in this respect. J 14/21 relates to a Euro-PCT application in which the request for re-establishment was made after entering the regional phase.
In J 14/21, the International Bureau of WIPO as Receiving Office granted re-establishment of priority applying the criterion of “unintentionality“.
Upon entry in the regional phase, the RS of the EPO informed the appellant of the requirements for entering the European phase, in particular that a request for examination under R 159(1)(f) (in conjunction with Art. 22(3) PCT) had to be filed with the EPO within 31 months of the priority date and that corresponding fees had to be paid, otherwise the European patent application would be deemed withdrawn under R. 160(1). The applicant was further informed that under Art. 49ter.2(b)(i) PCT, a (further, new) request for re-establishment of the right of priority had to be filed within one month of the expiry of the above-mentioned time limit, and a corresponding fee had to be paid.
Following the absence of reaction of the applicant, the RS issued a notification of loss of rights under R 112(1). All fees were eventually filed as well as a request for re-establishment of priority.
It was an ED which decided on the request for re-establishment and not the RS. The refusal was then checked by the legal board which confirmed the refusal of the re-establishment.
If the decision of the ED would have been in favour of the re-establishment, would this decision also have been binding for an OD and a BA acting after an appeal in opposition?
Questions of general importance
Is it correct, that after allowing re-establishment of the priority by the RS, even for the wrong reasons, the decision of re-establishment decision becomes final? Can legitimate exceptions can go as far as to deny third parties or a deciding body of the EPO to challenge the discretionary decision of the RS?
All discretionary decisions of first instance can be revised. Can thus a discretionary decision of re-establishment of the priority acquire an exceptional position within other discretionary decisions taken by departments of first instance?
Is it correct that, in view of the possibilities offered by the PCT, Euro-Direct applicants can be put in a worse position than Euro-PCT applicants?
In the present instance, the board has decided in favour of the applicant/proprietor, but the questions raised are of general interest and could, or even should, actually have been subject of a referral to the EBA.
https://new.epo.org/en/boards-of-appeal/decisions/t211482eu1.html
Comments
4 replies on “T 1482/21 – Re-establishment of priority by the receiving section and possible consequences”
If an applicant fails to observe the time for paying a fee during examination proceedings and succeeds with a request for re-establishment of rights, can the decision on re-establishment be challenged in an opposition?
Dear anonymous,
Whether a time limit has been observed or not is easy to decide as it is a binary decision. What appears to me open to discussion, even in opposition, is whether the discretionary decision taken in first instance was correct or not.
An incorrect decision on re-establishment is not a ground of opposition. It is thus manifest that a wrong decision of re-establishment can only be attacked indirectly when the opponent is able to bring forward a ground of opposition under Art 100.
In T 1111/19, it was held, that an amendment under R 139 on documents filed during examination is only possible if the correction thought constitutes an amendment occasioned by a ground for opposition under Art 100, even if the ground was not raised by the opponent, cf. R 80.
The same applies to re-establishment of the priority. For instance, in presence of a highly relevant document published in the priority interval, a ground of opposition can be raised under Art 100(a), and hence the decision of re-establishment should be open to revision. A decision could be taken by an OD, as there is still the possibility of revision by a BA.
It will certainly not be easy to attack the substance of the decision of re-establishment, but what disturbs me is the irrevocable character of a decision of re-establishment, on top of it binding for all departments of the EPO, including boards, as decided in the present decision T 1482/21.
For this reason alone, the board in T 1482/21 should have referred corresponding questions to the EBA.
In procedural questions, boards of appeal appear more and more as isolated islands deciding what they think fit, without looking what is going on in other boards. This brings great insecurity for parties to appeal.
A board should not decide alone in a binding manner on procedural questions like it happened here.
Furthermore, as only decisions of the EBA are actually binding for all departments of the EPO, T 1482/21 can even be ignored. As long as this decision is not mentioned in the Guidelines, divisions of first instance it can certainly be ignored by ODs.
The patent family shows no less than 8 granted US patents on the balloon filling device, as well as 2 applications not yet granted. Perhaps the assessment of priority at the EPO was more delicate than usual, given the amount of filing activity at the Applicant’s home Patent Office?
The inventor, Josh Malone, is something of a celebrity in the USA and is a frequent contributor to a patent law blog over there. If we are to believe him, the invention has solved a 63 year old problem and has made its inventor a millionaire (as well as a campaigner for stronger patent rights in the USA). Here a Link:
https://usinventor.org/portfolio-items/josh-malone-inventor-of-bunch-o-balloons/
Dear Max Drei,
Thanks for this interesting insight about the inventor and patent holder.
It is the more surprising that apparently not enough diligence was put to light when it came to claim priority.
On the other hand, individual inventors are like artists, only a happy few can actually live from their art/patents.
Another very well know single inventor is Mr Ray Milton Dolby. He only ever gave licenses and he is a good example of an inventor going with its time. While its original system was performing in the analog world, his company is nowadays is heavily present in the digital world.
I had the chance in my early days as search examiner to carry out the search for his analog system. When the doubled D started burgeoning on lot of tape recorders/players, I quickly realised that patents are an asset and not a piece of paper to show on one’s lounge wall!