Missing a deadline set by the European Patent Office (EPO) can be serious, as it can involve a loss of rights for the applicant involved. This can be a commercial nightmare if the patent application in question relates to an important aspect of the applicant’s commercial objectives. Such a loss of rights can also lead to the manifestation of third party rights.
The EPO does offer remedies in this situation. One of these is the re-establishment of rights. The law on re-establishment of rights is encapsulated in Article 122(1) EPC, wherein it states:
“An 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 vis-à-vis the European Patent Office shall have his rights re-established upon request if the non-observance of this time limit has the direct consequence of causing the refusal of the European patent application or of a request, or the deeming of the application to have been withdrawn, or the revocation of the European patent, or the loss of any other right or means of address.”
Looking at this statute, a number of crucial factors emerge as to whether it’s possible to secure this remedy. These crucial factors include:
- entitlement to the remedy and the meaning of “An applicant for or proprietor of…”
- the standard of proof required to secure the remedy (the interpretation of “…in spite of all due care required by the circumstances…”)
- the time limits to which the remedy can be applied
In the EPO’s updated Guidelines for Examination (updated for 2016) — which become effective as of November 2016 — the EPO has sought to clarify the meaning of some of these terms, which will surely provide clearer guidance to representatives and applicants alike if they come across this unfortunate situation.
The statute refers to the applicant or proprietor which, on the face of it, excludes other parties to proceedings (such as opponents) from requesting the remedy.
However, the revised guidelines do state that an opponent who has filed an appeal can request re-establishment of rights in respect of the deadline for submitting the statement of appeal.
Additionally, where re-establishment of rights is requested by the patent proprietor in respect of a time limit connected with the opposition procedure, the opponents are party to the re-establishment proceedings.
Standard of proof
The standard of proof required to secure the remedy is that “all due care” has been taken. The EPO has clarified that this means all reasonable care — the standard of care that the notional reasonably competent patentee, applicant or representative would employ in all the relevant circumstances.
The identities of the patentee, applicant and representative are relatively clear but the relationship between the applicant (or patentee) and their representative is the subject of some debate in the case law in this area. The safest approach in determining whether the requirement of all due care has been satisfied is to assume that it applies equally to the applicant and the representative, but it is also safe to assume that applicants and representatives have distinct obligations.
The revised guidelines set out that the applicant is entitled to rely on their representative, but also there is an onus on the applicant to act to meet any time limits that they know about, which in turn must mean that there is an onus on representatives to inform the applicant of time limits that they must meet. That is to say, applicants are entitled to rely on representatives to keep them informed of time limits, but applicants must also ensure they provide the instructions that they would like to be implemented.
The revised guidelines also state that organisations like Computer Patent Annuities (commonly referred to as CPAs) must also take the same due care required of applicants if they are instructed to carry out a task on behalf of that applicant.
In instances where a party has made an error in carrying out the party’s intention to comply with the time limit, the guidelines set out that all due care is considered to have been taken if missing the time limit is a result of exceptional circumstances, or from an isolated mistake within a normally satisfactory monitoring system.
A time limit is taken to mean a specific period of time within which an act vis-à-vis the EPO must be completed but is excluded in cases where further processing may be requested. That is to say, they are not alternatives.
Even if they were alternatives, it would be foolish to request re-establishment instead of further processing. Further processing simply requires payment of a fee and completion of an omitted act, whereas re-establishment has a high burden of proof, which can be quite invasive to an organisation and still may not be satisfied.
The guidelines set out examples of cases where re-establishment may be requested and they include: late payment of a renewal fee, further processing on an office action, filing of translations in opposition proceedings and filing a notice of appeal.
It is safe to assume that re-establishment will apply where missing a time limit will cause the rights in the application or the patent to be irrevocably lost.
The updated guidelines bring together a number of items of case law to clarify how the EPO approaches re-establishment of rights — but it should be emphasised that the law in this area is still heavily driven by the facts of each case.
The law in this area (as interpreted by the updated Guidelines) incentivises structured record keeping and also professional representatives to report promptly to applicants and to ensure that, where instruction is required from an applicant, the applicant is informed in a sensible and clear manner.