Navigating re-establishment of rights at the EPO: key takeaways from T 0178/23

GJE partner Ian Jones has recently taken up responsibility for writing a monthly update on EPO case law which will be published on the leading intellectual property blog IPKat. In his debut article, Ian examines a recent EPO Board of Appeal decision, and what this means for re-establishing rights when you miss EPO procedural time limits.

The European Patent Office’s (EPO) re-establishment of rights procedure offers a vital safety net for applicants and patentees who fail to meet procedural time limits. A recent Board of Appeal decision (T 0178/23) provides practical guidance on the availability of this remedy, and the necessity of substantiating requests within the prescribed timeframe.

Background

The case revolves around a European patent being granted without accompanying drawings that had been part of the originally filed application. Neither the applicant nor the EPO’s Examining Division identified the omission at the grant stage. By a decision of 25 August 2022, a patent was granted on 21 September 2022 based upon a set of claims and a description, however, it was only during the national validation stage that the issue of missing drawings surfaced on 5 January 2023.

On 23 January 2023, a notice of appeal was filed against the decision to grant a patent, together with a statement of grounds and a request that the case be remitted to the first instance and a patent be granted with the drawings. This request was outside both the two-month period for appealing the decision to grant a patent, and the four-month period for providing the associated facts and arguments supporting the appeal. The EPO replied on 14 February 2023 noting that a loss of rights had occurred and indicating that the notice of appeal was late and so the appeal was deemed not to have been filed.

The would-be appellant requested re-establishment of rights on 2 March 2023 asserting that the “all due care” criterion had been met. On 8 May 2024, the Board expressed its preliminary opinion that the request for re-establishment had not been substantiated, the appellant had not been “unable” to observe the appeal time limit, and that all due care required by the circumstances appeared not to have been taken. As such, the opinion surmised that the re-establishment request should be inadmissible, and the appeal deemed not to have been filed.

The appellant responded on 1 October 2024 by providing additional information to add to the request for re-establishment. Oral proceedings took place 10 days later, on 11 October 2024, at which the Board upheld its preliminary opinion and found the request for re-establishment inadmissible.

Key findings

1. Re-establishment of rights is available only if you are “unable” to observe a time limit

The Board has clarified that for re-establishment of rights to be available, a party must be unable to meet a time limit, and not merely unaware of the need to do so. In this regard, the term “unable” implies an objective fact or obstacle preventing the required action.

In the present case, the proprietor (or its representative) would have been aware of the two-month time limit to file an appeal, however, it appears not to have been aware that an appeal was required. Re-establishment of rights would not typically be available in this scenario. Contrast this with the situation in which the proprietor knew about the missing drawings ahead of time, but the appeal deadline was missed because it was incorrectly added to a record system. In this case, the proprietor is aware of the need to file an appeal but may be “unable” to observe the time limit due to an external obstacle, i.e. the incorrect date in the records system, and re-establishment may be an available remedy.

The Board established that the proprietor could have filed an appeal in time but were not aware of the need to do so, and so the request for re-establishment of rights was deemed inadmissible. This rendered moot the question of whether “all due care” was exhibited.

2. Fully substantiate a request for re-establishment of rights

A request for re-establishment must state the grounds on which it is based and set out the facts on which it relies by the end of the time limit for doing so. This is within two months of the removal of the cause of non-compliance, and within one year of the missed time limit. If the grounds are not substantiated by that time, then the request is likely to be found inadmissible. Further submissions may offer evidence clarifying the facts that have already been provided, however, anything that alters the basis for the original request will not be considered.

In the present case, the original request for re-establishment was deemed not to provide any core facts that made it possible to consider whether all due care had been taken. The proprietor’s statement was essentially that all due care had been taken as they “were unable to observe the time limit to appeal, since [they] were unaware of the missing drawings”. The Board indicated that this was not enough to enable correct consideration of the matter. It was not until the appellant’s 1 October 2024 submission that the facts surrounding the missed appeal time limit were disclosed. At this point, it was too late to make a conclusive case. This led to the request for re-establishment also being inadmissible based on the case not being substantiated in time.

It is imperative that the case for re-establishment of rights is set out in full within the initial period for making the request. This balances the right of a proprietor to have sufficient time to correctly establish the chain of events that led to the loss of rights, while reducing the period of uncertainty for third parties.

3. Pay a re-establishment fee for each missed time limit (and request a refund, if available)

Two different time limits were missed. These were the two-month deadline to file an appeal (4 November 2022), and the four-month deadline to file a statement setting out the grounds of appeal (4 January 2023). Each time limit expires independently of the other despite being calculated from the same event, i.e. the notification of grant. Sadly, the Board did not decide how many re-establishment fees were due as the request was inadmissible. There is some case law supporting a single re-establishment fee being sufficient in this case as both events must be considered together. However, a more risk averse party may decide to pay a re-establishment fee for each missed event and request a refund, if available.

The decision in T 0178/23 provides a cautionary tale and valuable guidance for practitioners in relation to the limited availability of re-establishment of rights at the EPO, together with the stringent requirements and timeframe for substantiating such a request.

This article was first published on IPKat.