Restoration of rights request in a European patent application – re-establishment of rights

An EP patent applicant or right holder who, despite taking all necessary care in the circumstances (due care), is unable to comply with the time limits set by the European Patent Office may apply to re-establish his rights.

A request for re-establishment of rights may not be made during any period in which further processing is possible, nor during a period for restoration of rights. In other words, a request for re-establishment of rights may only be made if further processing is not possible or the period for requesting further processing has also expired. The applicant should request re-establishment of rights within the period for further processing, not within the period that was initially missed.

Several scenarios for requesting redetermination of rights:

• 1. The annual fee and the overdue payment period have expired
• 2. The deadline for responding to a letter from the EPO Examining Department has expired under Article 94(3) EPC
• 3. The deadline for submitting translations of any voluntary amendments to claims during opposition proceedings has expired
• 4. The time limit for requesting the Opposition Chamber to decide on the issue of costs has expired
• 5. The time limit for submitting an appeal and/or grounds for appeal has expired
• 6. The time limit for filing a request for review with the Enlarged Appeal Board has expired

Only applicants and right holders are eligible to file a request for redetermination of rights, and opponents are not entitled to request redetermination of rights in principle. However, the opposing party who has filed an appeal may request redetermination of rights related to the time limit for submitting grounds for appeal.

Generally, a request to re-establish rights must be made in writing within two months after the cause of non-compliance with the time limit has ceased to exist, but at the latest within one year after the expiration of the time limit for non-compliance. The omitted action must be completed within this period.

If the "reason for non-compliance" involves a mistake on the part of the party in carrying out his intention to comply with the time limit, the reason for non-compliance is that the person responsible for the patent application was aware of the fact that the time limit was not complied with or, having exercised all due care, could have noticed the erroneous elimination date. Elimination of the reason for non-compliance is a question of fact that must be determined in the circumstances of each case. In the absence of circumstances to the contrary, if the EPC has duly issued a notice under 112(1) EPC, it can be presumed that receipt of that notice has eliminated the non-compliance.

A request to re-establish rights is deemed to have been filed only after the re-establishment fee has been paid.

If a single proceeding is aborted by the non-performance of one or more of the acts constituting that act, only one fee is payable. If several separate proceedings are omitted, each of which results in the patent application being deemed withdrawn, a re-filing fee is payable for each omitted act.

Example 1: The following table is a schematic diagram of further processing and re-establishment of rights. In this example, for a request for further processing to be allowed, the missing actions must be completed within the 2-month period specified in Article 135(1) EPC, i.e. all actions that should have been performed within the 31-month period, and 5 fees for further processing must be paid. Therefore, the missing actions are all actions that should have been completed within the 31-month period, and the corresponding 5 fees must be paid. The 5 fees paid for re-establishment of rights are equivalent to the number of 5 independent fees paid for further processing.

Example 2: The applicant has missed the deadlines for responding to the office action and paying the annual fees and surcharges as prescribed in Article 94(3) of the EPC.

• Since these time limits are valid independently of each other and the applicant misses both time limits, each of which will result in the patent application being deemed withdrawn, a request for redetermination of rights must be filed for each time limit not met. In this case, a fee for redetermination of time limits must be paid for each request. In the case of independent time limits, in particular when the time limits expire on different dates, the reasons for missing a time limit and the date on which the reasons for default are eliminated may also be different.

Example 3: After the EPO issued a rejection decision, the applicant missed the deadline for filing a review and the deadline for filing a brief for appeal. The reason for missing both deadlines is the same.

• Although two deadlines were missed, only one re-establishment fee is required because both deadlines were triggered by the same notification of refusal decision and the reason for missing both deadlines is the same. In this case, the question of re-establishment of rights for both deadlines must be examined together, and since the results in both cases are necessarily the same, only one fee is required. If the deadlines for filing the grounds for review and appeal were missed for different reasons, there is no causal relationship, and two re-establishment fees must be paid.

The claim for re-establishment must state the grounds and set out all the facts on which it is based. The applicant must state the precise reasons for not meeting the time limit, i.e. the fact or impediment which prevented the necessary action from being taken within the time limit, specify when and under what circumstances the reason arose and was eliminated, and set out the essential facts so that the EPO can consider whether the applicant took all due care required by the circumstances to meet the time limit in question. A general statement without specifying the specific facts or events which caused the time limit to be missed will not meet the requirement of sufficient evidence under Article 136(2) EPC.

• Once the deadline for filing a request to re-establish rights has expired, the applicant may further clarify or supplement the facts and submit further evidence. However, this cannot change the factual basis of the initial application for re-establishment. Any new facts presented at this stage are inadmissible and will not be considered by the EPO.
• The right can only be re-established if the applicant proves that, despite having taken all due care necessary in the circumstances, it was not possible to comply with the time limit. The obligation to exercise due care must be considered in the light of the circumstances immediately preceding the expiration of the missed time limit. "All due care" means all reasonable care, i.e. the standard of care that a nominally competent patentee, applicant or agent would have taken in all the relevant circumstances.
• If the failure to comply with a time limit is due to some error on the part of the party in carrying out its intention to comply with the time limit, all due care should be deemed to have been taken if the failure to comply with the time limit is likely to be due to exceptional circumstances or to an isolated error in a normally satisfactory supervision system.
• Whether there are special circumstances justifying the re-establishment of rights depends on the specific facts of the individual case. Examples include organizational changes and sudden serious illness. In such cases, the applicant must not only prove that these circumstances exist, but also that they have taken all due care, such as carefully preparing for the reorganization or establishing an effective system for replacing personnel.
• If the allegation is that a single error has occurred in a generally satisfactory monitoring system, the party concerned must demonstrate that the monitoring system generally functions well. Such a system must include an independent and effective cross-checking mechanism. (Not applicable to relatively small entities/patent departments)
• The duty of care applies first to the applicant and then, subject to the mandate, to the agent duly authorized by the applicant. The obligations of the applicant are clearly different from those of its representative and should take into account the scope of the mandate and any express instructions to the representative.
• If the applicant knew that instructions were needed to meet the time limit, they had a duty to take all due care in the circumstances to meet the time limit. The fact that the professional representative acted correctly does not absolve the applicant from the consequences of their own mistakes or omissions.
• An agent may delegate routine tasks such as typing, mailing letters, recording deadlines or checking due dates to an assistant. In this case, the requirements for the assistant are not as strict as those for the agent himself. However, the agent must prove that the assistant has been carefully selected, properly instructed and regularly supervised.
• If the applicant has another party handle the application, such as a non-European agent or a payment agency, the applicant must demonstrate that the party has exercised the same care as the applicant or proprietor of a European patent application. In particular, the non-European agent must also demonstrate that a reliable system for monitoring time limits is in place in the event that time limits are missed.