Ancillary Regulations Part VI: Legal advice 16/85 OJ 1985, 141

Legal advice 16/85 OJ 1985, 141: LEGAL ADVICE FROM THE EUROPEAN PATENT OFFICE No. 16/85

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Table of Contents

Foreword

Ancillary Regulations

Part VI

Legal advice 16/85 OJ 1985, 141: LEGAL ADVICE FROM THE EUROPEAN PATENT OFFICE No. 16/85

Legal advice 15/05 rev. 2 OJ 2005, 357: LEGAL ADVICE FROM THE EUROPEAN PATENT OFFICE No. 15/05 (rev.2)

Legal advice 17/90 OJ 1990, 260: LEGAL ADVICE FROM THE EUROPEAN PATENT OFFICE No. 17/90

Legal advice 16/85 - OJ 1985, 141

LEGAL ADVICE FROM THE EUROPEAN PATENT OFFICE No. 16/85

- OJ 1985, 141 -

Rule 69 EPC

Request for a decision after the noting of loss of rights

If the European Patent Office communicates the loss of any right in accordance with Rule 69(1) in conjunction with Article 119 EPC, the party concerned may, within two months after notification of the communication, apply for a decision on the matter by the European Patent Office (Rule 69(2) EPC). The communication in itself is not appealable under Article 106 EPC. If the time limit under Rule 69(2) EPC is not observed, the only legal possibility left open is that of restitutio in integrum under Article 122 EPC.

Communications in which the EPO notes the loss of any right in accordance with Rule 69(1) EPC contain a reference to the time limit for an application for a decision on the matter under Rule 69(2) EPC. Nevertheless, the importance of the two-month time limit under Rule 69(2) EPC is sometimes not correctly assessed by the party concerned.

2.	Apart from concluding with the grant of a patent, the procedure can terminate in two basic ways:

(a)

the European patent application is refused;

(b)

the loss of a right is noted, without any decision concerning the refusal of the application (the application is deemed to be withdrawn)¹.

Thus, a European patent application is refused, for example, if deficiencies under Article 91(1)(a)- (d) EPC are not corrected in accordance with the Implementing Regulations (Article 91(3) EPC). The Examining Division refuses a European patent application if it is of the opinion that such application or the invention to which it relates does not meet the requirements of the EPC (Article 97(1) EPC). Before doing so the Examining Division gives the applicant the opportunity to file his observations on the objections raised and, where possible, to correct those deficiencies (Articles 113(1) and 96(2), Rule 51(2) EPC).

In such cases a decision is taken concerning the refusal of the European patent application which under Article 106(1) EPC is subject to appeal within the period provided for in Article 108 EPC.

There are, however, also time limits which, if not observed, directly bring about a loss of rights. If, for example, the inventors are not designated in the European patent application and that omission is not corrected in due time, the application is deemed to be withdrawn (Article 91(5) EPC). Such loss of rights is communicated to the applicant in accordance with Rule 69(1) EPC.

The European patent application is also deemed to be withdrawn if the applicant fails to reply to an invitation from the Examining Division to file his observations on disclosed deficiencies in the European patent application within a fixed period (Article 96(2) in conjunction with Article 96(3) EPC)².

5.	The applicant is notified that a loss of rights has occurred and that he has the possibility, within two months after notification of the communication, of requesting a decision on the matter (Rule 69(1) EPC).

If the applicant considers that the finding of the European Patent Office is inaccurate he may, within two months after notification of the communication, request a decision on the matter by the European Patent Office. The communication is then reviewed by the competent authority (Receiving Section, Examining Division)³. If the EPO shares the opinion of the person requesting the decision, the communication is set aside and the said person is informed that the procedure will be continued. If, however, the European Patent Office considers that the communication is accurate, a reasoned decision is given (Rule 69(2) in conjunction with Rule 68(2) EPC). Such a decision is subject to appeal under Article 106 EPC.

If the party concerned fails to request a decision on the matter within the two-month period referred to in Rule 69(2) EPC, the finding of loss of rights is not contestable, unless the party concerned, upon application, has his rights re-established with respect to the period for requesting a decision under Rule 69(2) EPC (Article 122 EPC)⁴. The time limit under Rule 69(2) EPC has a significance for the communication of loss of rights similar to the time limit for filing notice of appeal under Article 108 EPC. If these time limits are not observed, any appeal against the communication or decision will be inadmissible.

7.	In cases where the EPC provides for the direct effect of a loss of rights, the decision subject to appeal is preceded by a communication noting the said loss. The purpose of this procedure is to simplify administration without encroaching on the applicant's rights.

If, for example, the applicant considers on receipt of the Examining Division's communication that there is no prospect of obtaining a European patent, he may let the time limit for commenting on the communication expire. He need not specifically withdraw the European patent application in writing. The application is deemed to be withdrawn on expiry of the time limit. The European Patent Office notifies the applicant of the loss of rights under Rule 69(1) EPC, and the communication need not contain any further explanation. This obviates the need to take a decision on the matter and to provide full grounds for that decision if the applicant is no longer interested in continuing the procedure but does not want specifically to withdraw the European patent application. If, however, the applicant has failed to observe the time limit in error, he has the legal possibility of requesting further processing of the European patent application under Article 121 EPC.

A balance is thereby struck between the European Patent Office's aim for an efficient and economic procedure and the applicant's need for legal certainty.

If the applicant does not file a request for a decision under Rule 69(2) EPC, he may no longer contest the communication concerning the loss of rights. The same applies to a decision in the case of which the time limit for filing a notice of appeal under Article 108 EPC has expired. The two situations are comparable in this respect. An applicant wishing to have a communication or decision reversed must file the appropriate requests within the time limits set in the EPC⁵. The decisions and communications are not subject to appeal if these time limits have expired. This is in line with general legal principles obtaining in the Contracting States, without specific need to refer back to them (Article 125 EPC). As soon as the decisions and communications are no longer subject to appeal, they are entered in the European Patent Register and published in the European Patent Bulletin if they relate to a published application (Articles 127, 129(a) and Rule 92(1)(n) EPC). From that time onwards the public must be able to rely on the entries in the European Patent Register and the publication in the European Patent Bulletin. In the event of a change in the legal position as a result of restitutio in integrum, special provision is specifically made in Article 122(6) EPC for the protection of third parties acting in good faith.

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¹	If a partial loss of rights occurs - e.g. loss of the right of priority - that loss is noted in the communication pursuant to Rule 69 (1) EPC. The European patent application will then be maintained, but the loss of the right concerned ensues.

²	The special case set out in Article 96 (1) EPC is not given as an example in this context. Further information on such cases can be found in the Guidelines for Examination in the European Patent Office, C-VI, 1.1.1 et seq.

Communications under Rule 69 (1) EPC may also be issued in the opposition procedure. If, for example, the opposition fee is not paid in due time, notice of opposition is deemed not to have been given (Article 99 (1), 3rd sentence, EPC). In general, however, the procedure under Rule 69 (1) EPC concentrates on that of grant.

⁴	If certain time limits are not observed, a request may be filed, within two months after notification of the communication under Rule 69 (1) EPC, for further processing of the European patent application (Article 121 EPC), in parallel with the request for a decision.

⁵

If the type of time limit allows a request for further processing, the request may similarly only be filed within two months after notification of the communication of the loss of rights (Article 121(1)(2) EPC). In the alternative, further processing may also be requested in addition to a main request for a decision under Rule 69 (2) EPC.