tag:blogger.com,1999:blog-8990057754240336385.post7316996303592686782..comments2024-02-27T09:18:36.160+01:00Comments on DeltaPatents Case Law blog: T 1402/13 - Deemed to be withdrawn as no renewal fee paid, but when?DeltaPatentshttp://www.blogger.com/profile/07830354704918972593noreply@blogger.comBlogger14125tag:blogger.com,1999:blog-8990057754240336385.post-89429092714861606842017-01-09T10:22:32.536+01:002017-01-09T10:22:32.536+01:00R51(2) is now amended as ""If a renewal ...R51(2) is now amended as ""If a renewal fee is not paid on the due<br />date under paragraph 1, the fee may<br />still be paid within six months of the<br />said date, provided that an additional<br />fee is also paid within that period. The<br />legal consequence laid down in<br />Article 86, paragraph 1, shall ensue<br />upon expiry of the six-month period." OJ 2016 A102<br />I think the situation is more clear now.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-38837413109342417812016-10-13T13:17:02.340+02:002016-10-13T13:17:02.340+02:00My approach would be, for the EQE: mention GL 2016...My approach would be, for the EQE: mention GL 2016 as well as T 1402/13, explain both, and conclude that you follow the Guidelines. For pre-exam: if you are sure that this is the issue the question is about, don't think about it, follow the Guidelines, and diarize the time limit for an appeal.Peterhttps://www.blogger.com/profile/01894818186743773612noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-60748168581294832042016-10-13T12:33:50.381+02:002016-10-13T12:33:50.381+02:00The situation is even less clear, I suppose. Does ...The situation is even less clear, I suppose. Does anyone have a suggestion regarding how to answer such a question within the EQE exam (or pre-exam)? I suppose this is not a major problem for paper D, where you can argue as long as you can, but what about the pre-exam, where a yes or no is required? The Boards are binded only by the Covnention and hence the GL follow the way at which the decisions are pointing to. What is the best to use as the most solid ground when answering such questions in exams? The Guidelines, the Boards decisions, or the Case Law as whole?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-16411461378830594662016-10-10T10:39:08.223+02:002016-10-10T10:39:08.223+02:00No changes were made to GL A-IV, 1.1.1 in the Nove...No changes were made to GL A-IV, 1.1.1 in the November 2016 edition after T 1402/13 was issued.The Guidelines of Novenber 2016 still consider the application deemed to be withdrawn at the end of the 6 month period of R.51(2):<br /><br />In the event of non-payment of a renewal fee by the due date (Rule 51(1)), the application is pending up to the last day of the six-month period for payment of the renewal fee with an additional fee (Rule 51(2)), and a divisional application may still be filed during this period – even if the fees are ultimately not paid. Deemed withdrawal of the application takes effect on expiry of the six-month period.<br /><br />Once the application is deemed to be withdrawn, a divisional application can only be validly filed if the loss of rights, as communicated pursuant to Rule 112(1), is subsequently remedied. In such a case, the application is deemed to have been pending throughout.Roel van Woudenberghttps://www.blogger.com/profile/15823355175016282250noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-18575397251492070642016-07-07T12:24:13.749+02:002016-07-07T12:24:13.749+02:00EPO Form 2522 12.15 "Notice drawing attention...EPO Form 2522 12.15 "Notice drawing attention to |Ruke 51(2) EPC" is very clear - and the applicant can rely on information given by the EPO (Good faith):<br /><br />"If the renewal fee and the additional fee are not paid in due time, the European patent application shall be deemed to be withdrawn (Art.86(1) EPC).<br /><br />See e.g. https://register.epo.org/application?documentId=EY56SNPT9093DSU&number=EP07107528&lng=en&npl=false<br />Roel van Woudenberghttps://www.blogger.com/profile/15823355175016282250noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-76740475427823184902016-07-01T09:28:55.934+02:002016-07-01T09:28:55.934+02:00Yes it's not in the list of grounds, but there...Yes it's not in the list of grounds, but there might still be ways around that. A first option that springs to mind is arguing that in view of Art. 76(1) and R. 36(1), the application would not be entitled to the filing and priority date of the application and proceed under the ground of novelty. It's far from ideal, as there is no real option to attribute another filing date to the divisional application, but it might still be worth a shot and there might be other options as well.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-80099073419949454482016-06-30T21:46:24.820+02:002016-06-30T21:46:24.820+02:00It should be sufficient to revert the wording of R...It should be sufficient to revert the wording of R. 51(2) to that of Art. 86(2) EPC 1973.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-64003165762303204882016-06-30T21:41:30.749+02:002016-06-30T21:41:30.749+02:00In opposition and revocation proceedings the argum...In opposition and revocation proceedings the argument has no chance. The grounds for revocation are exhaustively listed in Art. 100 EPC (opposition) and Art. 138 EPC (national revocation).Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-65738844712652109372016-06-30T15:07:07.310+02:002016-06-30T15:07:07.310+02:00The Board has a very good point: the articles and ...The Board has a very good point: the articles and rules are clear. A logic and normal reading states that the application is deemed withdrawn on the due date (i.e. at the start of the grace period). The only possible reason to consider the application to be still pending during the grace period can be found in the Travaux Préparatoires. During my EQE preparations, it actually took me a quite some time before I could find a legal basis for the current approach of the EPO. <br /><br />Having EPO practices that conflict with the normal/logical reading of the articles and rules is to be avoided. I assume that the EPO will have to change its current practice. Amending the EPC will take time and there seems to be limited benefit in doing so.<br /><br />The major issue now is, indeed, what the effect will be for divisionals that have been filed in accordance with the guidelines. I would not hesitate to use the argument in revocation proceedings, but there is indeed the principle of legitimate expectations...Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-24269367405836579222016-06-30T13:23:21.901+02:002016-06-30T13:23:21.901+02:00Indeed, but still the Case Law gives the big pictu...Indeed, but still the Case Law gives the big picture here.<br />http://www.epo.org/law-practice/legal-texts/html/caselaw/2013/e/clr_iii_s_1.htm<br /><br />Perhaps the Board wanted to ensure that there will be no new trend, wherein an applicant does not pay the extra fees of the grace period, yet takes advantage of this extra time period for its own reasons.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-20197887817156871362016-06-29T13:03:30.520+02:002016-06-29T13:03:30.520+02:00But what about the orinciple of protecton of legit...But what about the orinciple of protecton of legitimate expectations?<br /><br />Guidelines (November 2015), General Part, 3: as a general rule, parties can expect the EPO to act in accordance with the Guidelines until such time as they – or the relevant legal provisions – are amended. Notices concerning such amendments are published in the Official Journal of the EPO and on the EPO website.<br /><br />The clear statement in the Guidelines about when the loss-of-rights occurs / the pendency ends, which is fully consistent with the statements given by the EPO when the EPC was amended, seems to be a very solid ground to base your expectations on as applicant!!Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-73180695123476812672016-06-29T09:21:44.303+02:002016-06-29T09:21:44.303+02:00Would it be enough to amend the implementing regul...Would it be enough to amend the implementing regulations?<br /><br />The board seems to say that Art. 86(1) requires an application to be deemed withdrawn from the moment the renewal fee isn’t paid at the regular time. Implementing regulations can’t contradict the convention (Art. 164(2)). <br /><br />On the other hand, art. 86(1) says that renewal fees shall be paid ‘in accordance with the Implementing Regulations’. So maybe it would be enough if the Rules are explicit on this point. <br /><br />We’ll probably never know though, because I don’t see the Administrative Council stepping in to change this.<br />Sander van Rijnswouhttps://www.blogger.com/profile/08074604101159694993noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-21670411757078053772016-06-28T22:39:34.681+02:002016-06-28T22:39:34.681+02:00" the drafters failed to incorporate such a p..." the drafters failed to incorporate such a provision into the Implementing Regulations" - I wonder why. Hopefully the EPO and Administrative Council will finally amend the Implementing Regulations. Let's also hope that the incorrect filing of divisionals during a grace period of the parent is not a ground for revocation. WTGJnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-69431338158988235202016-06-28T11:58:48.099+02:002016-06-28T11:58:48.099+02:00I think it is not the first time that a BoA makes ...I think it is not the first time that a BoA makes it clear that it is not binded by the Guidelines, but only from the EPC.Anonymousnoreply@blogger.com