Tuesday, April 18, 2017 J 23/14 - Pendency revisited: the 6-month period for paying the renewal fee with an additional fee

Just after the Guidelines explicitly indicated that a patent application is still pending for the purpose of filing a divisional until the expiry of the 6-month period for paying the renewal fee (even if that fee is not paid), T 1402/13 ruled that the deemed withdrawal of a patent application occured if the renewal fee was not paid at the due date - and that the patent application was thus not pending in the 6-month period if the fees were ultimately not paid (see our earlier blog). Shortly after T 1402/13, R.51(2) was amended (per 1/1/2017) for clarification by addition of a last sentence "The legal consequence laid down in Article 86, paragraph 1, shall ensue upon expiry of the six-month period." The current J-decision addresses the topic again, and refers to the EPC1973 situation, the explanatory notes of EPC2000's drafting, the distinguishing T 1402/14, R.51(2) as amended per 1/1/2017, and EPO form 2522, which was sent to the party in the present case and clearly states that a patent application is deemed withdrawn only upon expiry of the six-month grace period for paying the renewal fee with additional fee. This J-decision concludes as follows: Notwithstanding the wording of Article 86(1) EPC 2000 and Rule 51 EPC (in the version in force until 31 December 2016), for the sake of the protection of legitimate expectations of the users of the European patent system, the Board holds that a patent application is deemed to be withdrawn only upon expiry of the six-month grace period for paying the renewal fee with additional fee under Rule 51(2) EPC, in accordance with the jurisprudence that prevailed before decision T 1402/13. The current decision addresses whether the loss of rights occured due to the missing of a period -as that is a prerequisite for re-establishment-, when the period that led to the loss of rights expired, and also when the removal of the cause of non-compliance occured.

Thursday, October 07, 2010 G1/09 - an elegant definition of "pending"

The Enlarged Board has now decided how "pending" is to be interpreted.

By change the definition, they have introduced a flexible system that should result in fewer cautionary divisionals (pleasing the EPO), possibly fewer oral proceedings (again pleasing the EPO), and elimination the need to file an appeal after a refusal to be able to file a divisional (pleasing applicants and saving them money - at least the EUR. 1180 and any attorney handling fees)

Pending is surprisingly defined around Art.67(4) - its lack of importance in the past being demonstrated by the few lines of explanation in reference books such as Visser.

After refusal:
Reason 4.2.4 states that an application is considered pending [R.36(1)] until the expiry of the period for filing an appeal. So it is no longer necessary to file an appeal just to be able to file a divisional

Reason 4.2.6 clarifies that there is no difference anymore between a decision in oral proceedings and a decision in written proceedings. In both cases, the appeal period runs from the written notification of the decision.

So, it is no longer necessary to file a precautionary divisional prior to oral proceedings - if the decision is not favourable, you have plenty time afterwards to decide whetehr to appeal or to file a divisional.

Also, if you request oral proceedings merely to prevent being surprised by a written decision, that is no longer necessary. After receiving the decision, there will be at least 2 months to file a divisional and/or to appeal.

But the applicant (and his representative) cannot completely relax: it is still necessary to have at least one of the 24 month periods of R.36(1) running to be able to validly file the divisional.