J 0010/17 - No restoration of the right of priority
Should a European representative take a Communication from the Receiving Section regarding a "missing" request for restoration of priority during the international phase at face value, or should he have realized that - in any case - the restoration of the right of priority based on the criterion of unintentionality has no effect before the EPO as designated/elected Office - and have responded accordingly?
This appeal concerns a decision of the Receiving Section rejecting the request to reverse the finding that a European patent application does not enjoy a right of priority with respect to the claimed priority. The application had been filed as an international application under the PCT with the USPTO as receiving Office (rO). As the international application was not filed within the priority period, the applicant submitted a request for restoration of the right of priority with the rO. The rO decided to restore the right of priority based on the finding that the failure to file the international application within the priority period had been "unintentional".
After entry of the application into the European phase, the Receiving Section of the EPO issued a reminder communication stating (by ticking of corresponding boxes) that "a request for restoration of the right of priority pursuant to Rule 49ter.2 PCT is necessary for the following reasons: No request for restoration of the right of priority has been filed pursuant to Rule 26bis.3 PCT during the international phase". A time limit was set by the Receiving Section.
By return letter, the applicant's representative stated that "the request for restoration of the priority right was already filed in the international phase ... and duly granted by the Receiving Office". The Applicant requested confirmation of the priority right being in force.
The EPO then issued a notification of loss of rights under Rule 112(1) EPC stating that the "decision by the receiving Office to restore the right of priority based on the criterion of unintentionality has no effect in proceedings before the EPO (R. 49ter.1(b) PCT) and no valid request under Rule 49ter.2 PCT has been filed". In an accompanying letter, the Receiving Section took the view that, even though the incorrect box had been crossed in the reminder communication, the intention of reminding the applicant had been expressed.
It was pointed out that this reminder communication had also stated that the decision of the receiving Office to restore the right of priority based on the criterion of unintentionality has no effect in proceedings before the EPO. The item had not been crossed but the professional representative should have been aware of this position of the EPO.
The applicant requested a decision from the Receiving Section and appealed this decision. In the statement setting out the grounds of appeal, the appellant referred to the incorrect information given in the reminder communication and argued that the principle of legitimate expectations should apply in the present circumstances. The appellant requested that the decision under appeal be set aside and asked "to receive a new, corrected invitation for filing a request for restoration of the right of priority including a new time limit".
The Board found that the mistaken information in the EPO communication (that no request for restoration of the right of priority had been filed in the international phase) had no bearing on the conduct of the European representative as to whether a request should have been filed in the European phase in the absence of proof of the alleged instruction. In the absence of such an established link between the erroneous information and the loss of the priority right, the principle of legitimate expectations cannot apply. Accordingly, the finding of the Receiving Section that the application does not enjoy a right of priority was found justified.
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