Board of Appeal considers the legal basis and effect of the EPO's 2020 COVID-19-related deadline extension (J10/02)

Just over a year ago, the burgeoning COVID-19 pandemic prompted an unprecedented extension of all deadlines at the EPO (OJ EPO 2020, A29) (IPKat). Subsequent announcements in the official journal (OJ) eventually extended all deadlines to June 2020. A recently published Board of Appeal decision (J 10/20) is the first to consider the legal basis and effect of these extensions. 

The case in question involved a series of missed deadlines dating back to 2018, the last of which fell within the period of the COVID-19 extensions. In the decision, the Board of Appeal (BA) is characteristically strict on the deadlines pre-dating the pandemic, but accepted the use of the COVID-19 extension period for the final deadline. An interesting aspect of the decision is the consideration given by the BA to the legal justification for the COVID-19 extension. Reassuringly however, the BA concluded that regardless of how the extensions were legally justified, a user of the EPO should not be penalised without good reason for relying on notices published by the EPO itself. 

J 10/20 Case Background

This appeal case related to a European patent application (EP 16874169.2) directed to a method for processing soybean oil. The Brazilian applicant requested entry into the European regional phase in 2018, but failed to pay the necessary fees.  The fees were eventually paid, but the November 2018 further processing deadline for doing so was missed by 3 days. In March 2019, the applicant requested re-establishment of rights for requesting further processing but this time failed to pay the fees for the re-establishment request. 

Lockdown in Italy

The Receiving Section issued its decision in December 2019 that the request for re-establishment was deemed not to have been filed, due to the failure to pay the fees. The applicant filed an appeal against this decision in February 2020, followed by a statement of grounds in June 2020. The statement of grounds was filed after the normal deadline for doing so. 

The applicant had therefore missed three deadlines 1) the deadline for further processing, 2) the deadline for re-establishment, and 3) the deadline for filing the statement of grounds of appeal for the request for re-establishment. In the statement of grounds of appeal the applicant's Italian representative submitted that they were "still suffering heavy restrictions and difficulties due to the exceptional occurrence of the disruptions caused by the COVID-19 in Italy". 

Legal justification for the 2020 COVID-19 extension: A "general dislocation" or "a general dislocation of mail"?

In March 2020, the EPO announced an extension of all deadlines, in view of the disruption in Germany caused by the COVID-19 pandemic (OJ EPO 2020, A29) (IPKat). The extension lasted until 2 June 2020 (OJ EPO 2020, A60; IPKat). The notices mentioned Rule 134(2) EPC which provides for the extension of deadlines as a result of "a general dislocation in mail" in a contracting state. Under Rule 134(2) EPC, if the contracting state is one in which the EPO is located (i.e. Germany or the Netherlands), the extension applies to all parties. 

The appellant did not provide any reasoning for their delayed filing of the statement of grounds but, as noted above, did refer generally to COVID-19 related disruptions. The BA thus assumed that the appellant wished to rely on the Rule 134(2) EPC extension.  

On the admissibility of the appeal, the BA noted a discrepancy in the wording of the OJ notices and the wording of Rule 134(2) EPC. Particularly, the OJ referred to "general dislocation" whereas Rule 134(2) EPC refers to a "general dislocation in the delivery or transmission of mail' (r. 1.14, emphasis added). However, the BA left open the question of whether the notices can therefore be truly said to have been based on Rule 134(2) EPC. Instead, the BA found that the OJ notices none-the-less created a legitimate expectation that the extension would be permitted, regardless of whether the notices were in fact justified. A user of the EPO, the BA noted, could not be expected to question an extension officially announced by the EPO (r. 1.16). Thus, even if there was no dislocation of mail justifying the extension, "users could still rely on the information on the extension of time limits...without suffering any disadvantages" (r 1.19). 

Had the further processing fees been paid?

Article 7(3)(ii) of the Rules relating to fees provides that a late paid fee is considered to have been paid by the deadline if the payment was effected through a bank in a contracting state of the EPC. The applicant submitted that the relevant transaction had been carried out by their Brazilian bank before the further processing (FP) deadline, and that the bank had a subsidiary in London (i.e. in a contracting state). However, the BA regarded the fact that the Brazilian bank had a subsidiary in London as irrelevant. The BA noted that in Article 7(3)(ii) what matters is that the payment itself is made in a contracting state. Given that the payment was made in São Paulo, the BA found that the FP fees had not been paid in due time. 

Re-establishment of rights

The EPO has stringent criteria for allowing requests for re-establishment of rights. The party requesting re-establishment must show that "all due care" was taken to meet the deadline. The case law of the boards of appeal is strict with regards to the definition of all due care (see IPKat here). Importantly, non-EP representatives acting for a party are also under an obligation to show all due care (See IPKat here). However, in the present case, the BA of appeal did not even consider it necessary to assess the request for re-establishment of rights because the fees for the re-establishment request itself were late paid. The appeal was dismissed. 

Final thoughts

The extraordinary measures taken by the EPO during the course of the COVID-19 pandemic have been criticised for not being explicitly allowed or provided for by the EPC (see, for example, the comments on IPKat here regarding ViCo oral proceedings). The reasoning of the Board of Appeal in J 10/20 seems to suggest that the COVID-19 related extensions of 2020 could possibly be accused of not having legal basis in Rule 134(2) EPC (although the BA pointedly leaves the question open). However, this Kat would be surprised if there were many who would argue that justice would have been best served by the EPO not providing the extension, just because the general chaos at the start of the pandemic did not necessarily include "a general disruption of mail". Regardless of the merits or otherwise of these arguments users of the EPO can be reassured that, at the very least, the EPO considers itself legally bound by its own announcements.