Turning back the clock for a restoration request (J 14/21)

The decision of the Board of Appeal in J 14/21 is yet another example of an applicant losing their European application due to a lack of due care by a non-EP representative. In this case, the US attorney responsible for filing the PCT application failed to take account of the stringent "all due care" requirement for the restoration of the right to claim priority. Instead, they advised the applicant that they could rely on the "unintentionality test" used in other jurisdictions. Aside from this cautionary tail (meow), the decision is also interesting for its exploration of an unusual interaction between EP and PCT provisions. Particularly, the interaction between the EP provisions permitting further processing of the deadline for EP regional phase entry, and the PCT provision for the deadline for requesting restoration of the right to claim priority. 

Case Background: Missed deadline for claiming priority

Turning back the clock

J 14/21 related to an appeal of a decision from the Examining Division to refuse a request for the restoration of the right to claim priority for European patent application EP 19749424.8. The European patent application was derived from a PCT application claiming priority from a US provisional for which the 12 month deadline for claiming priority was missed. The PCT application was filed at the International Bureau (IB) of the WIPO within 2 months of the missed deadline together with a request for restoration for the right to claim priority, as provided for by Rule 26bis.3(a) PCT. 

What went wrong?

The request for restoration explained that the applicant had filed the PCT application without professional advice and that it had been mailed to the IB with insufficient postage, such that it did not arrive by the deadline. 

To file the PCT application, the applicant relied on a "one-man" patent firm in the US. On the day of the deadline to file the PCT application, the applicant sent an urgent email to the attorney asking for the application to be filed. However, the attorney was travelling at the time without access to emails and the application was not filed. 

The US attorney had previously advised that if the filing deadline was missed, restoration of the right to claim priority was possible. It is true that the WIPO will grant a request for restoration of a right to priority on the basis that the deadline was missed unintentionally, and in this case the IB did accept a restoration request for the international application. However, decisions by the WIPO to restore the right of priority according to the unintentionality test have no effect with respect to a EP regional phase application. 

For restoration of rights after a missed deadline, the EPO uses the more stringent "all due care" test. Particularly, the relevant deadline must have been missed despite all due care having been taken by the applicant and their representatives (Article 122 EPC). An applicant wishing to restore a right to claim priority for a EP regional phase application must therefore file another request for restoration at the EPO within 1 month of the 31-month deadline for regional phase entry.

Missed deadline for regional phase entry and requesting restoration of the right to priority

The applicant in the case subsequently failed to meet both the 31-month deadline for entering the EP regional phase (Rule 159 EPC) and the deadline for requesting restoration of the right to priority (1 month from the deadline for regional phase entry (Rule 49ter.2(b)(i) PCT)). The applicant was however granted further processing for the missed deadline for entering the EP regional phase (Article 121 EPC). Further processing is granted following timely payment of the further processing fee and completion of the omitted act. 

A request for restoration for the right to claim priority was filed at the same time as the request for further processing. However, critically, further processing is not directly available for the deadline to request restoration of the right to priority. 

The question thus became whether the granted further processing for the deadline for entering the EP regional phase affected whether the deadline for requesting restoration of the right to claim priority had or had not been met. 

Retroactive effect of further processing for regional phase entry

As noted by the Board of Appeal in the case in question, there is no explicit legal basis for any interaction between further processing for the deadline for regional phase entry and the deadline for requesting restoration of the right to claim priority. However, the EPO Guidelines for Examination indicate that the grant of further processing for regional phase entry (Rule 159 EPC) retroactively permits late filing of a request for the restoration of the right to priority (Rule 49ter.2(b)(i) PCT) (r. 4). In such cases, the Guidelines state that the request for restoration of priority should be filed before or at the same time as the request for further processing (EPO Guidelines for Examination, E-IX, 2.3.5.3(iii)). In practice therefore, the Guidelines indicate that a decision by the EPO to grant a further processing request for the 31-month deadline for regional phase entry effectively "turns back the clock" with respect to the deadline for requesting restoration of the right to priority. 

The EPO Guidelines are based solely on an "Understanding" of the PCT rules (PCT/R/WG/7/13) adopted by the PCT Assembly on the interpretation of the PCT Rule relating to the restoration of a priority right (Rule 49ter.2(b)(i) PCT). The PCT Assembly, which consists of delegates of the PCT contracting states, may be considered "the legislator" for the purpose of interpreting the PCT Rules. Nonetheless, as noted by the Board of Appeal in the present case, "Understandings" of PCT Rules cannot have the same legal effect as amendments to the Rules themselves, especially given the limited access to "Understandings" by PCT users. 

Should the Understanding of the PCT Assembly therefore be used to interpret the PCT Rule on restoration of the priority right as applied by the EPO? The Board of Appeal concluded in J 14/21 that it could. After all, the Board of Appeal reasoned, the applicants' legal position would not have been impaired even if they had been completely unaware of the "Understandings" (r. 21). The Board of Appeal thus found that the request for restoration had been timely filed (r. 22). 

Late-filed arguments

The request for restoration was therefore deemed to have been validly filed by the EPO. However, as in most cases of restoration, the applicant still faced an uphill battle to convince the EPO that all due care had been taken not only by themselves but by their representative. 

In attempting to prove that the US attorney had taken all due care the applicant argued that, when originally filing the PCT, the applicant had not intended to enter the EP regional phase. Instead the applicant had intended to focus the international application on the US and Eurasian markets. As such, it was argued, the US attorney's advice regarding the ability to rely on the "unintentionality test" was justified. 

The Board of Appeal considered these submissions to have been late-filed as they were an embellishment (and in some respects a contradiction) of the applicant's original case. Furthermore, even if they had been taken into account, the Board of Appeal found that they would not have influenced their decision. The representative, it was found, should not have gone on a weekend trip without confirming the applicants instructions, and they should not have given the applicant the impression that the priority right could easily be restored, even if the application were filed only in jurisdictions operating on the "unintentional" criterion. 

Further reading on "all due care"

• Carpmaels & Ransford sued for missed appeal deadline (27 June 2021)
• What is all due care in stressful situations? (T 0600/18) (30 March 2020)
• Re-establishment: An isolated error in a well-functioning system may not be equivalent to all due care (J 05/18) (27 June 2019)