Wednesday, 16 March 2011

Sufficient substantiation for re-establishment of rights J15/10

An instructive case on how to substantiate (better: how to better not substantiate) a request for re-establishment of rights at the EPO was discussed in K's Law today. This is what happened:

"But even if the [applicant’s] letters dated 14 July 2009 and 7 December 2009 were to be taken into consideration, these submissions would not remedy, but on the contrary would confirm, the inadequate substantiation of the initial request for re-establishment. In his letter of 14 July 2009, i.e. more than three months after the filing of the request for re-establishment and well after the expiry of the period for requesting re-establishment of rights, the [applicant] submitted as a new element of fact that his representative had been responsible for giving renewal advice to DWI. The [applicant] contended that the representative had discharged his duty by sending a reminder for payment on 16 December 2008. In response to the communication pursuant to A 113(1) dated 28 September 2009, the [applicant] introduced a further element of fact by arguing that his representative had had no reason to verify payment by DWI at the end of December 2008, because the time limit for payment had been observed by DWI in the previous years. On the other hand, the [applicant] no longer relied on a misunderstanding on the part of DWI as the reason for non-observance of the time limit. The [applicant] did not advance any other fact or obstacle that had prevented the payment of the renewal fee by DWI and could be regarded as pertinent for excusing the omission. Instead, he acknowledged in his letter of 7 December 2009 that “the payment of the renewal fee for the EP-application was forgotten by DWI” (cited from the decision).  

Misunderstanding or obliviousness? The board found:

"The variation in the [applicant’s] submissions and the resulting diversity of conceivable explanations for the omission show that the initial request for re-establishment did neither set out or substantiate in sufficient detail the core facts making it possible to consider whether all due care required by the circumstances had been taken to comply with the time limit concerned." (cited from the decision).

What to learn? Better tell the whole story in all detail from the onset. 

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