Re-establishment of rights

Re-establishment of rights, or restitutio in integrum, is the mechanism that allows an applicant for or proprietor of a patent who has failed to observe a time limit, and has thereby lost a right, to have that right re-established if it shows that all due care required by the circumstances was taken. Before the European Patent Office (EPO), it is provided for by Article 122 of the European Patent Convention (EPC) and Rule 136 of its Implementing Regulations. French law has a comparable mechanism before INPI, the restoration request (recours en restauration), which requires a legitimate excuse to be shown.

Conditions before the EPO

The request must be filed within two months of the removal of the cause of non-compliance, and at the latest within one year of expiry of the unobserved time limit. The omitted act must be completed within the same period and the fee for re-establishment paid. The requester must set out the facts and file evidence showing that the failure occurred in spite of all due care having been taken. The case law of the Boards of Appeal is demanding: an isolated mistake is excusable only if it occurs within an otherwise satisfactory system for monitoring time limits, and due care is assessed with regard to the applicant, its representative and the assistants to whom they delegated tasks.

Scope of re-establishment

Re-establishment is subsidiary. It is excluded for time limits in respect of which further processing, a simpler mechanism, is available, and for the time limit for filing the request for re-establishment itself. It mainly concerns time limits for paying renewal fees, time limits for appeal and the priority period. For the latter, the request must be filed within two months of its expiry. The mechanism is reserved for the applicant and the proprietor, so that an opponent cannot rely on it for the opposition period.

Protection of third parties and other regimes

A person who, in good faith, has begun to use the invention or has made effective and serious preparations to do so during the period between the loss of rights and publication of the mention of re-establishment may continue such use free of charge, under Article 122(5) EPC. The restoration request available before INPI follows a similar logic, with comparable time limits, and likewise preserves the rights of third parties acting in good faith. Finally, the Rules of Procedure of the Unified Patent Court provide for re-establishment of rights in respect of the time limits they set.

Key points

Re-establishment of rights is an exceptional remedy, granted only to those who demonstrate a rigorous organisation for monitoring their time limits. It should not be confused with further processing, which is simpler and requires no justification, where the latter is available. Action should be taken within two months of discovering the omission, a file of evidence on the monitoring system in place should be assembled immediately, and the omitted act should be completed within the same period.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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