The Swiss Federal Institute of Intellectual Property (IGE) on 31 October 2012 decreed the expiration of an EP patent due to non-payment of annuities. The previous and still registered Swiss representative of the claimant to whom the notification had been sent forwarded said notification to the German representative. The German representative claimed to have, on 21 December 2012, inquired about the opening hours between 27 December 2012 and 31 December 2012of the Swiss representative’s offices and to have, on 26 December 2012, instructed the Swiss representative via telephone answering machine to pay the annuity in question; hereby a wrong patent number had been named. The Swiss representative, who heard the German representative’s Message on 27 December 2012, noted that the deadline for the named patent number was due later and took no immediate action, such that the deadline of 31 December 2012 passed without any action having been taken.

On 4 January 2013 the error concerning the patent number was solved between the two representatives. On 4 March 2013 the claimant applied for reinstatement into the term for payment, alternatively for reinstatement into the term for further processing. The IGE did not allow this claim, as notified on 4 July 2013. Following a corresponding request for reconsideration the IGE revoked its former decision on 23 July 2013, rejected the request and again did not allow the claim, however, on different grounds. Hereupon the claimant filed an appeal with the federal administrative court (Bundesverwaltungsgericht). The subject of the case before the federal administrative court was solely the original subsidiary motion for reinstatement of the term for further processing.

The federal administrative court asserted unlimited verifiability of the order for reconsideration of 23 July 2013 as the first order had been revoked and the latter had been based on different grounds. The patent owner may claim a reinstatement into the previous status according to Art. 47 PatG if he can convincingly prove that he was prevented from complying with the deadline due to no fault of his own. The request for reinstatement shall be lodged within two months after abolition of the impediment, latest, however, within a year from the failed deadline. The federal administrative court referred to the fact that the claimant had remained inactive for two months despite having received the notification of cancellation, because he had waited for the result of a German lawsuit, which could have rendered the patent ineffective. The deadline for reinstatement had thus elapsed on 4 March 2013.

The federal administrative court based an alternative statement of grounds on the occurrence of errors in the time of Christmas/New Year 2012. Because the German representative should have, in order to maintain due diligence, inquired about the state of the matter as early as 27 December 2012, the impediment, according to the court, can from this day on no longer be regarded as no fault of the representative. The impediment, thus, is to be regarded as having ceased to exist, in a manner that the term of two months ending on 4 March 2013 is, from this point of view, again inapplicable.

(Decision in legal matter B-5168/2013, 9 December 2013)