PTO expected to relax its approach to restoration applications

The Board of Appeals of the Italian Patent and Trademark Office (PTO) has reversed a PTO decision and allowed an application for restitutio in integrum (restoration to original conditions) filed on behalf of a German company (Decision 19/08 of 30th January 2008, filed on 16th April 2008 with the clerk of the board).

The German company had failed to meet a deadline to request the validation of its European patent in Italy. The request for validation was filed after the official deadline had expired, jointly with an application for restoration, arguing that the Italian representatives missed the deadline due to an officially-attested power failure which affected their premises and prevented the input of the necessary data on their computer system.

The PTO Board of Appeals ordered the restoration on the following grounds: 

• the Italian professional representatives involved in the case enjoyed a reputation for reliability; 
• the circumstances were exceptional; 
• the event was isolated; and 
• to allow an application for restoration, Article 193 of the IP Code requires only that proof be submitted that the degree of diligence required by the circumstances has been applied.

This last ground departs from previous practice, which required that the petitioner prove that its failure to meet the deadline was due to a “bar not apt to being overcome notwithstanding the maximum diligence applied”.

It is expected that the decision, which has been welcomed by practitioners, marks the beginning of a more liberal approach by the PTO to applications for restoration.