Restitutio in integrum: a recent Board of Appeals decision

The Board of Appeals of the Italian Patent Office recently issued Decision 19/07, which reaffirmed the following principles:

  • The law applicable to an appeal is that which was in force at the time of the first-instance rejection of the petition for restitutio in integrum (restoration to original condition), rather than the law which was in force when the failure to comply with a deadline occurred or on the date of filing of the original petition.
  • Article 193 of the Industrial Property Code requires, as a precondition for restitutio in integrum, that the parties have exercised the “diligence required by the circumstances”. This precondition is not met where “the patent holder chooses a substitute which is not provided with adequate means for the task with which it is entrusted”.
  • The two-month term for filing a petition for restitutio in integrum does not start running from the date of cessation of an impediment. Rather, with reference to Article 78 of the EU Community Trademark Regulation, the term starts from the date of “cessation of non-compliance” (ie, the date of the belated implementation of the action), provided that this date is no more than one year after the expiration of the implementation deadline.
  • The applicant has the burden of proving that the substitute (ie, the Italian representative and/or the computer renewal service company entrusted with payment of the annuities) has adequate means to carry out the task entrusted to it, and that its professional history does not conflict with the proof of these means. Access to restitutio in integrum shall be denied if the applicant fails to prove this.

Ultimately the board rejected the appeal, since the appellant: 

  • did not prove the substitute’s means; 
  • did not show documentary evidence of the procedures adopted by the substitute in managing its files; and 
  • did not satisfy the burden of proving that no incidents had occurred that conflicted with the proof of the substitute’s means.

In addition, the board stressed that the fact that one of the substitutes (ie, the computer renewal service company) was equipped with software that was inadequate as it did not comply with the specific Italian provisions constituted proof that the substitute was unable to comply with the requirement of “diligence required by the circumstances”.

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