Dr. Martin P. Schmidt
English version for clients worldwide
Re-establishment of rights

Re-establishment of rights is a remedy against the loss of rights after having accidentally missed a deadline (time limit) in proceedings before Intellectueal Property Offices.

This remedy is provided for in the European Patent Convention (article 122) in proceeings before the European Patent Office (EPO), in German law (Patent Statute § 123, Utility Model Statute § 21) for proceedings before the German Patent and Trademark Office (DPMA), in the French Code of Intellectual Property (article L. 512-3 for designs, article L. 612-16 for patents, article L. 712-10 for trade marks) for proceedings before the French National Intellectual Property Office (INPI), and in European Community Law for proceedings before the Intellectual Property Office of the European Union (EUIPO).

It allows in certain cases, when a deadline has been missed accidentially, to have the rights re-established (i.e. to be reinstated in the rights as they were before the non-observance of the time limit), upon request. The request must be filed not later than two months after the removal of the cause of non-observance of the time limt, and at the latest within one year of expiry of the unobserved time limit.

The criteria that are accepted by the IP offices as a valid excuse for non-observance of the time limit may differ from one counrty to another. The same is true for the criteria used to determine the date on which the cause of non-observance of the time limit has been removed. Filing a successful request for reinstatement needs a thorough understanding of the rules of procedure, their implementation by the IP office, and the case law.

In France, the transformation of the INPI to a paperless office in Fall 2018 has led to an increasing number of accidental loss of rights, because the office progressively rejected any correspondence and payment that was not made though the electronic interface, without informing the applicant about appropriate remedies in case of transmission problems.

Our firm has filed recently requests for reinstatement for several foreign law firms who used to represent simple cases by themselves before the INPI, and who experienced unwanted loss of rights.