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Case Law of the Boards of Appeal

 
 
3.8.2 Correction of the withdrawal of the application under Rule 139 EPC

In J 4/97, the applicants informed the EPO three days after withdrawal that their request had been made erroneously and should be cancelled. The EPO informed the applicants that the withdrawal had come into force and was binding, and notification of the withdrawal was later published in the European Patent Bulletin. However, the board held that the withdrawal of the application could be corrected under R. 88 EPC 1973. The legal considerations contained in J 10/87 concerning the retraction of a withdrawal of a designation of a contracting state applied equally to the withdrawal of a patent application as a whole. In particular, it had to be ascertained that the withdrawal had been due to an excusable error, that there was no undue delay in seeking retraction, and that the retraction of the withdrawal had not adversely affected the public interest or the interests of third parties.

In the circumstances of the case at issue, the board held that the mere fact that the withdrawal was retracted after only three days was a strong indication that it had indeed been made in error. The error resulted from confusion between two similar reference numbers assigned by the appellants to their patent applications. In the board's opinion this mistake could be considered as an excusable oversight. The public interest was not affected because the withdrawal was retracted before the corresponding entry was made in the Register of European Patents and more than six weeks before the withdrawal was officially notified to the public in the European Patent Bulletin. Thus, at the time the general public was informed of the withdrawal, the public part of the file clearly showed that a request for cancellation of the withdrawal had been filed thereby warning third parties relying on the information published by the EPO. The interests of third parties could be protected if a national court applied Art. 122(6) EPC 1973 mutatis mutandis.

In J 14/04 the board rejected the request for correction of the withdrawal of the application. It agreed with J 10/87 that the public interest lay in being able to rely on information officially published by the EPO. However, the board took the view that the Register of European Patents constituted an official publication (see also J 37/03 and J 38/03), and as, at the time of the request for withdrawal, access to the Register was freely offered to the public on the Internet, the request for withdrawal was available to the public on the date the Register indicated the request for withdrawal was recorded. It was of no relevance whether the file was actually consulted on this date. Nor did the board consider that Art. 122(6) EPC 1973 could apply mutatis mutandis to cases of correction under R. 88 EPC 1973.

The Legal Board held in J 25/03 (OJ 2006, 395) that entries in the Register of European Patents also amounted to notification to the public from the day of their publication as well as publication in the European Patent Bulletin. The board rejected the request for correction of the withdrawal of the patent application and added that it was of no relevance that only four days had elapsed between mention of the withdrawal in the Register and mention of the request for retraction of the withdrawal. Legal certainty would suffer unacceptably if further delay were permitted for retraction of the withdrawal in such circumstances where even after inspection of the complete file there would not have been any reason for a third party to suspect, at the time of the official notification to the public of the withdrawal, that the withdrawal could be erroneous and later retracted.

In J 19/03 the Legal Board decided that the notice of withdrawal did not contain a relevant error or mistake which could be corrected under R. 88, first sentence, EPC 1973. The board found that under R. 88, first sentence, EPC 1973, it was not sufficient to prove that a divergence had occurred between the true intention of the applicant and the declaration filed by its representative; rather it was additionally required that this divergence was caused by an error of the person who was competent to make the decision on the procedural act before the EPO. Therefore, as a rule, in cases where the party was represented by a professional representative the error pursuant to R. 88 EPC 1973 must be an error of the representative in expressing his own intentions. This requirement was not met in the case in point.

In J 4/03 the Legal Board noted that the request for retraction of the withdrawal of the application had been made after notification of the withdrawal in the European Patent Bulletin, the means of official publication of the EPO. That meant that the public had already received the information that the application no longer existed so that the principal precondition for allowing a correction was not met (see also J 7/06).

In J 10/08 the matter to be dealt with was the request of the appellant to retract this withdrawal under R. 139 EPC (2007) because it was, according to the appellant, made erroneously. This rule allowed correction of errors in documents filed with the EPO, these errors being defined as linguistic errors, errors of transcription and mistakes. In the case under consideration the document filed with the EPO did not show any kind of such an error. The error was not of a factual kind but of a mental one. Therefore it had to be examined whether the correction of such an error could also be subsumed under R. 139 EPC (2007). The board noted that the boards of appeal have dealt with this question in a great number of decisions. One of those decisions on the question of a possible retraction of a procedural declaration was J 10/87 (OJ 1989, 323) with reference to earlier decisions. In this decision the board developed the preconditions under which a correction of a procedural declaration might be allowed, namely that the public had not been officially notified of the withdrawal by the EPO, that the erroneous withdrawal was due to an excusable oversight, that the requested correction would not delay the proceedings substantially and that the interests of third parties who might have taken note of the withdrawal by inspection of the file were adequately protected. The board accepted that it was not the intention of the appellant in the case before it to withdraw the application but that this was due to a misunderstanding between the various representatives of the appellant dealing with the case. In the case at issue, the board concluded that the public would not have been misinformed or misled by the information published in the European Patent Register and the withdrawal of the application could be retracted in the case before it by correction under R. 139 EPC (2007).

In T 1673/07 the appellant argued that it should be allowed under R. 88 EPC 1973 (which corresponds to R. 139 EPC) to resile from the withdrawal of the designation of Germany and France, since it had been made under an erroneous assumption. The board, however, stated that, according to the established case law of the boards of appeal, one precondition for such a retraction was that the relevant request be made before the withdrawal has been officially notified to the public (see e.g. decisions J 15/86, OJ 1988, 417 and J 25/03, OJ 2006, 395). This was in the interests of legal certainty and balancing the interests of the applicant and of third parties, in particular in being able to rely on information officially published, and was an objective criterion which applied irrespective of the true intentions or mindset of the person who had made the relevant statement. In the case at issue the withdrawal had been published in the European Patent Bulletin about half a year before the validity of the withdrawal of the designations was contested for the first time. In conclusion, the withdrawal of the designation was valid and could not be retracted.

In J 1/11 it was not disputed by the appellant that retraction of the withdrawal was no longer possible once the withdrawal had been published in the European Patent Bulletin. The question at issue was whether a publication of the withdrawal in the European Patent Register should have the same legal consequences. The appellant argued that, despite the technical and functional approximation of Register and Bulletin, only the latter carried the presumption of an official publication. The board noted that both the European Patent Register according to Art. 127 EPC and the European Patent Bulletin according to Art. 129(a) EPC were official sources of information to the public. There was nothing that would allow a distinction as to which of the two was more official, reliable or decisive. This was not to say that the Bulletin had no functions other than those of information. Contrary to what the appellant alleged, entries into the Bulletin were no more "cast in stone" than those of the Register, and could be corrected either under R. 140 EPC, or by way of a decision. As far as the function of providing information to the public was concerned, the board was unable to deduce a fundamental difference between the Register and the Bulletin. In conclusion, the board decided that the appellant's requests for retraction of the withdrawal of its application as a correction of an error under R. 139 EPC had to be refused.