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Case Law of the Boards of Appeal

 
 
2. The competence of the EPO acting as designated or elected Office

A decision of an examining division of 5.6.1984 (OJ 1984, 565) pursuant to Art. 153(2) EPC 1973 in conjunction with Art. 25 PCT and Art. 24(2) PCT concerned the authority of a designated Office under Art. 24(2) PCT to maintain the effect of an international application. The applicant had missed the time limit for filing the representative's authorisation set by the Japanese Patent Office acting as receiving Office. The EPO, acting as designated Office, excused the non-observance of time limits which had been set by the receiving Office for the correction of formal deficiencies in accordance with Art. 14(1)(b) PCT in conjunction with R. 26.2 PCT (Art. 24(2) and 48(2)(a) PCT). The examining division found that the time limit under R. 26.2 PCT was comparable to time limits set by the EPO under Art. 121 EPC 1973 and granted re-establishment of rights according to Art. 122 EPC 1973 in respect of the time limit under Art. 121(2) EPC 1973.

In J 26/87 (OJ 1989, 329) the board held that if, on the proper interpretation of the request for grant of an international application, an applicant designated an EPC contracting state for which the PCT was in force on the filing date of the international application, the EPO was bound by the provisions of Art. 153 EPC 1973 to act as the designated Office for that contracting state, even if the international application was published by the International Bureau without mentioning that contracting state as a designated state.

J 19/93 also concerned the designation of EPC contracting states in an international application for the purpose of obtaining a European patent. The board pointed out that the EPO as elected or designated Office is fully competent to interpret applications appointing it to act in these capacities. The Office is not bound by the interpretation of the receiving Office or of the International Bureau (J 4/94, J 26/87).

In J 7/93 the International Bureau did not inform the EPO of its election (in the demand for international preliminary examination) within the 21-month time limit under R. 104b(1) EPC 1973 (version valid prior to 1.3.2000). The EPO issued a communication pursuant to the then applicable R. 85a EPC 1973 concerning the grace period for late payment of the fees upon entry into the European phase and then a notification of loss of rights pursuant to R. 69(1) EPC 1973. The board pointed out that both referred to the 21-month period under R. 104b(1) EPC 1973, although, in the circumstances, the 31-month period was applicable. They were considered to be legally non-existent because they could not be based on any provision contained in the EPC or in the PCT. These communications, being legally non-existent, could not have any legal effect to the party's detriment.

In the PCT request in case J 3/94 the applicant had designated a European patent under "Regional Patent" and five PCT contracting states including Germany and the United Kingdom under "National Patent". However, in the demand for international preliminary examination, filed with the EPO as IPEA, only the five PCT member states were elected; under "Regional Patent" there was no cross indicating the European patent. The applicant argued inter alia that the election of DE and GB made the EPO an elected Office by operation of law. Dismissing the appeal, the board held that the EPO did not become an elected Office in this case. One of the principles implemented by Art. 31(4)(a) PCT was that it was the applicant’s choice for which office he intended to use the results of the international preliminary examination. Furthermore, it was not only a matter for the EPC to decide whether an election made for the national route was also valid for the EPO. The validity of an election had to be decided during the international phase in order to give effect to the election. The IPEA had to examine the demand and the international authorities had to fulfil their obligations resulting from a valid election. The validity and scope of an election had to be clear not only for the applicant and the elected Office but also for the Authorities in the international phase. Its validity had to be assessed on a uniform basis by the Authorities concerned.

In J 4/94 the board had to consider whether the EPO was competent to interpret the applicant's demand for international preliminary examination differently from the United Kingdom Patent Office acting as IPEA. The board conceded that the demand was addressed to the IPEA, which was the competent body to deal with it. However, the board referred to J 26/87 (OJ 1989, 329), in which it had been decided that the interpretation of the request for grant form by the receiving Office and the International Bureau was not binding on the EPO in its function as designated Office. The valid designation put the matter within the competence of the EPO as designated Office (Art. 2(xiii) PCT and Art. 153(1) EPC 1973). In deciding on the present case, the board deviated from the interpretation by the IPEA. It found that there was a defect in the demand, which the applicant should have been invited under R. 60 PCT to correct. It held that a clear deviation by the IPEA from the intention expressed in the demand was not binding on the EPO. It was, therefore, possible for the EPO to regard itself as a validly elected Office. The consequence of this was that under R. 104b(1) EPC 1973 (as in force prior to 1.3.2000) the time limit of 31 months applied.

In J 17/99, the formerly applicable precautionary designation of EP in the international application was not confirmed within the prescribed period and was therefore regarded as withdrawn (former R. 4.9(b)(ii), (c) PCT, and Art. 24(1)(i) PCT), with the consequence that the effect of the international application under Art. 11(3) PCT - i.e. that of a European filing - ended on the same date. In declining to exercise its discretion under Art. 24(2) PCT to maintain the effect provided for under Art. 11(3) PCT, the board pointed out that, when exercising that discretion as designated Office in the present case, the EPO had to apply the same rules and principles as for identical or comparable situations arising with direct European applications (here concerning correction of designations). This non-discriminatory approach was not only a fundamental principle of the PCT itself (see, for example, Art. 26 and 48(2)(a) PCT) but also a direct consequence of Art. 150(3) EPC 1973 (see now Art. 153(2) EPC; see also J 3/81, OJ 1982, 100; J 8/01, OJ 2003, 3).

The appeal in J 3/00 concerned the question whether the Receiving Section should have rectified, under R. 82ter PCT, a purported error of the RO/EPO for the purposes of the regional phase before the EPO. The international application had been filed two days before expiry of the priority period with the description and claims by mistake in Swedish. The RO/EPO accorded as the international filing date the day of receipt of the corrected, i.e. English-language, documents (Art. 11(2)(b) PCT) and furthermore cancelled the priority claim. The applicant argued that the RO/EPO should have warned it of the deficiency. The board examined whether the filing date of the international application was incorrect due to an error made by the RO/EPO which was such that, had it been made by the EPO (as designated Office) itself, it would have to be rectified under the EPC (R. 82ter PCT). Thus, according to the constant jurisprudence of the boards of appeal concerning the protection of legitimate expectations, as confirmed in G 2/97 (OJ 1999, 123), the EPO was required to warn the applicant of any loss of rights if such a warning could be expected in all good faith. The board found the relevant conditions to be met: the deficiency was immediately identifiable on the face of the application in the course of the Art. 11(1) PCT check and the applicant was in a position to correct it at very short notice. For a further case relating to R. 82ter PCT, see J 10/04.

In case T 506/08 the EPO, acting as ISA, had issued a declaration of non-establishment of the ISR under Art. 17(2)(a) PCT. The examining division did not carry out a further search on the amended application, which it subsequently refused for lack of inventive step. At the appeal stage the applicant filed a request for a (partial) refund of the international search fee. However, the board declined jurisdiction to deal with the request. The guarantee of due process of law (cf. G 3/08, OJ 2011, 10), as invoked by the appellant, did not mean that each and every claim against the EPO was a matter for the boards (e.g. J 14/87, OJ 1988, 295; with reference to Art. 9 EPC 1973). Neither the PCT nor the Agreement between the European Patent Organisation and WIPO of 31 October 2001 provided for a refund in such a case.