Zusammenfassung von EPC2000 R 139 für die Entscheidung T0695/18 vom 03.03.2023

In T 695/18 the appellant (applicant) had filed a letter on 28 September 2021 which read, among other things: "[w]e herewith respectfully inform the Boards of Appeal that the Applicant herewith withdraws the appeal. A partial refund of the appeal fee is requested". The board considered that the appellant had withdrawn its appeal and the appeal proceedings were accordingly closed without a substantive decision. The appellant requested a correction of its appeal withdrawal. However, considering that the appeal proceedings were terminated, the board held that it was not competent to deal with that request. The Enlarged Board re-opened the proceedings by decision R 3/22. It held that the board had implicitly decided on the appeal without deciding on the request for correction. The Enlarged Board observed that according to the case law (with reference to the Case Law of the Boards of Appeal, 10th ed. 2022, V.A.7.3.7), the success of such a request could not be ruled out a priori, and if the request was successful, a decision on the merits would have been possible. The board's refusal to decide on this request was seen as a fundamental procedural defect under Art. 112a(2)(d) and R. 104(b) EPC. The first question to answer for the board was how Art. 112a(5) and R. 108(3) EPC were to be interpreted and, consequently, how the order of the Enlarged Board was to be understood. The board held that there was nothing textual in the EPC to suggest that the proceedings re-opened by the Enlarged Board in the present case were the appeal proceedings. If the appeal proceedings were intended, those proceedings and thus the application would be pending again. In the board's view, that would also make no sense from a contextual point of view. The board thus saw the Enlarged Board's order in R 3/22 as one that opened "ancillary proceedings" for establishing whether the request for correction was allowable: if the request were found allowable, the appeal proceedings would continue; if not, the appeal proceedings would be regarded as terminated as of the date when the withdrawal of the appeal took effect. According to the board, in the present case, immediately and automatically upon the EPO's receipt of the party's submission, the withdrawal had the legal effect of terminating the appeal proceedings as to the substantive issues settled by the refusal of the application, and of rendering the matters subject to that decision res judicata, i.e. finally settled. The question to answer was thus whether R. 139 EPC was applicable in the absence of pending proceedings. The board was not convinced by the reasoning in T 2148/18 (in which the board had allowed a correction of an appeal withdrawal) and held that the ordinary meaning to be given to the terms of R. 139 EPC includes the implicit, limiting condition that an error may only be corrected if proceedings before the EPO for some other purpose are pending when the request for correction is received by the EPO. R. 139 EPC was thus not applicable to the present request for correction of the withdrawal of the appeal. In line with the conclusion drawn in case T 1244/08, such a request was found to be inadmissible. This meant the main request could not be granted. The next question was then whether the application was "pending" within the meaning of R. 36(1) EPC as of the day of the oral proceedings before the board, i.e. on 3 March 2023; the appellant had filed divisional applications relating to the application on 1 October 2021 and 2 March 2023. In the board's view, the EPO's receipt of the withdrawal of the appeal on 28 September 2021 had immediate substantive as well as procedural legal effects. Therefore, when the first divisional application was filed, the application was "dead" on the merits. There was nothing from which new shoots could form. From the ancillary nature and limited scope of the proceedings at hand, it followed that potential substantive rights associated with the application would only arise if appeal proceedings were re-opened after a finding that R. 139 EPC was applicable, then after another finding that the request for correction was allowable. This was not the case here. As a result, the application was no longer pending on 29 September 2021 and had not been since (i.e. the application was not pending on the dates when the related divisional applications were filed). The board concluded that, following the above reasoning, and contrary to the Enlarged Board's view set out in R 3/22, R. 139 EPC was indeed to be understood as ruling out a priori the success of the former appellant's request for correction by withdrawing its earlier unambiguous and unconditional withdrawal of the appeal.