Zusammenfassung von EPC2000 R 139 für die Entscheidung T0433/21 vom 04.07.2023

In T 433/21 the board noted that one line of cases has held that for the withdrawal of an appeal, no rescission under R. 139 EPC or under any other legal basis should be possible: T 1244/08 of 7 July 2011 and T 695/18 of 3 March 2023. The board agreed with T 695/18 on needing to set limits to requests under R. 139 EPC. However, it did not agree with the narrow reading of G 1/12 in T 695/18. According to this narrow reading, R. 139 EPC would only apply if proceedings before the EPO for some other purpose are pending when a request for correction is received by the EPO. Hence, R. 139 EPC would not apply after an appeal withdrawal, as from such point onwards it would be considered that there are no longer any appeal proceedings pending. By contrast, the board in the present case concluded that the concept of "appeals" mentioned in point 35 of the Reasons of G 1/12 should not be construed narrowly as referring to "admissibly pending appeals", but broadly as also encompassing appeal cases that would be pending if the correction under R. 139 EPC was allowed. With reference to R 3/22, the board emphasised that a request to correct a declaration of withdrawal of the appeal under R. 139 EPC can potentially be successful, which implies that R. 139 EPC applies. On the facts of the case at issue, the board refused the request for correction. It was true that according to G 1/12 omissions in a document could be corrected under R. 139 EPC. However, such an omission has to relate to a document which was actually filed with the EPO. Errors in the run-up to a declaration being made, such as errors relating to the general motivation for the declaration, the decision-making process or the assumptions on which the declaration is based, are irrelevant. In the present case, the applicant had instructed the professional representative to file a divisional application and withdraw the appeal; the representative had done only the latter. This omission was not a drafting error in the document to withdraw the appeal. The board then explained the consequences of refusing the request for correction, in particular with regard to R. 36 EPC according to which a divisional application can only be filed in relation to a pending earlier patent application. After a withdrawal of the appeal, providing a forum for arguing a case of an allegedly erroneous termination of the appeal proceedings happens in the context of "ancillary proceedings", i.e. proceedings arising out of or in connection with the earlier appeal proceedings, once those proceedings have been concluded. However, such "ancillary proceedings" did not re-open the earlier (concluded) appeal proceedings. This was relevant for the purposes of R. 36 EPC.