J 0011/87 (Abandonment) 26-11-1987
Second notice of appeal filed after interlocutary revision
Interpretation of a declaration
Consideration of facts subseqent to the declaration
Withdrawal of the application (no)
Abandonment, surrender (yes)
I. Euro-PCT patent application No. PCT/FR 82/00166, filed on 12 October 1982 and published under No. WO 83/01235, was given European No. 82 903 047.7 (European publication No. 0090006).
II. On 28 November 1984 the formalities officer acting for the Examining Division sent the appellant's representative a communication under Rule 51(4) and (5) EPC informing him of its intention to grant a European patent on the basis of the above patent application.
III. In a letter dated 23 January 1985 the representative replied as follows: "With reference to the communication under Rule 51(4) and (5) EPC, dated 28 November 1984, I would inform you that my client has decided to abandon this European patent application."
IV. On 4 April 1985 the Formalities Section in Directorate-General 2 of the EPO sent the appellant a decision refusing the European patent application under Article 97(1) EPC on the grounds that: "Since the applicant has not indicated its approval of the text intended for grant the patent application does not meet the requirements of the EPC."
V. By telex dated 31 May 1985, confirmed in a letter bearing the same date and received at the EPO on 3 June 1985, the appellant filed an appeal against the decision to refuse the application, at the same time paying the fee for appeal. On 18 June 1985 it filed with the EPO translations of the claims in the patent application and paid the grant and printing fees.
VI. In a letter dated 6 February 1986 the head of the Formalities Section informed the appellant's representative that: "The communication dated 4 April 1985 (Form 2066) refusing the European patent application in suit under Article 97(1) EPC is hereby revoked. The declaration made in your letter of 23 January 1985 (received on 26 January 1985) by means of which you announced that your "client has decided to abandon this European patent application" must be regarded as a clear and unequivocal declaration of withdrawal, having immediate legal effect from the date of the declaration."
VII. On 15 March 1986 the appellant applied for a reasoned decision (Rule 69(2) EPC). In response to this application the Formalities Section issued a further decision on 15 July 1986 reiterating the grounds set out in the communication dated 6 February 1986 and according to which European patent application No. 82 903 047.7 was declared withdrawn with effect from 26 January 1985.
VIII. By telex dated 8 September 1986 and confirmed in a letter of the same date received at the EPO on 11 September 1986 the appellant filed a further appeal against this new decision. It paid the fee for appeal on 16 September 1986 and on 3 November 1986 lodged a detailed statement of grounds for appeal.
IX. In that statement the appellant stressed in particular that a declaration of abandonment should not, in its view, be construed as an express withdrawal of the application but should be treated as simply a statement of a fact that one does not wish or is unable to alter. The absence of any immediate reaction to the letter of abandonment sent by the appellant's representative to the EPO and the original decision to refuse the application issued by the EPO would seem to confirm this interpretation that the declaration of abandonment was made for information only, a course of action for which no specific procedure is provided. Moreover, since withdrawal is not recorded until all means of redress have been exhausted and therefore, in the present case, had not yet been registered, the legitimate interests of third parties would not be adversely affected by the continuation of the patent grant procedure.
X. Replying to a communication dated 26 August 1987 from the rapporteur of the Legal Board of Appeal, the appellant repeated the arguments put forward in its statement of grounds for appeal, stressing in particular that in the absence of specific provisions governing the withdrawal procedure in the EPC, the EPO should take into account the principles of procedural law generally recognised in the Contracting States, as provided for in Article 125 EPC. Consequently, the Board should in particular take account of the fact that in France and the Federal Republic of Germany a special power of withdrawal is required, which means that the mere appearance of a decision to abandon an application is without effect.
XI. Moreover, the fact that the Examining Division initially issued a decision refusing the application on the basis of Article 97(1) EPC shows clearly that it had not originally construed the appellant's letter dated 23 January 1985 as a declaration of withdrawal. Furthermore, by going back on its decision ten months later the Examining Division caused serious prejudice to the appellant, which had believed in good faith that following its appeal against the original decision to refuse the application based on Article 97(1) EPC, it would be granted a patent.
1. Decision appealed In the case in question the Formalities Section in Directorate- General 2 of the EPO issued an initial decision on 4 April 1985, based on Article 97(1) EPC, which was appealed on 31 May 1985. 1.1 By decision of 6 February 1986 the Formalities Section set aside that decision without referring the matter to the Board of Appeal. Although late, this decision amounts to interlocutory revision under Article 109(1) EPC allowing the appeal and is final.
1.2 Following this revocation the application was reinstated and a further decision could therefore be taken in respect of it, provided that it was based on different facts.
1.3 The second decision taken by the Formalities Section on 15 July 1986 meets this requirement since it is based on new facts, namely the withdrawal of the patent application. It was thus validly taken and the appeal filed by the appellant against this decision on 8 September 1986 is the only one that has to be examined by the Board of Appeal.
2. Admissibility of the appeal The appeal complies with Articles 106 to 108 and Rule 64 EPC and is admissible.
3. Examination of the merits of the appeal
3.1 In the case in suit the only question to be decided is whether the letter addressed by the appellant's representative to the EPO on 23 January 1985 informing it that his client had decided to abandon the European patent application is to be construed as a mere declaration of intent without legal effect, as the appellant maintains, or whether it is to be regarded as equivalent to an irrevocable declaration of withdrawal.
3.2 In line with its consistent case law the Legal Board of Appeal considers that in interpreting a declaration its objective content is decisive; however, that content is not to be interpreted in isolation but in its proper context (cf. J 24/82, J 25/82, J 26/82, OJ EPO 1984, 467).
3.3 Thus, the Board decided that if it emerged clearly and unequivocally from a declaration made by the patent applicant that he was surrendering his patent application unconditionally and without restriction, such a declaration was to be interpreted as a withdrawal of the application whatever the terms in which it was couched (cf. decisions J 06/86 (JO EPO 1988, 124) dated 28 January 1987, Riker Laboratories, point 4, and J 15/86) dated 9 October 1987, Withdrawal of application/AUSONIA, point 4).
3.4 However, the Board has always examined with the utmost care the factual circumstances surrounding a declaration of this kind and has considered such an interpretation to be possible only if there could be no doubt whatever as to the appellant's true intent.
3.5 The Board hence considered that the declarations: "The applicant wishes to abandon this application" and "The applicant company has lost all interest in the above European patent application and has decided to abandon it" amounted to irrevocable declarations of withdrawal where it emerged from the context in which they had been made that no other reasonable interpretation could be put on them (cf. decisions J 06/86 and J 15/86 mentioned above).
3.6 On the other hand, where there was any possible doubt as to the appellant's actual intent, either because the declaration of withdrawal was conditional (cf. decision J 11/80, OJ EPO 1981, 141) or because from the context it was not possible to interpret with absolute certainty the applicant's true intent (cf. as yet unpublished decision J 7/87*) (Abandonment) SCHWARZ ITALIA, dated 28 October 1987), the Board has always considered that such a declaration should be construed as a declaration of withdrawal only if the subsequent facts confirmed that such had been the appellant's true intent. Thus, in the two decisions cited above, in which a declaration of abandonment was construed as constituting withdrawal of the application, the Board considered an important element establishing the appellant's intention to withdraw to be the fact that it had not immediately reacted to the Examining Division's reply informing it that the application was withdrawn (cf. point 4, final paragraph, of decision J 06/86 and point 5 of decision J 15/86).
3.7 In the present case the appellant's representative informed the Examining Division by letter dated 23 January 1985 in reply to the communication under Rule 51(4) and (5) EPC of the appellant's decision to abandon the European patent application.
3.8 Although a declaration of this kind may reasonably be interpreted as a declaration of withdrawal, it may equally reasonably be interpreted as mere information given to the Examining Division that the appellant would not be replying otherwise to the communication, particularly in view of the lack of any apparent interest on the part of the appellant in withdrawing its application at this stage of the procedure. This second interpretation corresponded, moreover, to what the appellant intended, as is shown by the subsequent explanations given by it and the fact that it filed an appeal against the decision dated 4 April 1985 refusing its application.
3.9 Furthermore, the fact that this decision was taken more than two months after receipt of the letter from the appellant's representative announcing the abandonment of the application shows that this was also how the Examining Division originally construed it. This demonstrates that two different interpretations could reasonably be given to the representative's letter dated 23 January 1985. Under these circumstances the Board considers that the appellant's declaration ought not to have been interpreted as a withdrawal of the application, especially as all the facts subsequent to that declaration warranted a different interpretation. The contested decision must therefore be set aside.
3.10 Given that the requirements of Rule 51(4) EPC are met in that the appellant has paid the grant and printing fees and filed the required translations of the claims, the first instance may now proceed to the final patent grant formalities.
3.11 Since the Board of Appeal has not considered the letter addressed by the appellant's representative to the Examining Division on 23 January 1985 to amount to a withdrawal of the application it has not felt it necessary to examine whether, pursuant to Article 125 EPC, the European Patent Office should require special steps to be taken, e.g. filing of a power of withdrawal, before a declaration of withdrawal is valid, as the appellant contends.
For these reasons, it is decided that:
1. The decision of the Formalities Section in Directorate-General 2 of the EPO dated 15 July 1985 is set aside.
2. The case is remitted to the first instance.