b) Public interest 

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 14/04 the Legal 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. The Legal Board took the view that the Register constituted an official publication (see also J 37/03, 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 Legal 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 also amounted to notification to the public from the day of their publication as well as publication in the European Patent Bulletin. The Legal 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 its official notification to the public, that the withdrawal could be erroneous and later retracted.

In J 1/11 the Legal 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. 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 Legal Board was unable to deduce a fundamental difference between the Register and the Bulletin. The Legal 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. The Legal Board pointed out that explicitly withdrawing a pending patent application was a declaration of the highest importance for the applicant, since all the legal effects of the application, such as establishing a preliminary right, were finally abandoned. In the light of these consequences, utmost caution was therefore required when declaring the withdrawal of an application. A correction of errors in documents filed with the EPO under R. 139 EPC was only possible under strictly defined conditions. In the case in hand, the request for retraction of the withdrawal reached the EPO more than a month after the withdrawal was made and after it was recorded in the Register. However, a withdrawal cannot be retracted once the public has been officially informed of it. In a broader sense, this was also reflected in the principle that a declaration of intent could only be retracted if the retraction reached the addressee (the public) either before said declaration or at the same time, a rule that could be found in the civil law systems of many contracting states of the EPC. See also J 2/15 and J 3/22.

In J 6/13 the Legal Board pointed out that an applicant was bound by its procedural acts notified to the EPO provided that the procedural statement was unambiguous and unconditional (J 19/03). The Legal Board held that there could be no retraction of a withdrawal if there was no reason for third parties to assume that the withdrawal was erroneous. Referring to J 12/03 (citing with approval J 25/03), the Legal Board pointed out that in the interest of legal certainty for third parties, and taking into account the public function of the Register, a third party upon file inspection must have had good reason to suspect that the withdrawal was made in error in order to allow its retraction. The Legal Board had to determine whether, in the case in hand, such good reason was present. It took the view that, based on decisions J 12/03 and J 18/10, the prospects of the application, however promising, were insufficient to infer an obvious or even potential contradiction with a subsequent withdrawal. Patent applications may be withdrawn due to considerations of business strategy, investor preference, shift in portfolios, agreements with competitors, etc. Due to financial considerations, most granted European patents were validated only in a limited number of countries. These considerations may come into play at any time, even after the recent payment of annuities, or after the communication of a positive search report. The favourable prospects of the application in this case would thus not lead a third party to the conclusion that the withdrawal was possibly made in error. Nor did they lead the representative who handled the case to this conclusion, either.

In J 2/15 the applicant had pointed to a "fundamental inconsistency" between the decisions in cases J 10/87 and J 4/97 on the one hand, and J 25/03 and J 1/11 on the other, concerning the question whether the publication of a withdrawal in the Register amounted to an official publication thereof. The Legal Board acknowledged that the reasoning of the more recent decisions had led a change in the case law due to the evolution of technical means. However, this could not be seen as an inconsistency in the case law where cases on the same subject-matter arrive at different results and have a different reasoning whilst being decided at the same time. The Legal Board was of the opinion that this inconsistency had been comprehensively addressed in J 1/11, and saw no need to elaborate on this further.

In J 10/08 the Legal Board concluded that the public would not have been misinformed or misled by the information published in the Register, since in the case in hand the public would have been informed about the withdrawal and the request for its retraction at the same time and would therefore have been sufficiently warned that there was possibly something wrong with it. Hence, the withdrawal of the application could be retracted by correction under R. 139 EPC.

In J 6/19 the Legal Board noted that the request for withdrawal, which the applicant had sought to retract, was unqualified, unambiguous and unconditional, and therefore valid. The Legal Board applied the reasoning of J 25/03, where four days elapsed from the mention of the withdrawal in the Register to the addition to the file of the request for retraction of the withdrawal. The Legal Board concluded that it was therefore of no relevance to the case in hand that the request for retraction was received on the same day the withdrawal was published. The time requirement of R. 139 EPC had not been met.