3. Competence of the EPO acting as designated or elected Office

In J 26/87 (OJ 1989, 329) the Legal 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 Legal 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 (see also 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 March 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 Legal 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. However, the Legal 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 Legal 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 Legal Board conceded that the demand was addressed to the IPEA, the competent body to deal with it. However, J 26/87 (OJ 1989, 329) had 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 the present case there was a defect in the demand, which the applicant should have been invited under R. 60 PCT to correct. 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. Consequently, under R. 104b(1) EPC 1973 (as in force prior to 1 March 2000) the time limit of 31 months applied.

A decision of an examining division of 5 June 1984 (OJ 1984, 565) pursuant to Art. 153(2) EPC 1973 (see now R. 159(2) EPC) 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.

J 17/99 also concerned the application of Art. 24(2) PCT. 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. The Legal Board declined to exercise its discretion under Art. 24(2) PCT to maintain the effect provided for under Art. 11(3) PCT: when exercising that discretion as designated Office, 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.

In J 19/16 the Legal Board came to the conclusion that the loss of rights, i.e. the deemed withdrawal of the application, which occurred in the international phase could no longer be remedied in the national phase. Parallel competences of the receiving Office and the designated Office in respect of the same application were not excluded. The Legal Board held that the time limit, if any, for making a request to be excused under Art. 24(2) PCT was subject to national law only. The two-month time limit pursuant to Art. 25 PCT was therefore not applicable under Art. 24(2) PCT.

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 in Swedish by mistake. 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 Legal 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 Legal 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.

The Legal Board held in J 13/16 that if, in the international phase, a receiving Office had restored a right of priority under the "unintentional" criterion of R. 26bis.3(a)(ii) PCT, the restoration was not effective in proceedings before the EPO acting as designated Office, since the EPO applies the "due care" criterion (R. 49ter.1(b) PCT). In such cases, within the period specified in R. 49ter.2(b)(i) PCT, the applicant must file a (new) request for restoration of a right of priority under R. 49ter.2 PCT with the EPO acting as designated Office. For the purposes of R. 49ter.2 PCT, the request filed with the RO under R. 26bis.3(b) PCT could not be taken into account in the proceedings before the EPO acting as designated Office. See also J 10/17.

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