J 0040/03 (Divisional/YAZAKI) 18-08-2004

1. The appeal is admissible.

2. The appellant seeks, contrary to the decision under appeal, to designate Sweden in a divisional application filed after the time limit for payment of designation fees on the parent application had expired. Sweden was designated in the parent as filed but no designation fee for that state was paid. It now appears that was a mistake and the purpose of the divisional is to "recapture" the overlooked designation. The appellant's underlying argument is that it is a principle of proceedings under the EPC that correction of mistakes should be allowed if third parties are not prejudiced, that this principle does not currently apply, but should apply, to designations of states, and that this can be achieved by interpreting Article 76(2) EPC as the appellant suggests.

3. The Board will turn to Article 76(2) EPC in the next paragraph below but must make clear at the outset that it does not share the appellant's basic premise. There are provisions in the EPC which, for example, allow correction of filed documents and decisions (Rules 88 and 89 EPC) or for the effect of missed time-limits to be overcome (Article 122 EPC). While it may be correct to say that, at a very general level, these provisions have been interpreted in favour of those who make mistakes provided third parties are not adversely affected, those provisions have not been interpreted so as to ignore their context or their inherent conditions or, which would be the effect of the appellant's argument, so as to change the law for all other users simply to alleviate the mistake of only one such user. While one may sympathise with the victim of a mistake, neither sympathy nor mistake should dictate a change of law.

4. The Board agrees with the appellant that, in accordance with the principles expressed in the Vienna Convention, the EPC and in this case Article 76(2) EPC in particular must be interpreted in good faith and giving words their ordinary meaning in their context (see Articles 31 and 32, Vienna Convention on the Law of Treaties 1969; G 5/83 OJ EPO 1985, 64, see Reasons, paragraphs 1 to 5). The appellant made no submission suggesting the Receiving Section had interpreted, or that the Board would interpret, Article 76(2) EPC other than in good faith. As regards the ordinary meaning of words in their context, this means that Article 76(2) EPC cannot be interpreted in isolation in order to produce the result the appellant seeks: interpretation in isolation is not interpretation in context.

5. Article 76(2) EPC reads as follows:

"The European divisional application shall not designate Contracting States which were not designated in the earlier application."

Thus the Article simply states which Contracting States may not be designated in a divisional application i.e. those which were not designated in the parent application. It is important to note the Article does not in terms say which Contracting States may be designated in a divisional application. The appellant argues that, on a plain construction of the Article, its case falls within it - Sweden having been designated in the parent, it was not a state which was "not designated", therefore it can be validly designated in the divisional. The appellant thus appears to assume that, because Article 76(2) EPC is couched in negative terms which literally apply to its applications - and it is certainly correct that the appellant does not seek to designate in the divisional a state which was never designated in the parent - the contrary must also be the case, namely all states designated in the parent may also be designated in the divisional. While such an assumption may be tempting, it overlooks the need to consider Article 76(2) EPC in context. In the Board's view, that context includes other provisions of the EPC which deal with the effect of withdrawal, deemed or actual, of designations together with the relevant case-law.

6. Article 91(4) EPC says:

"Where, in the case referred to in paragraph 1(e), the designation fee has not been paid in due time in respect of any designated State, the designation of that State shall be deemed to be withdrawn."

(Article 91(1)(e) EPC provides that the Receiving Section shall examine whether designation fees have been paid.) It was held by the Enlarged Board in G 4/98 (Reasons, paragraphs 7 to 7.2) that such deemed withdrawal of a designation takes effect on the expiry of the time limit for payment of designation fees under Article 79(2) EPC. The appellant, having (in its grounds of appeal) confined its argument to the assertion that Article 76(2) EPC governs the situation, subsequently (in reply to the Board's communication) accepted the Enlarged Board of Appeal's opinion as to when Article 91(4) takes effect, and observed that opinion means that, until the deadline for payment of designation fees, all the states designated in the parent application were validly designated. This would appear to be a concession by the appellant that, if states designated in the parent are validly designated until that deadline, it is at least possible that after that deadline valid designations may not remain. Of course, the most obvious reason for that would be non- payment of a designation fee.

7. The Board notes that Article 79(2) EPC, first sentence, reads:

"The designation of a Contracting State shall be subject to payment of the designation fee."

The words "subject to payment" make clear that designation without payment is conditional and that, as with all conditional provisions, if the condition is not met, the provision does not take effect. The appellant has made no comment on this Article.

8. The effect of a deemed withdrawal of a designation is provided for in Article 67(4) EPC which says:

"The European patent application shall be deemed never to have had the effects set out in paragraphs 1 and 2 above when it has been withdrawn, deemed to be withdrawn or finally refused. The same shall apply in respect of the effects of the European patent application in a Contracting State the designation of which is withdrawn or deemed to be withdrawn."

(The "effects set out in paragraphs 1 and 2" are to give an applicant provisional protection in the designated states - see Article 67(1)(2) EPC.) Again, the appellant has made no comment on this Article.

9. Thus, putting Article 76(2) EPC in the context of those other provisions relating to designations, the Board considers the position to be as follows. The designations of a parent application, all or some of which may be designated in a divisional application, are those in the parent at the time of filing the divisional. If the time limit for paying the designation fees for the parent has not expired, there will be complete identity of potential designations since all the deemed precautionary designations of the parent will be available to the divisional. However, if that time limit has expired and designation fees have been paid for fewer states than those originally designated in the parent, then the provisions cited above take effect and the divisional may only designate some or all of those states which remain designated in the parent; other states formerly designated in the parent are deemed withdrawn by virtue of Article 91(4) EPC, and thus deemed never to have had the benefit of any provisional protection by virtue of Article 67(4) EPC. To return to the analysis in paragraph 5 above, whereas the appellant's interpretation of Article 76(2) EPC can be summarised as "all states designated in the parent may also be designated in the divisional", the interpretation of Article 76(2) EPC in its proper context can be summarised as "all states validly designated in the parent may also be designated in the divisional".

10. This has been the practice of the EPO, approved in decisions of the Boards of Appeal, since at least the decision in J 25/88 (OJ EPO 1989, 486, see Reasons paragraphs 5 and 6) which, although not concerned with divisionals as such, confirmed that original designations exist until not paid for. The contrary view expressed in J 22/95, namely that non- payment retrospectively caused a designation to be deemed never to have existed, was disapproved by the Enlarged Board in G 4/98 (see in particular Reasons, section 5, last paragraph which refers specifically to the question of designations in divisional applications).

11. The appellant's argument is almost the exact opposite of the view taken in J 22/95. Whereas on that view an unpaid designation would be deemed never to have existed at all, in the appellant's view an unpaid designation, although of no effect in the parent application, would have some form of after-life, or half-life, during which it would remain available for use in a divisional. Such unpaid designations would be banished for an unspecified period to some juridical equivalent of purgatory, either to be rescued by use in a subsequent divisional or to be finally extinguished if not. This is utterly inconsistent with the provisions of the EPC considered in paragraphs 5 to 10 above.

12. The appellant also argued that none of the decisions cited in the decision under appeal either support that decision or refer specifically to circumstances such as the present. However, J 19/96 is an example of the legal principles summarised above applied to a case which, apart from the actual states designated or sought to be designated, had essentially the same facts as those of the present case. Further, J 29/97 (of 14 June 1999, not published in OJ EPO) is an example of the application of the same principles in a case where, instead of designations being deemed withdrawn after time for payment of designation fees had expired, the applicant had itself withdrawn certain designations. In J 29/97, the Board referred to "the exhaustive consideration" given in J 19/96 to the question of interpretation of Article 76 EPC and came to a conclusion which in keeping with J 19/96. The Board notes the appellants in both J 29/97 and the present case have the same representative so, were it not for the candid admission of a mistake, the appellant's present challenge to the settled legal position would appear somewhat surprising. Since the Board's decision in J 29/97, the established approach has been further reinforced by the decision of the Enlarged Board of Appeal in G 4/98.

13. As regards the appellant's request to refer a question to the Enlarged Board of Appeal, the Board appreciates the appellant had no choice but to make this request in case its interpretation of Article 76(2) EPC found any favour with the Board. Since that has not happened, the requested referral would serve no purpose. The Board need only repeat its comment on the corresponding request in J 29/97 (see Reasons, paragraph 9), namely the question may be one of importance but the answer is clear.

14. The appellant criticised the Receiving Section for relying only on the "Guidelines for Examination" and two German textbooks as the only authority for the reasons in its decision and argued that none of those was legally binding. As to these being the only authorities, that simply reflects the appellant's misguided view of the case-law cited by the Receiving Section (see paragraph 12 above). It is correct that the "Guidelines for Examination" have no legal effect, although the Board considers the passage cited by the Receiving Section to be a correct summary of the legal practice.

15. The position is different with regard to legal textbooks (and legal periodicals and commentaries). While they would rarely be conclusive, there is no reason known to the Board why textbooks should not per se carry some weight in proceedings under the EPC as they do in most national proceedings in the Contracting States. Indeed, since they can be cited in most national proceedings, Article 125 EPC would appear to invite their use in EPC proceedings and such use is now established in practice. The Board notes one of the textbooks whose use the appellant criticised, namely the "Münchner Gemeinschaftskommentar", is more than a mere textbook but a comprehensive commentary on Articles of the EPC, and that the other is available in an English edition which, as to the passage cited in the decision under appeal, would be equally damaging to the appellant's case: see Singer, "The European Patent Convention", Revised English Edition by R. Lunzer, paragraph 76.05, page 295:

"As a divisional application can logically only be based on an existing earlier application, plainly the designation in the earlier application must exist at the relevant time, and not have been withdrawn before the filing of the divisional application".

16. In the Board's opinion, such straightforward logic is decisive of the present case. Sweden was not a state for which a designation fee was paid in the parent application as is evidenced by the copy of the representative's letter of 15. August 2000 in the parent application's proceedings which was drawn to the appellant's attention by the Receiving Section in the present case. The time limit for payment of designation fees on the parent application was 20 March 2001. The divisional application was received at the EPO on 20. November 2002. In short, it was then twenty months too late to designate Sweden in a divisional application. In view of the clear provisions of the EPC and the settled nature of the case-law, the present appeal must be dismissed.