J 0017/02 (Patent application filed with EASY software/INFINEUM) 08-07-2005

Summary of Facts and Submissions

I. European patent application 95 942 662.8 was filed on 13 December 1995. A communication pursuant to Rule 51(4) EPC (version applicable at the time) was sent to the appellant on 21 May 1999. The four-month time limit for approval was extended at the appellant's request. By a letter dated 29 November 1999 and received on 30 November 1999, the appellant approved the text of the proposed application: "applicant approves the text of the Druckexemplar subject to the following corrections ... . In view of the minor nature of the corrections, the Examiner is kindly asked to hand-amend the pages on file. The applicant apologises for the delay in responding to the Rule 51(4) communication which was due to the need to file divisional applications on instructions from the client."

II. On the same day, 30 November 1999, a printout of F1001E (Request for grant) and a diskette containing the technical documents produced using the EASY software were filed in respect of European patent application No. 99 203 998.2 with notification that the application was a divisional application based on the earlier European patent application No. 95 942 662.8.

III. By communication sent by fax on 14 December 1999, the Receiving Section informed the applicant of the deficiency - the paper copy of technical documents and the conformity statement were missing - and invited him to file the technical documents in paper form. In the communication, reference was made to Rules 25(1) EPC (version applicable at the time) and 51(4) EPC (version applicable at the time).

IV. The paper application documents were filed on 15 December 1999.

V. By communication pursuant to Rule 69(1) EPC of 24 July 2000, the Receiving Section informed the applicant that the application could not be treated as a divisional application because it had not been filed in due time in the form required by the Notice of the President dated 22 July 1997 concerning the filing of European patent applications prepared by means of the EASY software (OJ EPO 1997, 377), which prescribed that the paper copy of the technical documents accompanying Form 1001E would constitute the authentic version of the application and that the date of receipt of these documents would be the date of receipt of the application (paragraph 5). The paper copies of the technical documents were filed on 15 December 1999, which is therefore the date of receipt of the application. It follows that the application was filed too late to be treated as a divisional application, the approval in the parent application having been given on 30 November 1999.

VI. By letter received on 2 August 2000, the representative requested that the filing of the divisional application be allowed, and if necessary that oral proceedings be arranged, and, should the request not be allowed, that a decision be issued under Rule 69(2) EPC.

It was pointed out that the earlier application had been the subject of accelerated examination and that after receipt of the Rule 51(4) EPC communication a time of the principle of "correlation and mutual dependency" and the decision J 36/92 of 20 May 1994 (not published in OJ EPO).

VII. On 12 June 2001, the Receiving Section issued a communication in which it upheld its finding that the application could not be treated as a divisional application. It was clearly indicated that since all the documents constituting the authentic version of the application had not been received, or even despatched, by the time of filing of the approval under Rule 51(4) EPC, Rule 25(1) EPC cannot be said to have been fulfilled. The reference in the letter of approval to the need to file divisional applications is not relevant in this respect. It is to be read as an explanation of why an extension to the time limit was requested, not as a clear statement that a divisional was filed. It cannot therefore be said that this reference and the declaration of approval have to be seen as correlated and mutually dependent on each other.

VIII. In his response filed on 16 August 2001, the appellant reiterated his argument that the principle of "correlation and mutual dependency" developed by the case law of the Legal Board of Appeal should be applied in a situation where an applicant:

(a) has intended to comply with the provisions of Rule 25(1) EPC by correctly synchronising the filing of a divisional application and the response to the Rule 51(4) communication on the parent application,

(b) has indicated this intent to the EPO and confirmed the act of filing the divisional in his Rule 51(4) response, and

(c) through an administrative error, nevertheless formally fails to comply with Rule 25(1) EPC.

This principle is applicable in the present case. Reference was also made to J 27/84 (OJ EPO 1995, 831).

IX. On 22 March 2002, the Receiving Section issued a decision refusing to treat the application as a divisional application of the earlier application on the grounds explained above. In particular the case law of the Legal Board of Appeal cited by the appellant was discussed in points 6 to 8 of the Reasons for the decision:

"In the view of the Receiving Section, decision J 36/92 concerned a special situation and therefore has to be confined to the facts. There, the documents for the divisional application arrived one day later than the applicant's approval under Rule 51(4) EPC in the parent application because they were sent by courier, while the letter of approval was filed, according to the facts, in error by facsimile. However, by the time the approval was received at the EPO, not only had the applicant already despatched all the documents necessary for the filing of the divisional application but had included in the letter of approval an unambiguous statement that a divisional application had been filed on the same day so these two pieces of information had to be seen as correlated and mutually dependent on each other. Under these circumstances, the Legal Board found that the requirements of Rule 25(1) EPC had been fulfilled (Reasons, point 3).

In the case of decision J 27/94, the first sentence of the applicant's letter contained the approval of the text and the second sentence a declaration that a divisional application would be filed, with reference to J 11/91 [filing of a divisional application up to the date of the decision to grant]. Here, too, the Legal Board held that these two declarations could not be separated from each other without neglecting their correlation and mutual dependence. The applicant had made it quite clear that he was declaring his approval because it was still possible to file a divisional application thereafter, according to the case law on which he was relying (Reasons, point 8). As the Legal Board commented in later decisions (see eg J 14/95, J 24/95, both of 20 August 1997), the situation in J 27/94 was that both intentions existed at the same time but could not be realised in parallel. The inconsistency of the declarations was a reason not to consider the approval as valid.

It is true that in the present case the letter of approval in the earlier application No. 95 942 662.8 referred to the delay being "due to the need to file divisional applications on instructions from the client". However, this is to be read as an explanation of why an extension to the time limit was requested, not as a clear statement that divisional applications were filed. Nor is there an evident inconsistency with the approval. It cannot therefore be said that this reference and the declaration of approval have to be regarded as correlated and mutually dependent on each other as in J 36/92 or J 27/94."

X. On 22 May 2002, the applicant filed a notice of appeal against this decision, paying the appeal fee on the same day. The statement of grounds of appeal was filed on 1 August 2002.

XI. On 25 May 2004, the Board issued a first communication pursuant to Article 11(1) of the Rules of Procedure of the Boards of Appeal. A second communication from the Board was issued on 2 March 2005 together with the summons to oral proceedings pursuant to Rule 71(1) EPC.

XII. Oral proceedings were held on 8 July 2005.

XIII. The appellant's arguments, including those submitted with the statement of grounds and in reply to the Board's communications, can be summarised as follows (order of arguments as made by the appellant):

(a) Concerning the application of the principle of "correlation and mutual dependency":

The application documents should be regarded as having been filed not later than the letter of response of 30 November 1999. This position is supported by reference to the principle of "correlation and mutual dependency" as developed in J 36/92 and J 27/94. The appellant's clear intention to co-ordinate two actions as a single procedural act provided a sufficient degree of correlation and mutual dependency to justify allowance of the divisional filing under Rule 25(1) EPC.

In the present case, the file history of the earlier application was highly relevant in defining the overall circumstances surrounding the filing of the divisional application. The earlier application was under accelerated examination. During this process the applicant had expressed his intent to file divisional applications (applicant's letter of 19 March 1999: "the applicant intends to pursue other subject matter in due course via divisional applications"), but after receiving the Rule 51(4) communication had nevertheless requested an extension of the time limit for response. In his response (applicant's letter of 29 November 1999: "Further to the communication under R.51(4) EPC dated 12 May, applicant approves the text of the Druckexemplar subject to the following corrections"), having been granted an extension, he apologised for the delay but stated that this "was due to the need to file divisional applications" [emphasis added], ie a direct reference to the act of filing rather than an expression of mere intent.

A request for a time extension during accelerated examination is very unusual. Having received the Rule 51(4) communication, there would normally be no reason to delay the proceedings. It is apparent from this special context, from the earlier declared intent to file divisional applications, and from the explicit statement in the response to the Rule 51(4) communication, that the only reason for this unusual step was the need to file divisional applications, and hence implicitly to comply with Rule 25(1) EPC. In these particular circumstances, the applicant's response to the Rule 51(4) communication and filing of the divisional applications should therefore be seen as correlated and mutually dependent on each other. In summary, the EPO was notified twice of the applicant's clear intention to file divisionals. The second sentence of the Rule 51(4) EPC reply made express reference to the filing of divisionals, communicated the applicant's intention to file divisionals within the permitted time, conferred the information that the Rule 51(4) reply and the filing of divisionals were co-ordinated procedural acts and provided the information that the applicant did not intend his Rule 51(4) EPC reply to damage the filing of his divisional.

Considering the circumstances of this case, it appears that the junior member of staff given the task by the formalities department of completing the document submission had, at that point in time, been unfamiliar with the details of the EASY system. The paper copies were omitted from the document packs and the covering letter of 29 November 1999, in spite of the "pages end" stipulation on the signed 1001 form. The appellant (through the representative) always intended the filing of the divisional and the text approval of the parent to be correctly synchronised, and had given instructions in accordance with the internal working practices of the in-house patent department. It must, however, also be accepted that whilst an administrative error clearly did take place, this error was attributable at least in part to the lack of knowledge of the staff member given the task of carrying out the final step of document submission.

(b) the applicant's final approval of the text for grant in respect of the earlier application took effect on or after the filing date of the subsequent applications:

G 10/92 makes it clear ("it is desirable that, from a certain point in time onwards, the EPO can rely on the proposed text for grant which has been agreed upon by both the applicant and the Examining Division" [emphasis added] (Section 10, last paragraph)) that the final approval of the text by the applicant is the decisive moment on which the filing of a divisional application must be judged. The date on which the text for grant was finally approved in respect of the earlier application in the present appeal should therefore be determined.

The Rule 51(4) response of 30 November 1999 was not an unconditional approval of the notified text of the earlier application, but a request for amendments under Rule 86(3) EPC and an indication that, subject to the amendments being allowed, the text (in the amended text) could be deemed to be finally approved by the applicant. The approval of the text in the parent application was "unequivocal", an approval which is conditional upon the acceptance of proposed amendments by the examining division.

This circumstance (analogous to J 29/95) leads to the conc1usion that the final approval of the text for grant cannot be deemed to have been given until the examining division has considered and allowed the proposed amendments under Rule 86(3) EPC. Only when this acceptance is given is the official text on file put in the form approved by the applicant; it is at this point that the applicant's final acceptance should be "deemed" to take effect. The allowance of the amendments was first notified to the applicant in the Rule 51(6) EPC communication dated 23 December 1999 (ie eight days after the filing date of 15 December 1999 accorded by the Receiving Section to the later applications). Also, according to G 12/91, this communication must have resulted from the completion of the relevant EPO internal procedure three days before the issued date, ie on 20 December 1999. On the balance of probabilities the appellant considers it unlikely that the amendments under Rule 86(3) EPC were allowed prior to 15 December 1999, and on this basis the approval of text would not have been deemed final before the filing of the later applications.

Even if substantive examination is not re-opened in accordance with (old) Rule 51(5) EPC, it is clear that the examining division must assent to any amendments proposed by the applicant (see the Notice of the Vice-President of DG 2, dated 20 September 1988, concerning the treatment of requests for amendments to application documents following dispatch of the communication pursuant to Rule 51(4) EPC (EPO OJ 1989, 43) at paragraph 3, sub-paragraph (c)). Until that point is reached, the policy consideration of a mutually-agreed text has not been met. It is expressly stated in the above-mentioned notice that a request for amendments is to be understood as approval of the entire set of documents in the amended text, ie not the text as notified in the Rule 51(4) communication. The examining division cannot possibly assent to the amended text until it has studied the amendments.

It may feel that a position in law, in which a request for amendments introduces possible unclarity into the assessment of when the text is approved, is in principle unattractive. However, even if unattractive, this position logically follows on from the practice developed from the above-mentioned notice, and the policy consideration of grant on the basis of a mutually-agreed text. G 10/92 already expressly accepts that the final approval of the text can by definition be a moveable object. Examination can be reopened by the response to a first Rule 51(4) EPC communication, and in principle a very different text subsequently agreed. Unclarity in this respect therefore already exists, as a consequence of the wording of (old) Rule 25(1) EPC which referred to the approval of the text, and not simply to the "date of response to the Rule 51(4) EPC communication".

(c) The third argument: inconsistency between the paragraph 5 "paper copy" requirement of the Notice on EASY filing and Article 80 EPC

The requirement set out in paragraph 5 of the Notice of the President concerning EASY software, namely that the date of receipt of the paper copy (not the electronic copy) of the application documents will constitute the date of receipt of the EASY application, is in conflict with preceding and subsequent interpretations of the primary legislation (Article 80 EPC), as evidenced by measures adopted by the President under Rule 24(1) EPC.

Before the notice on EASY filing, the President issued a Notice relating to filing by facsimile (EPO OJ 1992, 306). After the notice on EASY filing, the President issued a Notice relating to on-line filing (EPO OJ 2002, 545). Both are consistent in their approach; the date of filing of the application is that on which the electronic form of the documents is received by the EPO. In the case of on-line filing, paragraph 7 of the Notice of 2002 states that the filing date accorded is the date of receipt of the electronic application documents, provided that these documents satisfy the requirements of Article 80 EPC. No written confirmation is required. In the case of filing by facsimile, paragraph 5 of the 1992 notice states that the filing date accorded is the date of receipt of the facsimile, provided that this satisfies the requirements of Article 80 EPC. In this case, written confirmation may be requested. It is clear that, in transmitting a facsimile to the EPO, the applicant does not physically send (and the EPO does not physically receive) anything other than an electronic document (encoded in a data signal down a telephone line). Nevertheless, this was sufficient to meet the requirements of Article 80 as far back as 1992. These notices are consistent in requiring the received electronic application to comply with the provisions of Article 80 EPC.

In contrast, in the 1997 notice on EASY filing, the President took the view (in setting out the "paper copy filing date" requirement, paragraph 5) that the electronic document per se of this approved communication means (the EASY diskette) did not in itself satisfy the requirements of Article 80 EPC. On the contrary, only a paper copy would suffice to provide a date of receipt (filing date). This approach is contrary to the interpretation of Article 80, as applied before and afterwards.

There is also no basis in law for justifying various interpretations of primary legislation on the basis of powers provided only in subordinate legislation. On the contrary, the primary legislation must govern. Whilst Rule 24(1) EPC provides the President with power to permit filing by other means of communication, and lay down conditions governing their use, this can only be done within the legal framework of the primary legislation. Having decided to permit filing by the EASY diskette means of communication, there was no basis in Article 80 EPC or in law to draw the distinction that, on this occasion, the electronic documents would nonetheless not satisfy Article 80 and thus not to accord a valid filing date. The "paper copy filing date" requirement in paragraph 5 of the EASY Notice was an ultra vires oversight, and contrary to the public policy consideration supporting filing by electronic means.

(d) The fourth argument:

In general terms, the administrative error must be seen in the context of its consequences, namely the irreversible and definitive loss of patent protection obtained by virtue of the divisional application. The error was that a paper copy of the application was not filed at the same time as the EASY version; the paper copy was filed shortly after the application was filed via EASY. Thus the sanction is out of proportion with the error. It would seem appropriate to apply the principle of proportionality recognised by the boards of appeal as a principle to be applied within the meaning of Article 125 EPC. There is no appropriate legal remedy for the error. If a time limit is not observed, there is provision for correction under Article 122 EPC and the policy requirements accepted and set by the boards of appeal allow for the correction of errors, in an acceptable manner, with respect to the sanctions incurred.

XIV. The appellant requested that the decision under appeal be set aside, that the application be treated as divisional application of the earlier application 95 942 662.8 and that the filing date of the parent application be accorded; furthermore, that a binding direction be included in the order that the examination be accelerated.

XV. At the end of the oral proceedings, the Board announced its decision.