J 0026/87 (PCT Form) 25-03-1988

Reasons for the Decision

1. The question arises whether the document dated 24 April 1987 issued by the Receiving Section constitutes a "decision" within the meaning of Article 106(1) EPC.

1.1 In Decision J 08/81 (OJ EPO 1982, 10), the Legal Board of Appeal previously held that a letter issued by the Receiving Section which was not headed as a decision and which did not draw attention to Articles 106 to 108 EPC in accordance with Rule 68(2) EPC second sentence, nevertheless constituted an appealable "decision", as in substance it constituted a clear rejection of the Appellant's request and was also reasoned as required by Rule 68(2) EPC. The document in the present case also was not identified as a decision, nor did it conform with the second sentence of Rule 68(2) EPC, but it similarly constituted a clear and reasoned rejection of all the Appellant's submissions. It is true that it ended with a paragraph in which pursuant to Article 113 EPC, the Appellant was "invited to file observations" within a period of two months from the notification of "this communication". But for this paragraph it could scarcely be questioned that the "communication " constituted a decision. However, it was sent by the Receiving Section in response to a very clear express written request from the Appellant's representative for "a decision" and both the Appellant and the Receiving Section have subsequently treated the document as if it was a properly constituted decision. Thus, the Appellant duly filed a "notice of appeal against the decision dated 24 April 1987", and the Receiving Section considered the case in accordance with Article 109 EPC, before sending it to the Board of Appeal. In addition, the Receiving Section wrote to the Australian Patent Office stating that on 24 April 1987 it had taken "a decision" and that "You will be informed about the outcome of the appeal".

1.3 In all the circumstances of this case, the Board has no doubt that the Appellant was fully justified in treating the document as an appealable decision, and furthermore that the document should be regarded by the Board as a decision for the purpose of Articles 106 and 107 EPC. In all other respects this appeal complies with Article 106 to 108 and Rule 64 EPC. It is therefore admissible.

2. The substantive issue in the appeal is governed by Article 153 EPC, which states: "The EPO shall act as a designated Office within the meaning of Article 2(xiii) PCT for those Contracting States to the EPC in respect of which the PCT has entered into force and which are designated in the international application if the applicant informs the receiving Office in the international application that he wishes to obtain a European patent for these States". Now at the date of the international application Italy was a Contracting State to the EPC in respect of which the PCT had entered into force. The question to be decided is therefore whether or not Italy was designated in the international application, i.e. whether or not the Appellant informed the receiving Office (the Australian Patent Office) in the international application that he wished to obtain a European Patent for (inter alia) Italy. The answer to this question depends entirely upon the proper interpretation of the "request for grant" form (Form PCT/RO/101). As stated in paragraph VIII above, the Receiving Section have held that Italy was not requested as a designated State in this form.

2.1 The views of the Board are as follows: (a) An international application must comply inter alia with Articles 3 and 4 PCT. In particular, in accordance with Article 4 and Rule 3.1 PCT, the request for grant shall contain "the designation of the Contracting States in which protection for the invention is desired on the basis of the international application", and the request "shall be made on a printed form". Furthermore, in accordance with Rule 4.9 PCT, "Contracting States shall be designated in the request by their names". (b) In the present case, the Appellant clearly complied with all the relevant requirements of the PCT. Furthermore, in the "request" filed at the Australian Patent Office as receiving Office, the Appellant's intention to designate Italy, as well as all the other EPC States except Luxembourg, was really very clear. There can have been no other reasonable purpose in typing "Italy" in the space in Box No. V of the Form. In this connection: (i) The only other possible interpretation of the typed word "Italy" is that the applicant wanted a national Italian patent, not by the EPC route. However, as is clear from paragraph II above the word "Italy" was typed into a space provided in the context of a list of the other EPC countries. Moreover, under the Italian law as explained in paragraph I above, it was not possible to apply for an Italian patent except by the EPC route. (ii) In the Board's view there was no better way of indicating the designation of Italy as an EPC State, at the same time as excluding Luxembourg, using the form which was used. Thus putting a cross in the box marked "EP" would have failed to exclude Luxembourg. The typing of Italy under the heading "space reserved for designating countries which became party to the PCT after the issuance of the present form (10 August 1984)" would have been inappropriate, because this space is provided in the context of non-EPC countries. (c) It follows that for the purpose of Article 153 EPC, Italy was designated in the international application, and the Appellant did so inform the receiving Office in the application. Consequently, Article 153 EPC requires that the EPO shall act as the designated Office for Italy. In other words, the Euro-PCT application includes Italy as a designated State.

2.2 In relation to the above finding the Board makes the following comments: (a) It cannot be expected that an up-to-date edition of every official form, modified to take account of every new international development, is printed and made available to every applicant throughout the world at the moment when he wishes to file such a form. In the present case, the form which was available to the appellant had not been updated to take account of the fact that the PCT was in force in respect of Italy. The form was therefore not exactly appropriate for the countries which the Appellant wished to designate. In such a situation the obligation of an applicant must be to make his intentions as clear as possible having regard to the edition of the printed form which is available to him. In the present case the Appellant fulfilled this obligation. He accordingly made no mistake when he completed the "Request for grant" form. (b) Having regard to what is said in paragraphs 2.1(b) and 2.2(a) above, in the Board's view the fact that the Appellant's representative did not notice that the Receipt dated 1 July 1985 issued by the Australian Patent Office omitted to refer to Italy as a designated state should not be regarded as a mistake by the Appellant. The Australian Patent Office has accepted that it should have referred any ambiguity regarding the designation of Italy to the Appellant before it forwarded the record copy to the International Bureau, and it has written letters to this effect both to the International Bureau and to the EPO, in support of the Appellant's case. (c) Since there was no "mistake" in the request for grant form which was filed at the Australian Patent Office and subsequently at the EPO, Rule 88 EPC is inapplicable and irrelevant. Similarly, the previous jurisprudence of the Boards of Appeal in relation to Rule 88 EPC is not directly relevant to the circumstances of this case, in which no mistake has been made "in a document filed with the EPO". (d) The Board takes note of the fact that the International Bureau officially published the international application on 30 January 1986 without including any reference to Italy as a designated EPC State. However, having regard to its finding in paragraph 2.1(b) above, in the Board's view this official publication does not represent the true intention of the Appellant as set out in the request for grant form. In any event, having regard to the Board's finding, the EPO is bound by the provisions of Article 153 EPC. What the International Bureau has published is a matter for the International Bureau, not for the EPO. (e) Correction of the international application as published is not a matter within the competence of this Board of Appeal or the EPO. (f) The Board is aware that there is a risk that a third person who has read the international application as published by the International Bureau may have started to use the invention which is the subject of the application in Italy in reliance upon the official publication. As previously pointed out in Decision J 12/80, OJ EPO 1981, 143 at paragraph 9, and in Decision J 10/87 dated 11 February 1988, the solution to any such problem in relation to third party rights is not within the competence of the EPO, and must be left to the national courts of competent jurisdiction. ...