J 7/19 × View decision
The notion of a mistake eligible for correction under Rule 139 EPC does not cover the scenario where a declaration of withdrawal reflects the true intention of the applicant, but is based on wrong assumptions.
In J 6/19 the applicant's request to correct the letter withdrawing the application was received at the EPO on the day on which this letter had been published in the European Patent Register. The Legal Board recalled that according to the case law, a request for retraction of a letter of withdrawal was no longer possible if the public had been officially notified of the withdrawal (J 10/87, OJ 1989, 323) and if, in the circumstances of the case, even after file inspection, there would not have been any reason for a third party to suspect, at the time of the official public notification, that the withdrawal could be erroneous and later retracted (J 25/03, OJ 2006, 395). The board noted that the request for withdrawal, which the applicant sought to retract, was unqualified, unambiguous and unconditional and that the request for retraction of the withdrawal would not have been available for file inspection until at least the following day. The board considered that the reasoning of J 25/03, where four days elapsed from the mention of the withdrawal in the European Patent Register to the addition to the file of the request for retraction of the withdrawal, could be applied to the present case. According to this decision the official notification to the public of the withdrawal was a key step and legal certainty would suffer unacceptably if further delay were permitted for retraction of the withdrawal in circumstances, where even after inspection of the file there would not have been any reason to suspect, at the time of the official notification to the public, that the withdrawal, could be erroneous and later retracted. The board in J 6/19 concluded that it was therefore of no relevance to their decision 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. In J 7/19 the board explained that an applicant's ability to correct a withdrawal was subject to several conditions specified by the case law of the boards of appeal, the first of which was the existence of a mistake within the meaning of R. 139, first sentence, EPC, which, according to the case law of the boards of appeal, "may be said to exist in a document filed with the European Patent Office if the document does not express the true intention of the person on whose behalf it was filed" (see J 8/80, OJ 1980, 293; J 4/82, OJ 1982, 385). Therefore, mistakes which resulted in a divergence between the party's actual and declared intent were eligible for correction under R. 139 EPC. In the case in hand the applicant had mistakenly believed that the claims of the European application did not differ considerably from the claims of the corresponding Japanese application and decided to abandon the application on the basis of this erroneous assumption. The board found there to be no divergence between the applicant's declaration and its true intention and dismissed the appeal. In the case law of the boards, only errors relating to the declaration, its content or its transmission fell under the notion of a mistake within the meaning of R. 139 EPC. The board explained there were good policy reasons for having this limitation. If the notion of a mistake were extended to also cover a scenario where the declaration correctly reflected a party's intentions, but was based on wrong assumptions, any mistaken assessment of the disclosure of the application, the patentability of the invention, the entitlement to priority, the legal provisions or the related case law would make any withdrawal potentially eligible for correction. This would be detrimental to legal certainty. Where the applicant has made a decision on withdrawal without considering all the relevant circumstances, it must bear the consequences.
3.8.2 Correction of the withdrawal of the application under Rule 139 EPC
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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. This was not to say that the Bulletin had no functions other than those of information. 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 factual elements surrounding the official character of the information available support the general availability to the public of the entries in the Register of European Patents, from the day they appear in it (see also J 2/15). In conclusion, 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 is a declaration of the highest importance for the applicant, since all the legal effects of the application, such as establishing a preliminary right, are finally abandoned. In the light of these consequences, utmost caution is therefore required when declaring the withdrawal of an application. A correction of errors in documents filed with the EPO under R. 139 EPC is 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 European Patent Register. Yet it is not primarily the EPO that is concerned with a withdrawal, but the public, for which a withdrawal is of potential interest. It is thus the public that can be regarded as the ultimate addressee of such a withdrawal. Therefore, a withdrawal cannot be retracted once the public has been officially informed of it. In a broader sense, this is also reflected in the principle that a declaration of intent can only be retracted if the retraction reaches the addressee either before said declaration or at the same time, a rule that can be found in the civil law systems of many contracting states of the EPC. See also J 2/15.
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. 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 19/03 the Legal Board noted that it is obvious that corrections of procedural acts having an ab initio effect have a potentially serious impact on an application, in particular if they relate to its territorial extent or to whether the application is pending at all, and raise serious concerns as to legal certainty not only for the applicants vis-à-vis the EPO but also for the public. Therefore, the jurisprudence of the boards of appeal took as a starting point that, as a general rule, an applicant is bound by its procedural acts notified to the EPO provided that the procedural statement was unambiguous and unconditional (cf. J 11/87, OJ 1988, 367; J 27/94, OJ 1995, 831) and is not allowed to reverse these acts so that they can be considered as never filed (J 10/87, OJ 1989, 323; J 4/97; see also J 2/15). On the other hand, the boards of appeal considered that R. 88 EPC 1973 acknowledged as a further legal value the desirability of having regard to true, as opposed to ostensible, party intentions in legal proceedings (T 824/00, OJ 2004, 5) in appropriate circumstances. As a result of the conflict between these two legal principles, the case law read R. 88, first sentence, EPC 1973 as conferring a discretion on the competent instance to allow or not to allow a correction of an error since it is only stated in this rule that a respective error "may be corrected". The Legal Board decided that the notice of withdrawal did not contain a relevant error or mistake which could be corrected under R. 88, first sentence, EPC 1973. The Legal Board found that under R. 88, first sentence, EPC 1973, it was not sufficient to prove that a divergence had occurred between the true intention of the applicant and the declaration filed by its representative; rather it was additionally required that this divergence was caused by an error of the person who was competent to make the decision on the procedural act before the EPO. Therefore, as a rule, in cases where the party was represented by a professional representative the error pursuant to R. 88 EPC 1973 must be an error of the representative in expressing his own intentions.
In J 10/08 the matter to be dealt with was the request of the appellant to retract this withdrawal under R. 139 EPC because it was, according to the appellant, made erroneously. This rule allowed correction of errors in documents filed with the EPO, these errors being defined as linguistic errors, errors of transcription and mistakes. In the case under consideration the document filed with the EPO did not show any kind of such an error. The error was not of a factual kind but of a mental one. Therefore it had to be examined whether the correction of such an error could also be subsumed under R. 139 EPC. The Legal Board noted that the boards of appeal have dealt with this question in a great number of decisions. One of those decisions on the question of a possible retraction of a procedural declaration was J 10/87 (OJ 1989, 323) with reference to earlier decisions. In this decision the Legal Board developed the preconditions under which a correction of a procedural declaration might be allowed, namely that the public had not been officially notified of the withdrawal by the EPO, that the erroneous withdrawal was due to an excusable oversight, that the requested correction would not delay the proceedings substantially and that the interests of third parties who might have taken note of the withdrawal by inspection of the file were adequately protected. The Legal Board accepted that it was not the intention of the appellant in the case in hand to withdraw the application but that this was due to a misunderstanding between the various representatives of the appellant dealing with the case. In the case in hand, the Legal Board concluded that the public would not have been misinformed or misled by the information published in the European Patent Register and the withdrawal of the application could be retracted in the case in hand by correction under R. 139 EPC.
In T 1673/07 the appellant argued that it should be allowed under R. 88 EPC 1973 (which corresponds to R. 139 EPC) to resile from the withdrawal of the designation of Germany and France, since it had been made under an erroneous assumption. The board, however, stated that, according to the established case law of the boards of appeal, one precondition for such a retraction was that the relevant request be made before the withdrawal has been officially notified to the public (see e.g. J 15/86, OJ 1988, 417; J 25/03, OJ 2006, 395). This was in the interests of legal certainty and balancing the interests of the applicant and of third parties, in particular in being able to rely on information officially published, and was an objective criterion which applied irrespective of the true intentions or mindset of the person who had made the relevant statement. In the case in hand the withdrawal had been published in the European Patent Bulletin about half a year before the validity of the withdrawal of the designations was contested for the first time. In conclusion, the withdrawal of the designation was valid and could not be retracted.