7.3.1 Decisions considering the application of the EPC 1973

Under Art. 79 EPC 1973 the request for the grant of a European patent had to contain the designation of the Contracting State or States. This was substantially changed with the EPC 2000. The decisions below consider the application of the EPC 1973. (Unlike Art. 79 EPC 1973, R. 88 EPC 1973 (now R. 139 EPC) was not amended in substance).

According to J 10/87 (OJ 1989, 323) a request for retraction of a withdrawal of the designation of a Contracting State filed after publication of the patent application may have been allowable under R. 88 EPC 1973 in appropriate circumstances, in particular if;

(a) the public had not been officially notified of the withdrawal by the EPO at the time the retraction of the withdrawal was applied for;

(b) the erroneous withdrawal was due to an excusable oversight;

(c) the requested correction did not result in a substantial delay of the proceedings; and

(d) the EPO was satisfied that the interests of third parties who may possibly have taken notice of the withdrawal by inspection of the file are adequately protected.

J 17/99 explained that with respect to corrections of designations in Euro-PCT applications, the same principles applied as for Euro-direct applications (see also chapter VI. "The EPO acting as a PCT authority").

J 27/96 concerned a Euro-PCT application which originally designated all the contracting states for a European patent, but on entry into the regional phase only designated and paid fees for ten. The board acknowledged that correction of a mistake pursuant to R. 88 EPC 1973 by adding the designation of a state had in principle been allowed by the Legal Board of Appeal (see J 3/81, OJ 1982, 100). However, it could remain undecided whether R. 88 EPC 1973 could have been applied to the designations purported to be missing, as the lack of fee payment in due time was not a mistake that could be corrected under R. 88 EPC 1973 and was therefore a failure which could not be remedied (referring to J 21/84, OJ 1986, 75). Nor could the appellant's auxiliary request to replace expressly designated states with other non-designated states succeed – the designated states were not designated erroneously – rather the error lay in the omission of the non-designated states. Moreover, were there a retroactive effect of the correction, this did not mean that the applicant would be reinstated into the procedural phase when designations had to be made and fees paid or that, in consequence, the whole procedure in that phase would be available to him again. Correction of a mistake was an isolated procedural measure and not a case of re-establishment into a procedural phase as a whole.

In J 3/01 the Legal Board of Appeal was concerned with the same problem, in that the appellant's request was aimed at a reinstatement into an earlier procedural phase by means of a correction under R. 88 EPC 1973. The board held that correction under R. 88 EPC 1973 did not reverse the effect of decisions already taken on the basis of the uncorrected document and did not re-open a procedural phase already terminated or a time limit already expired. In other words, a procedural loss of right only indirectly caused by the incorrect document would not be remedied by a later correction of the document pursuant to R. 88 EPC 1973. This principle also characterised the functional and essential difference between a correction under R. 88 EPC 1973 on the one hand and restitutio in integrum pursuant to Art. 122 EPC 1973 on the other hand (see also J 25/01). The board concluded that correction under R. 88 EPC 1973, to include designation of the UK following failure to pay the designation fee, was not allowable, as it would be in breach of Art. 122(5) EPC 1973, according to which re-establishment into periods for payment of designation fees was not allowable.

In J 16/08 the request for correction of the designation of states was allowed in the unusual circumstances of the case. Following the case law summarised in J 7/90 (OJ 1993, 133) and endorsed in J 6/02, the board applied the three conditions to be met by such a request for correction in order for it to be allowable – firstly, that the error was an excusable oversight; secondly, that the request for correction was filed without undue delay upon discovery of the error, and thirdly, that the request for correction was, in the public interest, made early enough to enable publication of a warning with the European patent application. No such warning was required in the circumstances of this case, as the application had erroneously been published showing all contracting states as designated. Third parties were therefore not prejudiced by the correction, since no publication had ever indicated that the territorial scope of the invention was limited to two contracting states.