3.8.3 No correction of an erroneous withdrawal after public informed

In J 4/97 the applicants informed the EPO three days after withdrawal that their request had been made erroneously and should be cancelled. The EPO informed the applicants that the withdrawal had come into force and was binding, and notification of the withdrawal was later published in the European Patent Bulletin. However, the Legal Board held that the withdrawal of the application could be corrected under R. 88 EPC 1973 (which corresponds to R. 139 EPC). The legal considerations contained in J 10/87 concerning the retraction of a withdrawal of a designation of a contracting state applied equally to the withdrawal of a patent application as a whole. In particular, it had to be ascertained that the withdrawal had been due to an excusable error, that there was no undue delay in seeking retraction, and that the retraction of the withdrawal had not adversely affected the public interest or the interests of third parties. In the circumstances of the case, the Legal Board held that the mere fact that the withdrawal was retracted after only three days was a strong indication that it had indeed been made in error. The error resulted from confusion between two similar reference numbers assigned by the appellants to their patent applications. In the Legal Board's opinion this mistake could be considered as an excusable oversight. The public interest was not affected because the withdrawal was retracted before the corresponding entry was made in the Register of European Patents and more than six weeks before the withdrawal was officially notified to the public in the European Patent Bulletin. Thus, at the time the general public was informed of the withdrawal, the public part of the file clearly showed that a request for cancellation of the withdrawal had been filed thereby warning third parties relying on the information published by the EPO. The interests of third parties could be protected if a national court applied Art. 122(6) EPC 1973 mutatis mutandis.

In J 4/03 the Legal Board noted that the request for retraction of the withdrawal of the application had been made after notification of the withdrawal in the European Patent Bulletin, the means of official publication of the EPO. That meant that the public had already received the information that the application no longer existed so that the principal precondition for allowing a correction was not met. See also J 7/06.

In J 14/04 the Legal Board rejected the request for correction of the withdrawal of the application. It agreed with J 10/87 that the public interest lay in being able to rely on information officially published by the EPO. The Legal Board took the view that the Register of European Patents constituted an official publication (see also J 37/03, J 38/03), and as, at the time of the request for withdrawal, access to the Register was freely offered to the public on the Internet, the request for withdrawal was available to the public on the date the Register indicated the request for withdrawal was recorded. It was of no relevance whether the file was actually consulted on this date. Nor did the Legal Board consider that Art. 122(6) EPC 1973 could apply mutatis mutandis to cases of correction under R. 88 EPC 1973.

The Legal Board held in J 25/03 (OJ 2006, 395) that entries in the Register of European Patents also amounted to notification to the public from the day of their publication as well as publication in the European Patent Bulletin. The Legal Board rejected the request for correction of the withdrawal of the patent application and added that it was of no relevance that only four days had elapsed between mention of the withdrawal in the Register and mention of the request for retraction of the withdrawal. Legal certainty would suffer unacceptably if further delay were permitted for retraction of the withdrawal in such circumstances where even after inspection of the complete file there would not have been any reason for a third party to suspect, at the time of the official notification to the public of the withdrawal, that the withdrawal could be erroneous and later retracted.

In J 6/13 the Legal Board pointed out that an applicant was bound by its procedural acts notified to the EPO provided that the procedural statement was unambiguous and unconditional (J 19/03). The Legal Board held that there could be no retraction of a withdrawal if there was no reason for third parties to assume that the withdrawal was erroneous. Referring to J 12/03 (citing with approval J 25/03, OJ 2006, 395), the Legal Board pointed out that in the interest of legal certainty for third parties, and taking into account the public function of the Register, a third party upon file inspection must have had good reason to suspect that the withdrawal was made in error in order to allow its retraction. The Legal Board had to determine whether, in the case in hand, such good reason was present. The Legal Board took the view that, based on decisions J 12/03 and J 18/10, the prospects of the application, however promising, were insufficient to infer an obvious or even potential contradiction with a subsequent withdrawal. Patent applications may be withdrawn due to considerations of business strategy, investor preference, shift in portfolios, agreements with competitors, etc. Due to financial considerations, most granted European patents were validated only in a limited number of countries. These considerations may come into play at any time, even after the recent payment of annuities, or after the communication of a positive search report. The favourable prospects of the application in this case would thus not lead a third party to the conclusion that the withdrawal was possibly made in error. Nor did they lead the representative who handled the case to this conclusion, either.