J 0025/01 13-02-2003

1. The appeal complies with Articles 106 to 108 and Rules 1(1) and 64(b) EPC and is therefore admissible.

Main request

2. It is the purpose of the main request to change the territorial scope of protection from Greece, Luxembourg, Monaco and Portugal, which the Euro-PCT application presently encompasses, into Austria, Belgium, Switzerland and Liechtenstein, Germany, Denmark, Spain, France, United Kingdom, Ireland, Italy, Netherlands and Sweden, the EPC Contracting states the appellant really intended to designate.

As the Board has already pointed out in its communication dated 17 May 2002, the 31-month period for entry into the regional phase before the EPO as elected office (Article 39(1)(a,b) PCT in conjunction with Rule 104b(1)(ii) EPC in the then valid version) ended with respect to the Euro-PCT application under consideration on 11 August 1996. Designation fees were paid on 11 July 1996 for the four EPC Contracting states Greece, Luxembourg, Monaco and Portugal. The period for validly paying additional designation fees under Rule 85a(2) EPC expired on 11 October 1996 without any further contracting state having been designated through payment of designation fees. According to Rule 104c(2) EPC in the then valid version this has the consequence that the other EPC Contracting states indicated with the so-called precautionary designation provided for in the PCT application form, i.e. Austria, Belgium, Switzerland and Liechtenstein, Germany, Denmark, Spain, France, United Kingdom, Ireland, Italy, Netherlands and Sweden were deemed to be withdrawn since the designation fees for these EPC Contracting states had not been paid in due time.

The payment of designation fees for 12 contracting states with surcharge carried out on 25 March 1998 together with the request for correction under Rule 88 EPC could not reverse the legal effect of Rule 104c(2) EPC. Therefore, the loss of rights for designations after expiration of the time limit under Rule 104b(1)b EPC in connection with Rule 85a(2) is not based on the failure to indicate designations but on the failure to pay the designation fees for these states in due time. The latter cannot be remedied by a correction under Rule 88 EPC.

3. The appellant argues that a correction under Rule 88 EPC of the indications in section 10.1 of EPO Form 1200 filed upon entry into the regional phase before the EPO on 11 July 1996 would lead to the indication of the twelve EPC Contracting states he really intended to designate. With regard to the acknowledged retroactive effect of such a correction under Rule 88 EPC this would have the consequence that the EPO has to issue a communication under Rule 85a(1) EPC since designation fees were paid only for four contracting states (this situation not falling within the effect of the waiver clause in section 10.2 of the EPO Form 1200) thus triggering the one month time limit for payment of eight additional designation fees.

4. Rule 88 EPC concerns the correction of errors in documents filed with the EPO. According to the first sentence a correction is restricted to linguistic errors, errors of transcription and mistakes in any documents filed with the EPO. Therefore a correction under Rule 88 EPC is an instrument available only to rectify misleading information caused by such an error in documents. But such a correction cannot have any effect on the procedural situation that has already ensued in direct or indirect consequence of a written error. To cancel procedural effects which have already occurred would be to apply Rule 88 EPC beyond its clear and unambiguous wording.

5. This conclusion is confirmed by Article 122(5) EPC.

Article 122 EPC provides for a re-establishment of rights where the applicant or proprietor of a European patent was unable to observe a time limit vis-à-vis the EPO and in consequence a loss of rights occurred. If the requirements of this provision are met - other than by a correction under Rule 88 EPC - the procedural effect is cancelled, and the former procedural situation reinstated, that is the applicant's rights are re-established. Thus such a request for restitutio in integrum is the appropriate instrument for - certain - procedural situations to be rectified. But according to Article 122(5) EPC the provisions of this Article are not to be applicable to the time limits referred to in Article 79, Rule 85a and Rule 104b(1)(b) EPC (see G 3/ 91 OJ EPO 1999, 8). Thus the instrument of restitutio in integrum is not available to remedy a loss of rights that has occurred as a consequence of an applicant's not having observed the time limits for payment of designation fees.

As the appellant has correctly submitted, Article 122(5) EPC was deleted by the Diplomatic Conference 20 - 29 November 2000(see Special Edition 4 of OJ EPO 2001, page 33). But this amendment had not yet entered into force. Thus according to Article 8(2) EPC amended version (see Special edition 4 OJ EPO 2001, page 50) the valid text of the EPC is the unamended one.

6. The conclusion that the so-called retroactive effect of a correction under Rule 88 EPC does not set aside the previous procedural effects, but only causes the document corrected to be considered from the time of correction and for future as filed ab initio in the corrected version is already stated in the Board's decision J 03/01 (see particularly point 10 of the reasons for the decision), which was sent to the appellant as an annex to the summons to the oral proceedings dated 2 October 2002. Furthermore in decision J 27/96 (which is cited in decision J 03/01) the Board stated that a correction by the addition of a designation does not mean - despite its ab initio effect - that the applicant is reinstated into the procedural phase where designations can be made and fees paid, meaning that the whole procedure of that phase becomes available to the applicant again. The Legal Board stressed that a correction of a mistake is an isolated procedural measure and not a case of re-establishment into a defined procedural phase as a whole. The same conclusion was reached by the Legal Board in its decision J 21/84 (OJ EPO 1986, 75; see also T 152/85 OJ EPO 1987, 191).

7. Remitting the application to the department of the first instance with the order to send out a communication under Rule 85a(1) EPC and to invite the applicant to pay eight additional designation fees, as intended by the main request, would restore the application to the procedural situation it enjoyed upon entry into the regional phase before the EPO, thus not only cancelling the procedural fact of the payment for the four contracting states Greece, Luxembourg, Monaco and Portugal, that took place on 11 July 1996 but also cancelling the legal effect prescribed by Rule 104c(2) EPC (in the then valid version).

8. The question whether or not the application under consideration meets the requirements developed by the jurisdiction of the Boards of Appeal with respect to an allowable correction under Rule 88 EPC safeguarding the interests of the public is not decisive for the case under consideration.

As the Board has already stressed above (see points 4 and 5),a correction of the misleading information in section 10.1 of the EPO Form 1200 filed on 11 July 1996, that the appellant intended to pay designation fees for the contracting states Greece, Luxembourg, Monaco and Portugal would not cancel the legal effect determined by Rule 104c(2) EPC (in the then valid version) that occurred after expiry of the 33 month time limit on 11 October 1996. Therefore the instrument of correction under Rule 88 EPC is not applicable at all in the present case.

In this context it should be emphasized that after the introduction of the so-called precautionary designation under the PCT and the amendment of Rule 85 a EPC in 1989 the designation system depends not only on the respective indications that have been made in a Euro-PCT application but also on the observation of the time limits referred to in Rule 104b(1)(b)(ii) (the then valid version), Article 79(2) and Rule 85a EPC.

9. The amended designation system imposes an obligation on the applicant not only to fill in the application form correctly but also to check the time limit provided for supplementary payment of designation fees with surcharge. If the appellant's representatives had checked this time limit on the basis of their application file, they would have detected the fax from Vlaams Interuniversitair Instituut voor Biotechnologie with the correct instruction for designation and thus had the possibility to correct their error by supplementary payment of designation fees in due time.

Therefore it was not the use of EPO Form 1200 with a pre-printed waiver clause in section 10.2 that caused the loss of rights to a European patent for the contracting states the appellant really intended to designate.

10. In this context it is to be pointed out that an Euro-PCT applicant is not compelled to use EPO Form 1200 upon entry into the regional phase before the EPO as it is clear from Rule 49.4 PCT and as was mentioned in the letter of the Receiving Section dated 18 August 1995 addressed to the appellant's representatives (see supplement 1 to OJ EPO 12/1992 Introduction A, 2).

Therefore the main request for correction under Rule 88 EPC is not allowable since it is aimed not merely at correcting an error in the documents but also at reversing a procedural effect that has already taken place and at cancelling a legal effect prescribed by Rule 104c(2) EPC.

First auxiliary request

11. From the observations above (see points 4, 5 and 7) it follows that the correction under Rule 88 EPC as requested with the first auxiliary request cannot effect the procedural situation already occurred when the appellant paid four designation fees with the indication that the payment was in respect of the contracting states Greece, Luxembourg, Monaco and Portugal. Thus the requirement of Article 7(2) RRF that the purpose of the payment cannot immediately be established was not fulfilled at the time the payment of designation fees was received by the EPO. Correction under Rule 88 EPC does not reinstate the procedural phase at which the original payment was received by the EPO and therefore, no communication under Article 7(2) RRF could be required by the appellant's request for correction of designations. Additionally the Board states that indicating four out of the twelve Contracting states the appellant really intended to designate would not correct the error that really occurred when completing section 10.1 in EPO Form 1200 dated 10 July 1996.

Therefore the first auxiliary request is also not allowable.

Second auxiliary request

12. The same reasons as set out under point 11 apply to the second auxiliary request which is therefore also not allowable.

Third auxiliary request

13. The question submitted by the appellant to be referred to the Enlarged Board of Appeal is not relevant to the case under consideration because it is aimed at the requirements for a time limit for a correction under Rule 88 EPC developed by the jurisdiction of the Boards of Appeal. But this jurisdiction is not decisive for this case because, as set out above under point 8, the failure to pay the designation fees required in due time cannot be corrected on the basis of and in conjunction with the correction of an error according to Rule 8 first sentence EPC (cf. J 21/84 supra).

Fourth auxiliary request

14. As set out above under point 10, referring to Rule 49.4 PCT and supplement 1 to OJ EPO 12/1992, a Euro-PCT applicant is by no means legally obliged to use EPO Form 1200 upon entry into the regional phase before the EPO. Therefore the question submitted by the appellant to be referred to the Enlarged Board of Appeal with its fourth auxiliary request is also not relevant to the case under consideration.

Fifth auxiliary request

15. The question submitted by the appellant with its fifth auxiliary request and intended to be referred to the Enlarged Board of Appeal is as irrelevant to the case under consideration as the question submitted with its third auxiliary request. The core of these questions is aimed at the question of whether or not the "ab initio effect" of a correction under Rule 88, first sentence EPC has the additional effect of re-establishment of the right to pay designation fees after the time limit set by Rule 104b(1)(b) EPC, which is, according to the consistent case law (J 21/ 84; J 27/96; J 03/01 supra), to be denied. As there is no jurisdiction to the contrary the requirements under Article 112(a) EPC are not fulfilled and the Board considers that a decision of the Enlarged Board of Appeal is not required.