I find this decision very pedagogical because it explains in detail the nature and scope of different legal remedies available under the EPC.
In this case the Examining Division (ED) granted (on 21 June 2007) the patent indicating FR, GB and NL as the designated Contracting States (CS). The patentee had given the instruction to designate DE as well, but the representative had not indicated DE on Form 1200. For some unknown reason, the EPO did not send a R 108(3) notification. The representative only detected the error when his German colleague told him (in a letter dated 18 July) that he was unable to validate the patent in Germany. His reaction (on 18 September) was to request the EPO: (i) to “now afford the applicant the opportunity to respond to the R 69 communication which should have flowed from R 108(3)” and to re-publish the mention of grant indicating DE, FR, GB and NL as designated CS; (ii) to correct an error under R 88 EPC 1973 in the Form 1200; (iii) in parallel with or if necessary after refusal of the second request, restitution of the designation of the German state under A 122 EPC 1973. Finally, a telephone conversation with a formalities officer (on October 15 2007) convinced him of the need to file an appeal against the decision to grant the patent (on October 22) together with a request for re-establishment into the time-limit for filing an appeal.
The Board first examines the facts and finds that there have been two errors : an error of fact (the representative being unaware that DE should have been among the designated CS in the decision to grant) and an error of law (believing that the decision could be rectified under R 88, R 89 or A 122, without filing an appeal).
The Board states that there is a consistent body of case law according to which ignorance or misinterpretation of EPC provisions cannot be excused. Taking into account J 28/92, there may however be exceptions under certain conditions.
The Board then discusses the question of due care on the part of the representative. It first establishes that the correct remedy would have been to file an appeal.
It is established case law that an ED is bound by its final decision on an application, which can be set aside only following an admissible, allowable appeal; see T 1093/05 [6] and the cases cited there, in particular G 12/91 [2]: “Once ... [the decision] has been pronounced and, in the case of written proceedings, notified, the decision enters into force and cannot be amended, even by the department that issued it. A decision may only be revoked by the department that issued it by way of an interlocutory revision under A 109 EPC if one of the parties has filed an admissible and well-founded appeal.” […]
The present decision to grant is final and became binding on the ED that issued it on the date it was handed over to the EPO postal service by the division’s formalities section. From that date onwards it could be “rectified” by an appeal. “Rectified” by an appeal would mean that the board would set the impugned decision to grant aside and remit the case to the first instance with the order to grant a patent with the designated CS including DE. [6.2.1]
Then the Board considers the remedies initially envisaged by the representative, beginning with R 89 :
Correction pursuant to Rule 89 EPC 1973 would be an alternative means to rectify the decision if a request had been filed meeting the conditions of that Rule. The Rule reads: “In decisions of the EPO, only linguistic errors, errors of transcription and obvious mistakes may be corrected.” […] A decision to grant contains an obvious mistake if the text given for grant is not and obviously cannot be what the ED actually intended, and the erroneously indicated text can be replaced by that on which the examining division actually wanted to base its decision. For reasons of legal certainty and to prevent adverse effects for third parties, only obvious errors can be corrected. That means it must be clear not only that the ED did not intend to grant the patent in the form actually granted, but also in what form it did intend to grant it. […] [These] conditions are clearly not met. There is no indication of a divergence between the text given for grant and the actual intention of the ED. The representative approved the communication under R 51(4) by paying the fees and filing the translation in compliance with that provision. As the communication indicated FR, GB and NL as designated CS, it must be assumed that the ED wanted to grant a patent for those three states. […] The addition of DE in the decision to grant would amount to an amendment in the sense of a substantive correction, which is not covered by R 89 and not possible under G 12/91. [6.2.2]
And as far as a correction under R 88 EPC 1973 is concerned:
Pursuant to R 88, first sentence, EPC 1973 […], “linguistic errors, errors of transcription and mistakes in any document filed with the EPO may be corrected on request.” […] There is no legitimate interest for the present request under R 88, because the requested correction would have no legal effect. The desired correction would only lead to a correction of Form 1200, by adding DE to the designated CS. It would not have the effect that the designation fee paid on 18 September 2007 would be deemed to have been made within the time limit of 10 November 2003. Independent thereof, the correction of Form 1200 would not also bring about a correction of the decision to grant, which is not a document filed with the EPO. This decision would then simply diverge from Form 1200 insofar as DE is not included. In this regard, reference is made to the extensive explanations given in J 23/03 [2.2] that apply mutatis mutandis to the present case. [6.2.3]
Finally the Board deals with the request for re-establishment:
The appellant lost its right to a European patent for Germany through its failure to pay the designation fee in due time. Re-instatement of periods for payment of designation fees, however, is not allowable pursuant to A 122(5) EPC 1973, which applies in Euro-PCT proceedings to the time limits under R 107(1)(d) in conjunction with A 158(2) EPC 1973. This follows from G 3/91. [6.2.4]
The Board then comes to the conclusion that the lack of awareness of the appropriate legal remedy cannot be excused.
Professional representatives are supposed to know the EPC and the case law, in particular the decisions of the Enlarged Board. This is true even though remedies against decisions to grant may be sought infrequently. It was not reasonable for the representative to believe that an appeal would not be necessary because at least one of the three substantive requests filed with the letter of 18 September 2007 would be granted. […]
It is clear that this is not a case in which the law was doubtful and the procedure that the representative chose to follow cannot be considered to have been a “not unreasonable” one, such as in case J 28/92. [6.2.6]
Consequently, the request for re-establishment is refused, the appeal is deemed not to have been filed and the appeal fee is reimbursed.
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