This case concerns an application that was withdrawn by letter dated 31 July 2007, received by the EPO on 6 August, 2007. The withdrawal was encoded on 10 August 2007. On the same day, the EPO received a fax from the representative stating: “With reference to my letter dated 31st July 2007, if that letter has not been received at the EPO, please ignore the request to withdraw the EP application … as it was sent in error.” Later on, the representative requested a correction under R 88 EPC 1973. The appeal was filed after the refusal of the EPO to revoke the withdrawal under R 139 (former R 88).
The appellant admits that the Receiving Section was right to interpret the request for withdrawal of its application as unconditional and reacted correctly by entering this withdrawal in the European Patent Register (EPR) but is of the opinion, that this entry could be deleted, because the declaration was made in error. [1]
The matter to be dealt with is the request of the appellant to retract this withdrawal under R 139 because it was, according to the appellant, made erroneously. This Rule allows correction of errors in documents filed with the EPO, these errors being defined as linguistic errors, errors of transcription and mistakes. [2]
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 has to be examined, whether the correction of such an error can also be subsumed under R 139. [3]
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 is J 10/87 with reference to earlier decisions. In this decision the Board developed the preconditions under which a correction of a procedural declaration may 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. Under point 8 of the reasons of that decision the Board already stated that the cited case law was sound, because the public interest must rank higher than the interest of a patent applicant wanting his erroneous statement already notified to the public to be ignored. In these cases, legal certainty had to prevail. [4]
These considerations have been confirmed by several other decisions during the following years up to the present (e.g. J 4/97, J 12/03, J 25/03, J 14/04, J 7/06, J 8/06). From all these decisions it is clear that a withdrawal of a European patent application can only be retracted as long as the public has not been officially informed about the withdrawal. [5]
The Board can accept that it was not the intention of the appellant in the present case to withdraw the application but that this was due to a misunderstanding between the various representatives of the appellant dealing with the case. There would also be no particular delay of the proceedings if such a correction would be allowed. [6]
[…] The particularity of the present case might be seen in the fact that the letter, containing the request for “ignoring” (i.e. implicitly retracting) the former letter containing the withdrawal of the European patent application was considered by the Receiving Section as having arrived at the Office on the day of the official publication of the withdrawal. [8]
With respect to the importance of the exact dates which are decisive for the allowability or non-allowability of the retraction the Board has requested an investigation concerning the entry of the withdrawal into the EPR and its public availability. The result can be summarised as follows: The letter of withdrawal dated 31 July 2007 was received by the Office on 6 August 2007. On 8 August 2007 this letter was dealt with by an EPO official and encoded on 10 August 2007 as “legal status”. The procedure of encoding is not to be understood as synonymous with the valid public access to the corresponding data in the EPR. There are two further steps necessary (adding the data to different internal databases) which generally takes 1 to 3 days. As in the present case the encoding took place on a Friday (10 August 2007), it cannot be established by the EPO that the information was made available to the public, i.e. that the public was officially notified of the withdrawal before Monday, 13 August 2007. [9]
The letter dated 10 August 2007, containing the request for retraction of the withdrawal was received by the EPO by fax on the same day. [10]
From the above it follows that the letter containing the request for retraction of the withdrawal was received before the date on which it can be established that the public was officially informed about the withdrawal. [11]
In line with decision J 25/03 it has also to be considered if the public, even after file inspection would have had reason to suspect, that the withdrawal could be erroneous and later retracted or not. In the course of the investigations made it turned out that the content of the letter dated 10 August 2007 was also accessible via the Register Plus facilities by inspection of the file documents on 13 August 2007. Consequently the public would have had the information about the withdrawal and the request for its retraction at the same time and would therefore have been sufficiently warned that there possibly was something wrong with it. [12]
Under these circumstances the Board is satisfied that the public would not have been misinformed or misled by the information published in the EPR. [13]
The Board therefore concludes that the withdrawal of the application may be retracted in the present case by correction under R 139. [14]
Just one minor remark: From the point of view of third parties, there is not much to be said against allowing the retraction as it arrived in time and nobody was misled. This being said, it could be argued that R 139 is not an appropriate remedy as the request for withdrawal might not qualify as an error. It was indeed the true intention of the professional representative to withdraw the application. (In the present case the error was made by the U.S. attorney of the applicant who inadvertently mixed up two distinct applications.) However, J 8/80 [4] stated that “for the purposes of R 88 a mistake may be said to exist in a document filed with the EPO if the document does not express the true intention of the person on whose behalf it was filed” (i.e. the applicant). (see also J 6/91 [2.2]) So what counts is not the true intention of the professional representative but the true intention of the applicant.
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