Readers interested in ‘surprising’ new case law only should not read on as the present decision is not of the surprising kind. Its main interest lies in the fact that it applies the established case law concerning the withdrawal of applications to the “removal” of designations.
In the course of the examination proceedings the designated contracting states were restricted to DE, FR and IT. In response to a communication of the Examining Division (ED), stating that claims on file were allowable for IT, the applicant filed separate claims for FR and DE. Subsequently, the applicant’s representative wrote to the Office (April 5, 2005):
Further to our communication today concerning the above-captioned application, please be informed that Applicant requests that Germany and France be entirely removed from the present application. Accordingly, Applicant requests the Examiner to expedite the issuance of the communication under R 51(4) for the above-captioned application for Italy.
With reference to that letter the Formalities Officer responded as follows (April 12, 2005):
I hereby confirm that designated states Germany (DE) and France (FR) have been withdrawn from the above mentioned patent application. Italy (IT) is the sole remaining designated state.
Then the communication under R 51(4) indicating IT as the sole designated state was issued (June 10, 2005).
The applicant filed a divisional application designating DE and FR (September 20, 2005) and expressed its approval to the grant (October 11, 2005):
... we would like to confirm that the applicant approves the documents intended for grant.... We herewith request that the Decision to Grant be issued ....
Later on (December 29, 2005) the applicant’s representative requested confirmation that the communication of April 12, 2005 confirming withdrawal of the designations of DE and FR was issued in error and that the divisional application had been correctly filed. In support of that request it was submitted that in a telephone consultation with the Examiner (April 5, 2005) the latter insisted on the removal of DE and FR before the allowable claims for IT could proceed, thereby forcing the applicant to confirm “removal”. It was understood that the applicant wished to maintain the rights for DE and FR and that “removal” did not prejudice those rights. Accordingly, the applicant had still been under the impression that he would be able to obtain a single patent with two sets of claims.
Here is what the Board has to say:
[2] A valid notice of withdrawal which has been received at the EPO is binding on the applicant. It should only be accepted without question if it is completely unqualified and unambiguous (see J 11/87 in respect of a request for withdrawal of a EP application). Where there is even the slightest doubt as to the applicant’s actual intent such a declaration should be construed as a declaration of withdrawal only if the subsequent facts confirm that such has been the true intent.
[3] The requests in the letter dated 5 April 2005, namely that “Germany and France be entirely removed from the present application” and that “the issuance of the communication under R 51(4) for the above-captioned application for Italy” are clear and unambiguous. They leave no room for interpretation, either in view of the wording or in the given procedural context: Also where use was made of the possibility of having different sets of claims under R 87 EPC 1973, first alternative, the grant procedure continued to be a single one for the application concerned, so that only one communication under R 51(4) EPC 1973 and one single decision to grant were issued. Given this, it was a not uncommon course of action by applicants to withdraw the designation of states which gave rise to contentious prior art issues pursuant to A 54(3) EPC 1973 in order to obtain a swift grant for the other designated states.
[4] Even if the Office, for whatever reason, had or should have had any doubt as to whether the applicant really wished to abandon the designations in question, any such doubt would have been removed by the subsequent events, in that the applicant did not react to the communication dated 12 April 2005 in which the Office explicitly informed the applicant of its understanding that the letter of 5 April 2005 constituted a notice of withdrawal; rather, following the communication under R 51(4) EPC 1973 which again explicitly indicated IT as the sole Contracting State, an unqualified approval of the documents intended for grant was given and grant itself was requested - again an unambiguous and also plausible procedural declaration consistent with the earlier withdrawals of the designations of DE and FR.
[5] The appellant further argued that it should be allowed under R 88 EPC 1973 (which corresponds to R 139 EPC 2000) to resile from the withdrawal of the designations, since it had been made under an erroneous assumption. However, according to the established case law of the Boards of Appeal, one precondition for such a retraction is that the relevant request is made before the withdrawal has been officially notified to the public (see e.g. decisions J 15/86 and J 25/03). This is in the interest of legal certainty and balancing the interests of the applicant and of third parties, in particular in being able to rely on information officially published, and is an objective criterion which applies irrespective of the true intentions or mindset of the person who made the relevant statement. In the present case the withdrawal was published in the EP Bulletin 21/2005 of 25 May 2005, i.e. about half a year before the validity of the withdrawal of DE and FR was contested for the first time by letter of 29 December 2005.
[6] In conclusion, the withdrawal of the designation of DE and FR was valid and cannot be retracted.
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