Tuesday, 20 July 2010

T 683/06 – No Second Date

Reality sometimes definitely has a “paper D” flavour …

At the beginning of this story there is a late night fax transmission at the very end of the priority year. Some of the parts of the application (pages 1 and 2 of the description, claims 1 to 47 and Figures 1 to 3) were received at the EPO before midnight, i.e. on June 14, 1995, some only after midnight (pages 3 to 16 of the description), i.e. on June 15. The EPO followed its internal instructions and asked the applicant to choose between (1) keeping only the parts filed before midnight, which allowed to have June 14 as date of filing and to keep the first priority claim, and (2) keep the whole document and have June 15 as date of filing, thereby losing the first priority claim. The applicant chose solution (1). Later it filed a divisional application based on parts of the first application which had been received after midnight. The EPO refused this application because it went beyond the content of the parent application. The present appeal deals with this decision. The applicant requested that the date of filing of the parent application be fixed to June 15 (correction under R 139).

** Translation from the German **

[2] The main request of the appellant aims at obtaining that June 15, 1995, be acknowledged as date of filing of the parent application. If this was done, all the documents filed by fax at that time would have to be taken into account and the divisional application would have support in the application as filed.

[2.1] The EPC does not provide the possibility of an ex post shift of a date of filing after it has been fixed. Only R 56 makes it possible to shift a date of filing to later dates when missing drawings or parts of the description are filed at a later date.

Moreover, a correction of errors in documents filed with the EPO pursuant R 139 can also lead to a correction of the date of filing. However, the present case does not concern such a correction. What is aimed at here is not to correct an erroneous indication of the date of filing of the parent application in the application documents. Rather the date of filing of the parent application is to be changed. Therefore, R 139 cannot serve as legal basis for fixing anew the date of filing, all the more as the provision cannot be applied any more after the grant proceedings have been terminated.

Even a correction under R 140, which is available for linguistic errors, errors of transcription and obvious mistakes in decisions of the EPO, is out of the question. The indication of June 14, 1995 as date of filing in the corresponding documents of the Office is, as the case history clearly shows, not an error or an obvious mistake at all, but is the result of a decision-making process. Therefore, it cannot be corrected in this way even if the result of this decision-making process were wrong.

[2.2] The Board does not share the view of the appellant according to which there was no need for a legal basis for fixing anew a date of filing because the fixing of the date of filing was only binding on the Office and interests of the public were not concerned. Quite to the contrary, the date of filing is of central importance in the patent system as a whole and has numerous effects on the concrete grant proceedings including remote effects in possible divisional applications. The present proceedings in particular show the importance of the date of filing.

Therefore, the Board does not see itself in a position to fix anew the date of filing in the terminated proceedings concerning the parent application.

[2.4] Finally it has to be pointed out that the regulations concerning applications by fax which are received partly before and partly after midnight (mitternachtsüberschreitend) as stipulated under point [5.1] of the Communication of the EPO dated June 2, 1992 [OJ 1992, 309], are applicable to the present case. It is not clear why this regulation should not be applicable in a case where the application contains two inventions (assuming that the present case is such a case). Moreover, it is to be noted that this regulation does not offer the applicant the possibility to determine the date of filing in a subjective manner, but only to choose between two objectively conceivable options, in the exercise of legitimate interests (interessensgerecht).

[3] In its first auxiliary request the appellant wishes to obtain that the Board, with regard to the present proceedings, act on the assumption […] that all the documents had been received on June 14, 1995, because the contrary cannot be asserted.

[3.1] As far as divisional applications are concerned, is questionable whether it is possible to assume a different date for the receipt of the documents of the parent application than the date which the parent application has received as date of filing. But even assuming that this was in principle “virtually” possible for the date of receipt of the application documents, this assumption cannot lead to fixing the date of receipt of the documents to June 14, 1995.

[3.2] In its internal note dated June 19, 1995, the Receiving section has listed which parts of the documents of the parent application had been received on June 14, 1995 (all except pages 3 to 16 of the description) and which parts had only been received after midnight, on June 15, 1995. The applicant has been informed accordingly, e.g. in the letter dated August 3, 1995. Even if those facts are challenged, the Board will use them as basis for its decisions because they have been established by the Office, unless there are justified doubts as to their correctness or other circumstances which could be suitable for calling them into question.

[3.3] In the present case, there are indeed such circumstances. As a matter of fact, the corresponding pages of the electronic file of the Office do not contain any impressions of a fax machine documenting the date and time of receipt in the EPO, i.e. of the receiving fax machine. However, the emission data (Sendevermerke) of the office of the representative who represented the party at that time can be seen.

[3.4] The file of the parent application has been scanned at a later time (“backscanning”). It cannot be determined from the electronic file whether the reception data (Empfangsvermerke) of the fax of the EPO are only invisible on the individual pages of the electronic file or if they are indeed missing. On the other hand, it is conspicuous that the assignment of the documents to the two dates (June 14 and 15, 1995), as made by the Board, corresponds exactly to the times that appear on the emission data.

[3.5] Therefore, it appears to be likely that at that time the Receiving section – for what reasons ever – has carried out the chronological assignment of the documents on the basis of the emission data of the fax machine of the attorney’s private practice. However, this can hardly be adequate for a sufficiently safe assignment. If the question of the precise [moment of] receipt were decisive, it would be necessary to accede to the appellant’s motion to take evidence by consulting the original file and to pursue the investigations.

[4] However, the Board is of the opinion that the question as to when precisely the individual documents were received is not decisive. As a matter of fact, the applicant, in a letter dated November 6, 1995, has explicitly and unambiguously defined the object of the grant proceedings.

[4.1] In its letter dated August 3, 1995, the Receiving section has exposed in detail, to the representative who represented the applicant at that time, which variants corresponded to which documents and has asked for information on which date of filing was to be fixed and which claims were to be searched. The representative has responded in a letter dated November 6, 1995, that the search was to be carried out on the basis of the documents that had been received before midnight on June 14, 1995.

[4.2] This statement is unambiguous and has been made in full awareness of the relevant facts. It means that the date of filing is fixed to June 14, 1995, and cannot reasonably be understood in another way. At the same time, in view of the Communication of the EPO dated June 2, 1992, it means that the other documents have been abandoned. The then representative must have been aware of this fact. The appellant has to stick to that declaration even today. This means that the pages 3 to 16 of the then received pages of the description are not relevant.

[5] For the same reasons, the second auxiliary request, which aims at a fragmentation of the documents according to a precise date of receipt still to be determined, cannot be granted either. Even the appellant’s motion to take evidence is irrelevant for the decision on the case and had to be dismissed.

[6] The third auxiliary request aims at setting aside the impugned decision and at a remittal of the case to the first instance for further decision.

It aims at a continuation of the examining proceedings on the basis of the disclosure of the documents which had been received on June 14, 1995, before midnight, i.e. form F 1001, claims 1 to 27 of the divisional application, which are almost identical with claims 1 to 27 of the parent application, of pages 1/26 and 2/26 of the divisional application as well as Fig. 1 and 2. The Board does not see any reason which would be in conflict with a continuation of the examining proceedings on the basis of the disclosure of those documents.

[...]  The case is referred to the first instance for further decision.

NB: This decision has recently been commented by Privat Vigand, to whom I owe much of my knowledge on EPC matters. His comments have been published in Proprieté Industrielle, Juillet-août 2010, p. 29. Prof. Vigand writes (my translation from the French):
[...] Taking into account the date of filing of the patent under consideration, the EPC 2000 was not applicable. It is nevertheless interesting to note that if the same situation occurred after the entry into force of this convention, it could be treated without referring to the Communication of 1992.

As a matter of fact, new R 56(1) provides that when the EPO finds that some parts of the application are missing (which is clearly the case here) it imparts a time limit (two months) to the applicant for filing them.

If the latter sends the missing parts to the EPO within the time limit, a new date of filing is given to the application, this new date being the date on which the missing parts were received (R 56(2)), unless the missing parts are found in exactly the same form (à l’identique) in the priority document, in which case the date of filing is not changed (R 56(3)).

For the sake of completeness it has to be added that if the date of filing has been modified, the applicant has the “right to repent” within one month and to withdraw the missing parts in order to obtain anew the original date of filing (R 56(6)).

In any case, when this time limit has expired, the date of filing is irrevocably fixed and the applicant will not be able to request its modification any more.”
Personally, I am not so sure that R 56 would be applicable in such a situation (as the missing parts are missing only a posteriori, so to say). Be that as it may, the last sentence of Prof. Vigand’s statement is certainly what we should retain from this decision.

To download the whole decision (in German), you may click here.


Anonymous said...

Why might R. 56(1) EPC 2000 not be applicable to a case like this one? I suppose "missing" simply means that parts of the description or drawings which were intended to be part of the application documents ended up not being part of the application documents.

Btw, how does R. 56 work when the EPO issues a communication under R. 56(2) but the applicant is of the view that R. 56(3) is complied with? Does the applicant have only the single month of R. 56(6) to decide whether to withdraw the missing parts or to contest the EPO's finding (with uncertain outcome)?

Can an incorrect application of R. 56(3) be attacked under Art. 100(c) in opposition proceedings?

Oliver said...

My view of things is as follows: The 1992 Communicaton is precious because it tells the EPO how to handle midnight fax receipts. If we ignore this Communication and consider a fax that arrives partly before and partly after midnight, there is obviously a problem concerning its date. As the fax is complete only after midnight, I would tend to give the later date. If the applicant insisted on keeping only the part received before midnight, this could be accepted. I for one would never consider applying R 56 because in my opinion at no time are there parts missing. If the applicant wants to keep the later date, all the pages were always there, none has ever been missing; if he wants to have the earlier day, there are parts in excess to be withdrawn. But it may well be that you and Prof. Vigand see something that I overlook. Please do not hesitate to correct me.

Oliver said...

Having done some additional thinking, I believe to have understood how R 56 can be seen to apply. To do so, I have to consider midnight as a sort of guillotine which puts an end to the filing process. As what has been filed before is sufficient for obtaining a date of filing under A 80 and R 40, it can be considered to be an application wherein some parts are missing. What has been filed after midnight can be considered to have been filed under R 56(2). R 56(3) and R 56(6) then open the two options as foreseen in the 1992 communication.

What I do not like in this guillotine picture is that it does not work the other way round. If what has been filed before midnight does not satisfy the minimum requirements (A 80, R 40), the guillotine does not do anything and the application stays in one piece, together with the parts filed after midnight.

Well, I think I have spent already too much time on this obiter dictum.

Anonymous said...

(same anon)

It might be easier to view the receipt of the application documents and the examination under Art. 90(1) as two completely different stages. When applying R. 56(1), the EPO only looks at the documents that are on file (i.e. those received before midnight). It is not relevant that, during the "receipt phase", the missing parts were actually filed after midnight and subsequently renounced by the applicant.

Of couse this is only my personal interpretation. Maybe a future decision will surprise me ;)

Anonymous said...

Now what about the EPO's automatic mailbox? Applicant drops application at 23:59:59, and the latter gets stuck in the switching mechanism. How would this be considered? The top half of every page is filed on time?

Joke aside, had I been the attorney I might have handled things differently back in 1995. If you look at the prior application documents, you can infer that the reception time and dates were simply read off the header at the top of the pages - had the receiving section relied on a received fax report, it would have surely produced it as evidence against the applicant. This information is created by the originating fax machine, and the timekeeping of these contraptions is no better than an old wall clock or the person who set it. One could have very well argued that the time was incorrectly set on the fax machine, or even better the fax was set back in time - actually, if the applicant had forgotten to adjust the machine to summer time he would have saved the situation. The receiving section would have be unable to reconstruct the plausible sequence of events it put in order the stack of paper sheets lying in front of the machine the next.

But of course the preceding is entirely theoretical, as representatives are always strictly and scrupulously honest and forthcoming in all proceedings before the EPO.

Nowadays incoming fax messages are processed by a server which timestamps and stores incoming messages automatically, and presumably running off the EPO's internal servers, so any of the shenanigans I suggested above would be in any case impossible.

I might also have attempted invoking Art.122 and arguing that it took longer for faxes originating from East Berlin to reach their destinations due to border formalities.

For the invention, the applicant nevertheless got something for the parent application, and the "divisional" remained pending for 15 of the 20 year term, achieving much of its purpose. I wonder whether it's such a good idea anyway, I don't see the applicant bragging about its super A/D converter on its web site, and 24 bit audio A/D converters are in 2010 almost a commodity item.