Saturday, 29 October 2011

T 312/11 – On Remedies

The present decision deals with a case which itself is much more interesting than the decision it resulted in.

The application under consideration was filed under the PCT on April 27, 2001, claiming three priorities. There was an A2 publication on November 8, 2001. Only two of the three priorities were completely cited.

On February 12, 2002, the WIPO informed the applicant that the third priority claim was deemed not to have been made because the applicant had not responded to the invitation under Rule 26bis.2(a) PCT.

The A3 publication dated May 10, 2002, mentioned only the first two priorities.

The WIPO transmitted two priority documents to the EPO.

On November 22, 2002, the applicant entered the European phase.

In a letter to the EPO dated February 7, 2003, the applicant filed amended claims and also made a statement on the priority issue:

On April 10, 2003, the Receiving Section of the EPO contacted WIPO on this matter. The answer was as follows:

On March 27, 2003, the EPO informed the applicant accordingly:

WIPO also had become aware that page 25 of the A2 publication was incomplete and re-published the application (as an “A9” document) on July 3, 2003. Again, only two priority documents were cited.

In the meantime the examination proceedings had started. After a considerable number of A 96(2) notifications and telephone interviews, the Examining Division (ED) finally granted a patent with amended claims. The decision to grant a patent, dated June 25, 2009, became effective on July 22 of the same year with the publication of the mention of the grant in the European Patent Bulletin.

On June 2, 2010, the appellant filed a request to the ED for correction of the decision according to R 140. It argued that the reference to the third priority document, erroneously omitted from the publication, should be introduced into the bibliographic data of the patent.

On the very same day, the representative filed an appeal and a request for re-establishment of rights in order to remedy the failure to observe the time limit for filing an appeal.

The appellant requested that the decision to grant a patent be set aside and a new decision be issued including the reference to the third priority document.

On January 26, 2011, the ED informed the appellant that the requested correction under R 140 was considered allowable.

With a letter dated April 28, 2011, the appellant withdrew the appeal and requested reimbursement of the appeal fee and of the fee for re-establishment of rights. It alleged that the appeal was redundant in view of the fact that the ED’s decision to correct the appealed decision applied ex tunc. The appeal should thus be considered inadmissible or deemed not to have been filed.

On June 6, 2011, the Board nevertheless issued a provisional opinion:
[6] … the board considers that, prior to the examination of the appellant’s request for reimbursement of the appeal fee under R 103, it is necessary to examine its request for reestablishment of rights for filing an appeal.

[7] The present appeal was filed almost one year after the notification of the decision to grant, thus clearly outside the time limit of two months set by A 108. Thus the appeal can only be considered duly filed if the request for re-establishment of rights under A 122 is allowed. However the board is of the opinion that the request for re-establishment of rights cannot be granted because it appears that not all due care required by the circumstances has been taken.

[8] In particular it is noted that the issue of the missing reference to the third priority document had been raised once by the appellant, then applicant, in letter dated 07 February 2003. A subsequent e-mail exchange between the EPO and the International Bureau is on file, wherein a reply from the International Bureau confirmed that there had indeed been a mistake which was to be corrected and that a confirmation would be sent to the applicant and authorities concerned. The Receiving Section of the EPO then issued a communication dated 27 May 2003 informing the applicant that the third priority would be registered upon receipt of the relevant communication from the International Bureau, and that a correction in Section II of the PCT Gazette would be published. The applicant was furthermore urged to take up contact with the PCT Receiving Office in order to speed up the process, and it was informed that the mentioned priority document was not yet available in the EPO’s files.

[9] There is no evidence on file that the relevant communication from the International Bureau was received, neither by the EPO nor by the applicant, during the grant proceedings. Moreover a correction in Section II of the PCT Gazette was published in PCT Gazette No.27/2003 (03 July 2003) but it only concerned replacement of a page of the description and did not make any reference to priority. Pursuant to this entry in the PCT Gazette, a corrected version of the international publication pamphlet was published on 03 July 2003, wherein the third priority document is still missing.

[10] Despite the absence of any indication that the issue of the third priority claim had been settled, the applicant has made no further enquiries in this respect during the entire examining procedure. It is noted that a communication from the ED, dated 18 February 2005, even states that “[t]he present application claims priority from US 60/200,580, filed on 28.04.2000 and from US 60/240,169, filed on 13.10.2000.”, thus omitting a reference to the third document. Exactly the same statement is made again-in a further communication of the ED dated 06 June 2006. Finally an annex to the communication under R 51(4) EPC 1973 dated 20 November 2007, comprising the bibliographic data for the patent publication, indicates the same two priority documents mentioned above.

[11] It appears that the applicant should have been alerted, if not by the abovementioned communications from the ED, then at the latest by the annex to the R 51(4) EPC 1973 communication, that the issue of the third priority document had not yet been satisfactorily settled. However the applicant, who made several submissions with letters of 28 May 2005, 7 September 2007 and 11 March 2009, failed each time to address this problem.

[12] The appellant has disclosed in detail the procedure followed at the representative’s office in relation to R 51(4) EPC 1973 communications. Said procedure comprises checking by the office’s formalities department and by members of the office’s biotechnology group, and involves the use of a checklist covering various details to ensure that the records held by the EPO are correct. However it was inadvertently failed to notice that there was an inconsistency between the representative’s own records and the bibliographic data attached to the R 51(4) EPC 1973 communication in what concerned priority designations. The appellant argues that this should be considered as an isolated failure in a robust and satisfactory system, which should be excused pursuant to A 122(1).

[13] The board considers that, given the circumstances of the present case in which there was a problem with priority designations from the onset, a more thorough control, specifically directed to that issue, would have been required to monitor and follow up, at the latest upon receipt of the communication under R 51(4) EPC 1973, the settlement of this issue. Such a control however has obviously not taken place.

[14] Moreover, the appellant has not given any explanation about the reasons why the priority issue was not addressed all along the examination procedure. Furthermore, it should also be noted that it is only almost one year after the notification of the decision to grant that the appellant took again action concerning the third priority, following instructions from the proprietor’s US representative, which again implies that the system implemented at the European representative’s office was not sufficiently efficient.

[15] The board is thus of the opinion that the request for re-establishment of rights under A 122 cannot be allowed and as a consequence the appeal is deemed not filed within the due time limit stipulated by A 108. Therefore, the board is inclined at present to issue a negative decision in line with the above considerations and order the reimbursement of the appeal fee but not of the fee for re-establishment of applicant’s rights. …
With a further letter dated August 5, 2011, the appellant withdrew its request for re-establishment of rights and its request for reimbursement of the fee for re-establishment of rights. The appellant finally requested that the appeal fee be reimbursed.

The reasons for the final decision of the Board read:

[1] Although the present appeal was withdrawn from consideration by the Board of Appeal in respect of admissibility and allowability, the Board of Appeal, in the exercise of its inherent power, is authorised to examine the appellant's request for reimbursement of the appeal fee (see T 41/82 and J 12/86).

[2] According to A 108 the notice of appeal shall be filed, in accordance with the Implementing Regulations, at the EPO within two months of the notification of the decision. Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid.

[3] In the present case the notice of appeal was filed and the appeal fee was paid almost one year after the notification of the decision of the ED, thus clearly outside the time limit of two months set by A 108.

[4] Therefore, the appeal is deemed not to have been filed. There is no legal basis for payment of the appeal fee which, for this reason, is reimbursed.

I find this case noteworthy because it raises some interesting questions. The ED granted a request for correction under R 140 - which rule concerns linguistic errors, errors of transcription and obvious mistakes - but should it have done so? Was there really an error in the decision to grant a patent? Most certainly there had been an error in the PCT proceedings, but can the decision to grant a patent be said to have been affected by this error?

The appeal is interesting, too. Was there any valid ground for appeal? Was the applicant really adversely affected within the meaning of A 107 by the decision to grant a patent? Obviously, the lacking priority could in principle have adversely affected the applicant, e.g. if the ED had dismissed the main request of the applicant as lacking novelty over some prior art filed or published between the third priority date and the PCT filing date and had granted only an auxiliary request. But this appears not to have been the case here.

So even if the request for re-establishment had been granted, the appeal might have been inadmissible. Having said this, as the Board did not go so far, we shall never know for sure.

What do you think?

To read the whole decision, click here.

The file wrapper can be found here.


Anonymous said...


Each of the two first claimed priorities P1 and P2 are only about a dozen pages long, whereas the application has about 90 pages. Prima faciae, the application certainly contains subject-matter not disclosed in the first two prior applications.

The third priority P3 was filed 28.02.2001, whereas the application's filing date is 27.04.2001 - a mere two months between the two.

The EPO's ISR cites no less than four documents with a "P" code (either 54(2) or 54(3) depending on whether the prio is valid), and an E document (pure 54(3)).

The first document cited in the search report was considered very relevant by the examiner ("X" against all claims). No wonder, it was a paper authored by one of the named inventors, published between P3 and the filing date. I would suppose that it probably disclosed the entire invention.

The examiner did eventually address some of the 54(3) documents in the course of the procedure, and even found one more of these, D15.

The applicant's apparent lack of diligence is thus more incomprehensible. The applicant's own disclosure does not appear to have been discussed in the exchanges.

For the appeal, I think I would have requested an appealable decision together with the request under Rule 140, and appeal THAT decision in case the requested change was not made. Appealing the grant decision itself does not make much sense to me, nor did it for the BoA.

I had a feeling that there was more elements to this story, and was curious to see what was actually written on the original PCT RO/101 form, but it is neither available at WIPO nor in the USPTO's PAIR.

I was astounded when I checked the copy of P3 which was eventually filed at the EPO. Look at it yourself. The document is NOT a certified copy of the papers filed by the applicant, but the publication pamphlet presumably derived therefrom.

The EPR wrote in his cover letter:

The US PTO was unable, when requested, to provide a certified copy of the original application as filed on 28 February 2001. Therefore when a certified copy of this document was requested, the US PTO instead issued the attached certified document, which is a certified copy of the publication US 2002/0091246. This is, I am informed by my instructing US attorneys, identical to the US application 09/794,2 10 that was filed at the US PTO. If the EPO requires further certification that the attached document is identical to US 09/794,210 please contact me in this regard.

Is P3's priority properly established under Rule 53(1) EPC? The document supplied is, formally, not a copy of P3, but its (typeset) publication pamphlet derived therefrom.

I looked up 09/794,210 in PAIR, and I do receive an error when I click on the original application documents.

Another USPTO Halloween horror story? I've seen some unthinkable things happen in their PCT operation, so I'm not that surprised.

Anonymous said...


Article 4d of the Paris Union (which does not apply directly for the EP procedure) states:

(3) The countries of the Union may require any person making a declaration of priority to produce a copy of the application (description, drawings, etc.) previously filed. The copy, certified as correct by the authority which received such application, shall not require any authentication [...]. They may require it to be accompanied by a certificate from the same authority showing the date of filing [...].

Anonymous said...

The link given for P3 was erroneous, here's the correct one.

Anonymous said...

When I download the entire US wrapper for 09/794,210 as a single PDF file, instead of clicking on the individual components, the original application documents are perfectly visible.

Another fine mess, really.

The EPO issues its priority certificates from the scanned copies of the application documents. Can't the USPTO do the same?

oliver said...

Thanks for having shared your findings with us. What a file!

Anonymous said...

This is what makes all statistics based on patent data so difficult and even irrelevant. The mouths of social scientists water when they consider the amount of precise data, precise dates and precise country coverages of patents, but they do not realise that each patent has its own fate and can only be understood in context.

A file like this also explains why the performance of due diligence analyses is so time-consuming and expensive.

Thank you for continuing the exposure of the soft underbelly of European patent endeavours.

Best wishes,

George Brock-Nannestad

Manolis said...

Very interesting case indeed!

Regarding the R140, I would also tend to agree that omitting the priority claim does not appear to be an error in the decision. It is similar to the pending referral G1/10 where the Druckexemplar was corrected under this rule. Hopefully we will get some more clarifications on the matter when the EBoA decides...

As to your second question, I would agree again that there seems to be nothing in the grant decision to adversely affect the opponent. Invalid priority is not a ground of opposition (if, according to the first comment here, the other priority documents did not disclose all the content of the application) and, in any case, no opposition was filed.

Anonymous said...

Oliver, das war mir ein Vergnügen!

The more I look at this case and the more I find it flawed. Legal certainty is not ensured; the patent is potentially fatally infected. I have to reflect a bit about the events surrounding the request under R. 140, which I believe was inappropriate. R. 139 would have been a more appropriate device -- the mistake, if any, was not the EPO's.