Monday, 13 February 2012

J 1/11 and J 18/10 – Second Thoughts (Again And Again)

These decisions deal with withdrawals from a withdrawal of an application.

J 1/11

In J 1/11, the application under consideration was filed as an international application and then entered the European phase. By letter dated 19 January 2009 received by fax on the same day, and confirmed by letter of January 28, 2009, the authorised European representative of the above application wrote the following:
“On behalf of the applicant I hereby formally withdraw the above application. Please refund the examination fee paid in relation to this application.”
On February 6, 2009, the withdrawal of the application was recorded in the European Patent Register (hereinafter “the Register”) after a confirmation of the withdrawal was sent to the representative one day earlier.

On February 26, 2009, that is, after the withdrawal was recorded in the Register, but before it was published in the European Patent Bulletin (hereinafter “the Bulletin”), a request for correction pursuant to R 139 was filed. The request stated that the withdrawal was made in error and a correction should be made to the effect that the application was not withdrawn.

The EPO did not allow this request and the applicant filed an appeal.

The appellant essentially argued in writing that a request for retraction of a withdrawal of the application should be allowable until such withdrawal has been officially notified in the Bulletin according to A 129 EPC rather than, as was held in the decision under appeal, the Register according to A 127 and R 143. The appellant pointed out an inconsistency between J 25/03 and J 14/04 on the one hand and J 10/87 and J 4/03 on the other hand. Should the Board not be minded to follow the reasoning of these latter two decisions, the appellant requested the Board to refer the following question to the Enlarged Board of Appeal (EBA):
“Is retraction by correction of a withdrawal of a patent application no longer possible if the withdrawal has already been recorded for inspection in the Register (per J 25/03 and J 14/04) or should publication of the withdrawal to the general public in the Bulletin (per J 10/87 and J 4/03) be decisive?”
As you might have guessed, the Board dismissed the appeal, for the following reasons:

[2] Explicitly withdrawing a pending patent application is a declaration of highest importance for the applicant, since all legal effects of the application such as establishing a preliminary right, are finally abandoned. In light of these consequences, utmost caution is therefore required when declaring the withdrawal of an application.

[3] A correction of errors in documents filed with the EPO under R 139 is only possible under strictly defined conditions. In the case at issue, the request for retraction of the withdrawal reached the EPO more than a month after the withdrawal was made and after it was recorded in the Register. Yet it is not primarily the EPO that is concerned with a withdrawal, but the public, for which a withdrawal is of potential interest. It is thus the public that can be regarded as the ultimate addressee of such a withdrawal. Therefore, a withdrawal cannot be retracted once the public has been officially informed thereof. In a broader sense, this is also reflected in the principle that a declaration of intent can only be retracted if the retraction reaches the addressee either before said declaration or at the same time, a rule that can be found in the civil law systems of many Contracting States of the EPC.

It is not disputed by the appellant that retraction of the withdrawal is no longer possible once the withdrawal has been published in the Bulletin. The question is thus whether a publication of the withdrawal in the Register should have the same legal consequences. In the present case, retraction of the withdrawal reached the EPO almost one month after the withdrawal was notified in the Register, while it had not yet been published in the Bulletin.

[4] Starting point for the Board’s analysis is decision J 10/87. The headnote of this decision (and also point [13] of the reasons) reads as follows:
“A request for retraction of a withdrawal of the designation of a Contracting State filed after publication of the patent application may be allowable under R 88 EPC [1973] in appropriate circumstances, in particular if

(a) the public has not been officially notified of the withdrawal by the EPO at the time the retraction of the withdrawal is applied for; ...”
In other words, retraction of a withdrawal, be it of a designation of a Contracting State, or, as in the current case, the application as a whole, is basically considered possible until the public has been officially notified of the withdrawal.

[5] In applying the criteria in decision J 10/87, the examining division had allowed a request for retraction of a withdrawal in considering that the withdrawal had not been officially notified to the public. While the withdrawal had already been entered into the Register, it had not yet been published in the Bulletin. The withdrawal could be noticed by the public via a public file inspection. The Board in that case took the view that the possibility of a public file inspection could not be equalled to an official publication, and paragraph 10 of the reasons reads as follows:
“[10] After due consideration, weighing the interests of the public against those of the applicant, the Board is of the opinion that a withdrawal which could only be noticed by inspection of the file can justifiably be treated differently from a withdrawal which was officially published. Legal certainty for third parties is of greater importance after official publication of a withdrawal by the EBO than after a withdrawal which can only be discovered by inspection of the file.”
[6] While the Board takes note of the distinction of public file inspection and publication in the Bulletin made in the decision J 10/87, it is of the opinion that internet technology as implemented by the EPO has made this distinction no longer relevant for determining the basic condition of the official notification of the withdrawal to the public. The Register nowadays allows for a file inspection online no different than the Bulletin allows for an online access of its contents. Since 1 January 2005, the Bulletin has been issued in electronic form only, and paper copies are no longer available. The previous distinction between “inspection” that required either a personal visit to the EPO or a specific oral or written request regarding a particular application, and a “publication” effected by sending out the Bulletin to the world at large seems no longer justified or justifiable. The progress of technology for the question of inspection of the Register and publication of the Bulletin was dealt with in detail in the decision J 25/03 that relates to facts very similar to the present case, and that goes into considerable detail as to the technical possibilities of access both for the Register and the Bulletin.

[7] In decision J 25/03, an application was unconditionally withdrawn, and such withdrawal was published in the Register before the applicant requested correction under R 88 EPC 1973 (now R 139) of its earlier withdrawal of the application. At that point in time, no publication of such withdrawal had taken place in the Bulletin. The question was thus whether mention in the Register according to A 127 and R 143 counted as an official information to the public. The Board in the above-mentioned case answered this question in the affirmative, and in its reasoning went into considerable detail. Paragraphs 8 to 10 of the decision in this respect read as follows:
“[8] Decision J 14/04 refers to the EPC, which in Chapter II of Part VII sets out the “Information to the public or official authorities”.

According to A 127 EPC [1973], the EPO shall keep a register, to be known as the Register, which shall contain those particulars the registration of which is provided for by this Convention.

R 92 EPC [1973] further lists the entries in the Register, which includes, in paragraph (n), the date on which the European patent application is refused, withdrawn or deemed to be withdrawn.

These references to the text of the European Patent Convention clearly support the official character of the entries in the Register, in particular the mention of the withdrawal of a patent application.

Moreover, A 129(a) EPC [1973] states that the Bulletin contains entries made in the Register.

This indicates clearly that the contents of the Bulletin relies on entries in the Register. It corroborates the official character of the entries in the Register and, to a certain extent, even its precedence over the Bulletin.

So, contrary to what is alleged by the appellant, legal effects are associated not only with the publication in the Bulletin, but also with entries in the Register. As an example, unless the conditions of R 20(3) EPC [1973] are met, it is the person registered as applicant, i.e. the person whose name is entered into the Register, who is the party to the proceedings and who is deemed to be entitled to exercise the right to the European patent, in accordance with A 60(3) EPC [1973] (J 26/95 [2]), irrespective of whether or not the right to a European patent belongs to him as a matter of substance (see A 60(1)).

[9] As to the public character of the content of the Register, A 127 EPC [1973] mentions that it is open to public inspection.

As regards the Bulletin, A 129(a) EPC [1973] explicitly refers to it as being a publication.

No conclusive difference can however be derived simply from this minor and strictly literal difference.

In a broader approach, the public dimensions of the Bulletin and of the Register have to be considered in the framework of how these official sources of information have actually been made available by the EPO to the public since the time the withdrawal of the patent application had been mentioned in the Register. Both the Bulletin and the Register are similarly offered freely to the public via EPOLINE®, on the internet. Not only is it possible for any person to access the Register on-line but also a service is offered which allows tracking changes in all files of published applications, using tailor-made lists of patent applications. Combined with an additional software tool, it renders it possible to compare data and identify changes immediately, or even automatically to receive an e-mail alert every time a change occurs in any of the cases previously selected in the Register (at that time through WebRegPro. See WebRegPro: monitoring patent applications using the epoline® online Register, EPIDOS News 4/2002, December 2002, also published on the EPO internet site, in the News, on 20 December 2002).

These factual elements surrounding the official character of the information available support the general availability to the public of the entries in the Register, from the day they appear therein.

Consequently, an entry in the Register also amounts to a notification to the public as well as a publication in the Bulletin.

[10] For these reasons, the Board holds that the public has been officially notified of the withdrawal of the patent application by its mention in the Register on 11 January 2003, before the request for retraction of the withdrawal. Even after possible inspection of the complete file, there would not have been any reason for a third party to suspect at that time that the withdrawal could be erroneous and later retracted.

The Board considers that legal certainty and the balance to be made of the applicant’s and of third parties’ interests do not allow the application of R 88 EPC [1973] in the present circumstances to authorise the retraction of the withdrawal of the patent application.”
[8] In adopting the above considerations, the Board takes the view that decision J 10/87 was necessarily fact-specific in that in its analysis of what made the withdrawal officially notified to the public, it relied on certain, then existing technical features of the file inspection system that allowed for a distinction between inspection and publication. Subsequent development of technology no longer allows for such distinction, as had been set out in great detail in the decision J 25/03.

[9] Still, the Board acknowledges that the appellant advanced a second line of argument that has not been explicitly dealt with in previous decisions, namely, that despite the technical and functional approximation of Register and Bulletin, only the latter carries the presumption of an official publication. In other words, as much as the public may be able to obtain information from the Register technically and functionally equivalent, but earlier as from the Bulletin, the public is deemed to have been officially informed only by information that is contained in the Bulletin, and only information in the latter is “cast in stone” and can be relied upon by the public as legally certain.

[10] As a starting point, it should be said that both the Register according to A 127 and the Bulletin according to A 129(a) are official sources of information to the public. There is nothing that would allow a distinction as to which of the two is more official, reliable or decisive. Both are listed in the EPC under the same chapter II that is entitled “Information to the public or to official authorities”. The function of the Register as information to the public is confirmed by the heading of chapter IX of the EPC Rules “Information to the public” that in Rule 143 in particular deals with the Register.

[11] This is not to say that the Bulletin has no functions other than those of information. On the contrary. For example, only a publication in the Bulletin gives effect to the decision to grant a patent (A 97(3)), and only the publication of the mention of the grant of the European patent in the Bulletin triggers the nine-month period for a notice of opposition, A 99(1). Furthermore, only the Bulletin carries a specific publication date. It is, in fact, published on a weekly basis. Contrary to what the appellant alleges, entries into the Bulletin are no more “cast in stone” than those of the Register, and can be corrected either under R 140, or by way of a decision.

[12] Yet, as far as the function of information to the public is concerned, the Board is unable to deduce a fundamental difference between Register and Bulletin.

[13] For its request to refer the case to the EBA, the appellant relies on decisions J 10/87 and J 4/03 that allegedly conflict with decisions J 25/03 and J 14/04. As regards decision J 04/03, the Board is unable to see any conflict with decisions J 25/03 and J 14/04 already for the fact that in the specific circumstances of J 4/03, a request for correction of an allegedly erroneous withdrawal was made only after publication had been effected in the Bulletin. For that reason, the question as to whether an entry in the Register could qualify as a relevant notification to the public did not arise in that case. As regards decision J 10/87, it has been explained above why this case should be followed as to the condition of the absence of official notification of the withdrawal to the public, but distinguished from subsequent cases as to the actual application of that condition due to the limited technical possibilities of file inspection back in the 1980ies, as has already been decided in J 25/03 and J 14/04. Therefore, the Board in the present case sees no need to refer a question to the EBA under A 112(1) EPC.

[14] The Board thus takes the view, that, first, there is no reason to deviate from decisions J 25/03 and J 14/04, that, second, advanced technology has made the distinction of “inspection” and “notification” relied upon in case J 10/87 no longer applicable, that, third, there is no justification for distinguishing official information to the public by way of the Register or the Bulletin, and that, fourth, the decision J 4/03 does not address the case of a request for correction after entry of a withdrawal in the Patent Register, but before publication in the Bulletin.

[15] In conclusion of the above analysis, the appellant’s requests for retraction of the withdrawal of its application as a correction of an error under R 139 EPC must be refused. […]

The appeal is dismissed.

J 18/10

Decision J 18/10 deals with a similar case, but here the request for correction was made after the publication in the Register and in the Bulletin. Obviously, the appeal was dismissed, too.

What makes this decision interesting is that the appellant argued that a third party inspecting the complete file of the application at the time of the official notification of the withdrawal to the public would have had a strong suspicion that the withdrawal was made in error since the written opinion and the supplementary search report for the application were extremely favourable. A third party would have therefore expected that the application would proceed to examination with a probable grant of a patent. Further, the reference to the invitation from the EPO requesting it to confirm its intention to further proceed with its application, which the applicant made in the letter withdrawing the application would have surprised a person reading the file, in view of the very positive situation of the application and since there was no need for the applicant to express that it did not wish to continue with the examination of its application.

The Board will not have it:

[4] However, the appellant argued that a third party inspecting the file after the withdrawal would have suspected that the withdrawal was made in error, in view of the positive elements present in the file and the normal expectation that the examination would terminate with the grant of a patent.

The Board cannot follow that line of argument. Even in a case of the application being in a very favourable position in examination proceedings, it remains possible and consistent that, for other reasons, the applicant decides not to proceed further with its application. It is also possible that the applicant is interested in having its application withdrawn immediately instead of having it simply deemed to be withdrawn later.

[5] The appellant further argued that its reference to the invitation from the EPO requesting it to confirm its intention to further proceed with its application in the letter withdrawing the application would have surprised a person reading the file.

With regard to that argument, the Board notes that the withdrawal was explicit, unambiguous and unconditional. The Board sees no contradiction arising from the reference made to the invitation to confirm the intention to further proceed. It is not decisive whether a third party could possibly have been surprised by that reference, since it does not indicate an error.

To download the whole decision, just click here (J 1/11) and here (J 18/10).

The corresponding file wrappers can be found here and here, respectively.