Wednesday, 27 November 2013

J 6/13 – Favourable Prospects

This appeal was filed against the decision of the Examining Division (ED) to refuse the withdrawal of a withdrawal.

On November 9, 2011, the representative communicated to the Office that

The Office sent a confirmation of the withdrawal to the European representative on November 18, 2011. On the same day, the withdrawal was published in the European register. On November 30, the representative was informed that 75% of the examination fee would be refunded, and on December 21? 2011, the withdrawal was published in the European Bulletin.

With letter dated 9 March 2012, a request for correction of the withdrawal of the application under Rule 139 EPC was received. The representative stated that the previous letter was sent in error, as the applicant at no time intended to withdraw the application. Instructions by the applicant to the representative had simply been not to incur any further costs at that point in time.

On August 16, 2012, the ED issued a decision refusing the request for correction. The decision pointed out that the withdrawal had been communicated to the public by way of the register, and even after possible inspection of the complete file a third party could not have suspected that the withdrawal was erroneous.

The applicant filed an appeal.

It argued that although clear and unambiguous, the withdrawal was erroneous and had not been intended. There was every reason to believe that a person reading the complete file of the present application would have had a strong suspicion that the withdrawal of the present application was made in error. The reason for this was “that the IPER was extremely favourable in that all the claims were considered to be novel, inventive and industrially applicable. [A person inspecting the file] would see that the supplementary European Search Report cited no additional documents and that the Search Report explicitly acknowledged that the application meets the requirements of the EPC”, that the “letter of 25 July 2011 confirm[ed] that the Applicant wished to proceed with the application”, and that it would be “unlikely for the application to be abandoned for financial reasons”. As a result, “even the publication of withdrawal of this case would not be enough for third parties to be certain that the application was validly and irrevocably withdrawn.”

Unsurprisingly, the Board dismissed the appeal.

[2] It is undisputed that the applicant’s letter of 9 November 2011 was an unambiguous withdrawal of the application.

[3] According to decision J 19/03 [5],
“[T]he jurisprudence of the Boards of Appeal took as a starting point that, as a general rule, an applicant is bound by its procedural acts notified to the EPO provided that the procedural statement was unambiguous and unconditional (cf. J 11/87 [3.3, 3.6]; J 27/94 [8)) and is not allowed to reverse these acts so that they can be considered as never filed (J 10/87 [12]; J 4/97 [2]).
On the other hand, the Boards of Appeal considered that R 88 acknowledges as a further legal value the desirability of having regard to true as opposed to ostensible party intentions in legal proceedings (T 824/00 [6]) in appropriate circumstances.”

[4] For the particular position of requesting the retraction of a withdrawal after publication in the patent register, decision J 12/03 [7], sets out
“that a request for retraction of a letter of withdrawal of a patent application is no longer possible if the withdrawal has been mentioned in the European Register of Patents at the time the retraction is applied for if, in the circumstances of the case, even after a file inspection there would not have been any reason for a third party to suspect, at the time of the official notification to the public, that the withdrawal could be erroneous and later retracted” (citing with approval decision J 25/03).”
While the applicant has argued that any reason for doubt would suffice the above conditions, the Board disagrees. On a proper reading of the above sentence, the words “not … any reason” cannot be construed to mean that the Board was of the view that in the absence of “not any reason”, just any reason would do. The cited sentence first of all means that there can be no retraction of a withdrawal if there is no reason for third parties to assume that the withdrawal was erroneous. That was the situation the Board was faced with in decision J 12/03. Yet, the cited sentence does not allow an interpretation whereby any reason whatsoever, serious or not, would be sufficient for a retraction of the withdrawal. As will be set out below, the Board holds that in the interest of legal certainty for third parties, and taking into account the public function of the register, a third party upon file inspection must have had good reason to suspect that the withdrawal was made in error in order to allow a retraction thereof.

[5] The Board must thus determine whether in the current case, such good reason was present. According to the appellant, the extremely favourable position of the application and the prospect of a communication under R 71(3) was such a good reason.

[6] In this respect, there are two decisions dealing with the erroneous withdrawal of a promising-looking application.

In J 12/03 [9], the applicant immediately prior to withdrawing the application had paid the annuities. The Board found this an insufficient reason for doubting the applicant’s intentions, as
“a decision to give up an application despite recent payment of a renewal fee is not illogical or unrealistic. The decision to abandon the application can be influenced by many different circumstances. It can e.g. have become necessary to avoid conflicts with other competitors.”
In the second decision, J 18/10 [4], the supplementary search report for the application was extremely favourable, and the EPO had written a letter to the applicant requesting to confirm whether the applicant wished to proceed. Thereupon, the applicant had withdrawn the application. Also in this case,
“… 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.”
The appellant in response essentially argued that in neither of the two cited cases did the application look as promising as in the current case where the contradiction between the state of the file and the withdrawal was so striking that a third party should have noticed.

[7] It may very well be that in the current case, the application most likely would have proceeded to grant. Yet the question is whether this really matters in determining whether third parties would have perceived a withdrawal as being erroneous. Based on the two decisions J 12/03 and J 18/10, the Board takes the view that the prospects of the application, however promising, are insufficient to infer an obvious or even potential contradiction with a subsequent withdrawal. Patent applications may be withdrawn due to considerations of business strategy, investor preference, shift in portfolios, agreements with competitors, etc. Due to financial considerations, most granted European patents are validated only in a limited number of countries. This is due not to contradictory behaviour or oversight, but to business strategy and optimal allocation of limited resources. These considerations may come into play at any time, even after the recent payment of annuities, or after the communication of a positive search report. The favourable prospects of the application in this case would thus not lead a third party to the conclusion that the withdrawal was possibly made in error. They did not lead the representative who handled the case and who communicated the withdrawal to this conclusion, either.

[8] If the Board were to adopt the appellant’s approach that any reason to suspect an error should lead a third party to the conclusion that the withdrawal was unintentional and that a correction might be requested, the public function of the register under A 127 and the purpose of the file being public after publication of the application would be seriously compromised. Competitors, instead of relying on the register and the contents of the file for their decisions how to pursue or not to pursue certain strategies would have to engage in a guessing game of what the true intentions of the applicant might be. If no good reason for suspecting an error was required, competitors would have to scrutinise the whole file in order to detect any possible contradiction without actually being able to verify whether any kind of potentially inconsistent behaviour was based on error or not. In other words, legal certainty would unacceptably suffer, a result that cannot be reconciled with current case law, e.g. decision J 25/03 [11]. […]

The appeal is dismissed.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


Anonymous said...

A frustrating decision, not for the result (which was arguaby reasonable) but the tortured logic that got the Board there.

The Board is in essence saying that there is no reasonable construction of the wording "if...there would not have been any reason for a third party to suspect...that the withdrawal could be erroneous" other than "if... there would not have been sufficient reason for a third party to suspect... that the withdrawal was erroneous". Focus on the words "any" and "could be" in the Reasons of J12/03. If the Board in J12/03 wanted to write "sufficient" and "was", they could have done so, and the phrase would have had a wholly different emphasis. To simply throw words away and then to argue that any reasonable interpretation must ignore those words is unsound reasoning. The wording of J12/03 means precisely that in the absence of any reason which could give rise to suspicion, the retraction must fail.

The Board in the present Decision could easily have reasoned that the wording of J12/03 was a sufficient condition for the retraction to fail, but not a necessary one, and that a retraction would also fail if, for example, there was no clear reason to suspect that the request was erroneous, or if there was sufficient reason to suspect that the request was more likely than not to have been intentional, or if there was no reasonable doubt that the request was intentional, depending on the Board's intention to set the threshold. They chose not to do so. But telling Applicants that "not any reason to suspect that the withdrawal could be erroneous" is semantically identical to "insufficient reason to suspect that the withdrawal was erroneous" does the Board no credit at all.

Myshkin said...

I would say "any" in J 12/03 really did not mean "just any reason" as the appellant was arguing here, since in J 12/03 the applicant just having paid the renewal was not "any reason".

The sentence originates from J 25/03, where it may have meant "just any", because there it indeed was a sufficient condition for the retraction to fail.

As I understand it, the condition for a retraction to be possible is that a reasonable third person upon inspecting the register and the electronic file would have had reason to doubt that the withdrawal correctly reflected the intention of the applicant.

(But there are in fact more conditions, see J 25/03.)

Anonymous said...

Myshkin: I fully agree with your statement of the condition applicable, and from where it derives. I also agree that the conclusion reached it the correct one! I just wish that the Board had made a robust argument for why this was so, rather than relying on a defective chain of reasoning.

Boards should really be holding themselves to the highest standards in their reasoning as an example to the users of the system; had the argument been proposed by a student of mine, I might have been tempted to characterise it as lazy...

DrZ said...

Clearly the correct decision, though I must agree it could have been justified more elegantly. Given the emphasis given to legal certainty in many J decisions there was only one possible outcome.

As an attorney I do feel for the representative and all I will say is "There but for the grace of God......"

oliver said...

How true that is.