Key points
- "with a letter dated 3 May [2018], the appellant withdrew the application and requested that the fees be refunded. A divisional application was filed on 8 May 2018 (No. 18171252). Both the withdrawal of the parent application and the filing of the divisional application were mentioned on the same date, namely on 11 May 2018, in the case file of the parent application. The European Patent Register (hereinafter: "the register") reported the filing of the divisional application without indicating the date on which it was filed."
- "On 29 May 2018 the appellant's representative filed a request to "retract" the withdrawal of the application under Rule 139 EPC. It argued that the application was withdrawn due to a mistake. Its true intention had been to file a divisional application first and to withdraw the application afterwards; however, the order of these steps had been mixed up."
- The Board allows the request.
- "According to the case law of the boards of appeal it is possible to correct the withdrawal of an application under Rule 139 EPC. This is true even if the withdrawal has already been published in the register. However, this correction is only possible if it meets the following cumulative conditions: (a) the withdrawal did not reflect the true intention of the applicant (existence of a mistake within the meaning of Rule 139 EPC); (b) there was no undue delay in seeking its correction (J 04/03, point 9 of the Reasons; J 10/87, point 13 of the Reasons); (c) third parties who might have taken note of the withdrawal by inspection of the file would have had reason to suspect that the withdrawal was erroneous (see J 10/08, point 12 of the Reasons; J 2/15, point 13 of the Reasons; J 8/06, point 6 of the Reasons)."
- "Some decisions by the board have required a further condition to be met, more specifically that the error was due to an excusable oversight (e.g. J 04/03, point 9 of the Reasons; see also J 10/87, point 13 of the Reasons). This board cannot adhere to this case law for the following reasons. ... [G 1/12 does not mention such a requirement]. "
- "In assessing whether the withdrawal was due to a mistake, only the intention of the applicant and not that of the European representative is relevant. The decision to withdraw the application indeed lies with the former and not the latter. Therefore, only the represented party's state of mind matters, and not that of the representative. Exceptions may apply "
- " Next, the board is satisfied that the request was filed without delay. The communication that the second application could not be treated as a divisional application was issued on 22 May 2018. The request for correction was filed on 29 May 2018."
- "The specific circumstances of this case are that third parties were informed at the same time that one parent application was withdrawn and one divisional application was filed, without knowing the chronological order of the two events. Regardless of what they may have assumed in light of these circumstances, they would in any case have realised that the invention disclosed in the parent application could still be the subject-matter of a pending application, either because the parent application could be reinstated under Rule 139 EPC, or because the divisional application was effectively filed under Article 76 EPC."
- "According to the request filed at the oral proceedings the withdrawal will be corrected such that it was made in a period of time between 9 and 20 May 2018. In the board's view the result which this request aims to achieve corresponds to the true intention of the applicant for the following reasons."
- The Board decides that: "The withdrawal of European patent application No. 15750584.3 is corrected such that it was made on a date between 9 and 20 May 2018."
EPO J 0005/19 -
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/04/j-000519-allowed-retraction-of.html
