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T 2474/19 - Whose error and what errors, for R.139?

Key points

  • In this decision about a request for correction under R.139 of a withdrawal of an appeal, the Board gives some important considerations about what kind of errors can be corrected and whose errors are involved. 

  • "By letter dated 17 October 2022, received by the EPO on the same day and published in the European Patent Register on the following day, the appellant declared that it was withdrawing the appeal."
    • As a comment, letters are not published in the Register in the sense of Art. 127 EPC, but are part of the file that is public under Art. 128 once the application is published.
  • "By letter dated 19 October 2022, received by the EPO on the same day and published in the European Patent Register on the following day, the appellant declared that it was retracting its "request" to withdraw the appeal.  It requested a correction under Rule 139 EPC because the "request" to withdraw the appeal had been filed erroneously.".
  • The Board: "By letter dated 17 October 2022, the appellant unambiguously and unconditionally withdrew the appeal. This withdrawal was not a "request", as per the wording of the appellant, but a binding procedural declaration with the immediate effect of terminating the appeal proceedings. At the same time, the substantive issues settled by the contested decision at first instance became final (see G 8/91, OJ EPO 1993, 346, Reasons 11.2 and 12). As a further consequence, the appeal proceedings were closed without a substantive decision."
  • By reference to successful petition for review R3/22, the Board must decide on the request for correction. 
    • " it can be left open whether Rule 139, first sentence, EPC is applicable to a withdrawal of the appeal (see the case in T 695/18 [R 3/22] where the board, in its communication under Article 15(1) RPBA 2020 of 4 January 2023, answered this question in the negative because there was no pending case in these circumstances)."
  • The Board recalls that R.139 "deals with cases in which an error of expression in a declaration has occurred, or in which a mistake in a document is the consequence of (such) an error. Such concrete errors can only occur when the declaration is actually being made"
  • "errors in the run-up to the declaration being made, such as errors relating to the general motivation for the declaration, the decision-making process or the assumptions on which the declaration is based, are irrelevant"
  • "it is not sufficient to prove that a divergence occurred between the true intention of the party and the declaration filed by its professional representative; rather, it is additionally required that this divergence was caused by an error on the part of the person who was competent to make the decision on the procedural act before the EPO. Therefore, as a rule, in cases where the party is represented by a professional representative, the error pursuant to Rule 139 EPC must be an error of the professional representative in expressing the professional representative's own intentions"
  • "This result is corroborated by the determination of the relevant errors within the meaning of Rule 139, first sentence, EPC. Indeed, if it is only the errors that occur when the declaration is actually being made (see section 2.4.1 above) that matter, then it is clear that it is the acting person's error which must be considered, i.e. the error of the person who actually filed the document to be corrected."
  • "to determine the original intention of the acting person, it is precisely the relevant errors within the meaning of Rule 139, first sentence, EPC that must be taken into account, and not an overriding general motivation such as "filing an admissible appeal" '
  • "It is the professional representative's original intention when making the declaration at issue that matters. In this context, the appellant submitted that its professional representative instructed the draft of a submission to withdraw the appeal and then signed the withdrawal letter and filed it with the EPO. The board is unable to see in this declaration any error within the meaning of Rule 139, first sentence, EPC. When signing and filing the document, the professional representative actually intended to make a declaration of exactly this content and did not commit any errors relating to the declaration, its content or its transmission."
  • The client had actually gave the following instructions:  "Our client's decision has been made on the abandonment of the above-identified case that will lead to the nonappearance to the oral proceedings and non-submission of the response to the oral hearing. Instead, they have also decided the filing a new patent application divided from the above-identified case."

  • "it is not relevant that the professional representative originally intended to carry out the appellant's instructions but erroneously failed to do so. This error was committed by the professional representative in the run-up to the declaration, apparently because they no longer had the appellant's instruction in mind before proceeding to declare the withdrawal of the appeal. The alleged original intention to carry out the appellant's instructions is thus tantamount to an irrelevant overriding motivation, comparable to the general intention to meet all of the requirements of the law and/or the case law to achieve a certain legal consequence."
  • " typical cases where a correction request under Rule 139, first sentence, EPC may be allowed concern scenarios where the professional representative intends to take a certain procedural step (for example paying a certain fee via a payment form) but commits a formal error that is visible in the document to be corrected when taking this step (for example erroneously selecting the wrong fee amount in the payment form, or indicating or omitting the wrong payment method in the payment form"
  • "in the case in hand a correction would have theoretically been conceivable if, for example, the professional representative had used a template containing two alternative declarations to be ticked (i.e. the withdrawal of the appeal on the one hand and the information that the appellant did not intend to attend the oral proceedings on the other) and had accidentally ticked the wrong alternative (i.e. the former one). Of course, in this scenario the requester's burden of proof that the latter alternative constituted the original intention would be heavy, if the original intention were not immediately apparent"

EPO 
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/2023/03/t-247419-whose-error-and-what-errors.html
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