Key points
- The Examining Division refused the application. The applicant appeals.
- After a " rather negative" communication of the Board: " In a submission dated 29 December 2022, the then appellant wrote the following: "In the name and on behalf of the applicant, Phoslock Pty Ltd., our appeal filed on February 9, 2021 against the decision of the examining division of December 1, 2022 is hereby withdrawn""
- Oral proceedings were cancelled, and fees were refunded.
- " With a submission dated 20 January 2023, the appellant who henceforth is referred to as "the petitioner" made the following requests: "1. Es wird beantragt, den im Schreiben vom 29. Dezember 2022, eingereichten Antrag auf Basis der Regel 139 EPÜ oder aufgrund allgemeiner Rechtsgrundsätze nach Art 125 EPÜ, dahingehend zu korrigieren, dass dieser als Antrag auf eine Teilanmeldung verstanden wird, wie er mit Aktenzeichen 23152685.6 am heutigen Tage beim EPA eingereicht wurde.
- The petitioner submitted that: "it had always been the intention of the petitioner to file a divisional application rather than to withdraw the appeal".
- The Board: "an error caused by miscommunication between the applicant and the representative or by an incorrect recollection of the applicant's instructions [cannot] be regarded as an error under Rule 139 EPC", hence there is no correctable error if the document filed with the EPO is deemed to express the representative's intention at the time of filing"
- The Board is of the view that it has to decide on the request for retraction of the withdrawal. This procedure, however, does not reopen the appeal as such if the retraction is not accepted.
- The Board disagrees with T 0695/18 that a correction of a withdrawal of an appeal is never possible. I think the position of the present Board is reasonable.
- The Board introduces a difference in legal status between a same-day retraction and a later retraction. Same day would be possible because "one day is the smallest temporal unit" in the context of the EPC.
- I am not entirely sure if one day is the smallest temporal unit for written proceedings before the EPO in all contexts, see T1946/21 (though that decision may be largely obsolete after G1/22)
- "Only a withdrawal made during oral proceedings becomes immediately effective. This is nonetheless based on procedural reasons, and not on substantive ones, since either the oral proceedings are declared closed with the effect of res iudicata, or (in the case of appeal and cross-appeal) a subsequent retraction still during oral proceedings would have to be examined in the same way as a late-filed request. "
- The Technical Board: "The public would be ill-served by well-meant, yet ill-explained exceptions to seemingly strict rules in order to do justice to individual cases. Such case-specific exceptions invariably lead to uncertainty and entice litigation. The above considerations apply all the more since the typical users of the European patent system are professional representatives (mandatory for applicants not resident in [a contracting state of the EPC]) who have passed a qualifying examination and do not need special protection for inexperienced users."
- "In the case at issue, the petitioner declared a withdrawal of the appeal, yet in fact had received instructions to file a divisional application and withdraw the appeal. Although the petitioner first argued that the withdrawal was meant to be the filing of a divisional application, during oral proceedings it was submitted that the declaration to withdraw the appeal was not erroneous, but incomplete, and the error was the omission to (additionally) file a divisional application, as if one page of the document as submitted on 29 December 2022 had gone amiss."
- Note that evidence must be available of the true intent at the relevant time.
- "the Board finds that in the present case the representative made an error by omission, but not an omission concerning the content of the document that was actually filed, but an omission to carry out the client's instructions. The omission of a procedural act cannot in itself be regarded as a correctable error under Rule 139 EPC, because it does not fall within the scope of an error or mistake in a "document filed with the European Patent Office" as required by that Rule, but rather constitutes an error or mistake in the run-up to the filing of the document. This narrow interpretation of the concept of "error" not only conforms to the wording of Rule 139 EPC, but also alleviates the concerns highlighted in decision T 695/18, i.e. that applying Rule 139 EPC to such cases as the current one would compromise legal certainty."
- The Board finds the approach of T 2474/19 to be "particularly helpful": "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".
- The request for correction/ retraction is refused. The meanwhile filed divisional application is not validly filed, as I understand the Board; the Board does not say this with so many words. Perhaps the status of the divisional will be the subject of an appeal in the case of the divisional application.
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/2023/11/t-043321-retraction-withdrawal-appeal.html
