Friday, 18 March 2016

T 0105/11: a requested correction of a decision and a too late filed ground of appeal


Admissibility of an appeal is quite often a point of discussion. In this case the Examining Division refused to grant a patent in a decision and the Applicant requested a correction of the (original) decision. When the Examining Division re-issued the decision it was not made completely clear that the re-issued decision was a correction of the previous decision (however, this is implicitly clear because the Applicant requested a correction). Case law defines that a correction of a decision has retrospective effect and that, thus, the date of refusing the patent application does not change and, thus, the appeal term still starts at the date of the original decision. In this case the Applicant filed a notice of appeal within the 2 months from the original decision, but filed the ground of appeal after the end of the 4 months period from the date of the original decision (and within 4 months from the date on which the decision was re-issued). In some appeal cases the principle of "protection of legitimate expectations" was applied in "similar" cases and the appeal was admissible. However, the Board had some doubts that this situation was similar enough to the previous cases. "Albeit not entirely without hesitation", the Board decided on this subject.

Summary of Facts and Submissions

I. The appeal relates to European patent application No. 05771127.7. The application was refused in oral proceedings held on 30 June 2010. The decision was subsequently put in writing and despatched on 29 July 2010.

II. With a letter dated 19 August 2010, the applicant (appellant) noted that point 3.1 of the grounds for the decision referred to a main request and an auxiliary request, but that no auxiliary request had been on file. It requested that the decision be corrected accordingly.

III. On 6 September 2010, the Examining Division re-issued the written decision with a new date and with point 3.1 of the grounds for the decision corrected.

IV. The appellant filed a notice of appeal, dated 21 September 2010 and received on 23 September 2010, directed "against the refusal of the European patent application No. 05 77 1127.7". It requested "that the Decision of September 6, 2010 be reversed and the patent be granted". It requested oral proceedings as an auxiliary measure.

V. A statement of grounds of appeal was filed and received on 7 January 2011. In it, the appellant requested "that the Decision of September 6, 2010 be reversed and the patent be granted based on the claim set as filed on May 25, 2010, which is identical to the claim set on which the Decision of September 6, 2010 is based". In case the Board could not agree to that request, the request for oral proceedings was maintained.

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Reasons for the Decision

1. Admissibility of the appeal

1.1 Once an examining division has taken a decision, in the absence of an admissible and allowable appeal it has no power to withdraw that decision and to take a new decision. The re-issuing of the (corrected) written decision on 6 September 2010 therefore does not invalidate the decision issued on 29 July 2010.

1.2 The re-issued decision was evidently intended as a response to the appellant's request for correction of an obvious mistake in the first written decision (Rule 140 EPC), but the form in which it was issued does not make this unambiguously clear. The Board need not decide whether the re-issued decision is legally void or whether, despite its deficient form and in particular the lack of a clear and correct indication of its nature and legal basis, it corrects the first written decision with retrospective effect and, hence, without changing its date (see decision T 116/90 of 3 December 1990, reasons 1). What matters is that, in either case, the date of notification of the decision refusing the application remains the date of notification of the first written decision.

1.3 In the notice of appeal, the appellant requested that the "Decision of September 6, 2010" be set aside. But in view of the further reference to "the refusal of the European patent application" and the appellant's request that "the patent be granted", there can be no doubt that the notice of appeal is to be understood as being directed against the decision refusing the application given in oral proceedings and posted on 29 July 2010.

1.4 Since the written decision of 29 July 2010 is deemed to have been notified on 8 August 2010 (Rule 126(2) EPC), the time limits for filing the notice of appeal and the statement of grounds of appeal laid down in Article 108 EPC expired on Friday, 8 October 2010 and on Wednesday, 8 December 2010, respectively. The notice of appeal was therefore received in time, but the statement of grounds of appeal was not.

1.5 Since the notice of appeal does not contain any statement indicating the reasons for setting aside the decision impugned as required by Article 108, third sentence, and Rule 99(2) EPC, the fact that the statement of grounds of appeal was filed out of time in principle has the consequence that the appeal is to be found inadmissible (Rule 101(1) EPC).

1.6 However, in several cases involving the issuing of a "second decision" by the department of first instance, the boards of appeal have held that an appeal which in principle would have to be rejected as inadmissible should, in the circumstances of those cases, nevertheless be found admissible in view of the principle of the protection of legitimate expectations.

1.7 The circumstances of those cases were as follows.

In decision T 1176/00 of 23 July 2003, the EPO had sent a communication to the parties to the effect that the first written decision was withdrawn and that the corrected version would be issued as soon as possible. The board considered that the appellant in that case presumably had relied on this - legally incorrect - communication and that it would therefore conflict with the principle of protection of legitimate expectations to regard the appeal as inadmissible.

In decision T 1081/02 of 13 January 2004, the EPO had informed the parties that the first written decision had been issued erroneously and was to be considered void. This communication, although legally incorrect, had caused the parties to await the second written decision and consequently miss the original time limit for filing their appeals. Although both parties had been professionally represented and should therefore have been aware of the legal situation, the board considered that it would not be consistent with the principle of protection of legitimate expectations if the EPO's legally incorrect communication were allowed to negatively affect the appellants.

In decision T 830/03 of 21 September 2004, the EPO had informed the parties, after a notice of appeal had already been received, that the first written decision "was only a draft". This led the appellant to await a second written decision before filing a second notice of appeal and, outside the period of four months after the date of notification of the first written decision but within the four months after notification of the second decision, a statement of grounds of appeal. Since the appellant had been misled, in application of the principle of protection of legitimate expectations the statement of grounds of appeal was deemed to have been filed within the time limit of Article 108 EPC.

In decision T 993/06 of 21 November 2007, the opposition division had issued two decisions dated 13 April 2006 and 22 May 2006, the second decision being accompanied by a communication containing the information "please find enclosed an Interlocutory Decision with a new date". The appellant-opponent filed a notice of appeal in due time, but filed a statement of grounds of appeal only within the four months after notification of the second decision. Since the opposition division and thus the EPO itself had caused confusion by issuing two decisions, regarding the appeal as inadmissible was considered to be in conflict with the principle of protection of legitimate expectations. The board in that case appears to have considered it relevant that the notice of appeal had been filed in time, so that the legitimate interests of the proprietor had been safeguarded.

In decision T 130/07 of 22 February 2008, the second written decision was accompanied by a communication stating that the first written decision was to be considered void. The appellant-opponent filed the notice of appeal and the statement of grounds only within the time limits with respect to the second written decision. The board noted that, by that time, a professional representative could have been aware of the relevant jurisprudence and have known that such "second decisions" changed neither the date of the decision nor the period for filing an appeal. On the other hand it had to be noted that, despite this same jurisprudence, the EPO still proved incapable of avoiding the mistake of issuing "second decisions" with alleged new dates and alleged new time limits for appeal instead of unambiguous correction decisions as provided for by Rule 140 EPC. The board considered that applying the principle of protection of legitimate expectations did not infringe the legitimate interests of the proprietor, since the way the opposition division had handled the case had not given the proprietor ground to believe that the decision had become res judicata.

1.8 The present case may be distinguished from those discussed above in that the appellant explicitly requested that the written decision be corrected. Although the correction decision was still issued in an incorrect form and, when considered on its own, still suggested a new date and time limit, it appears that the professionally represented appellant should have been aware that the second decision intended to correct, as requested by the appellant itself, the first written decision under Rule 140 EPC.

1.9 In addition, in the cases discussed above the EPO had made explicit statements to the effect that the first decision was to be ignored. In the present case no such explicit statement was made. Although the form and the new date of the second written decision may well have confused the appellant, it could be argued that any such confusion was the result of an incorrect legal understanding of the meaning of a correction decision rather than reliance on an unambiguous statement made by the EPO.

1.10 Nevertheless, it is still imputable to the EPO that the second written decision was not correctly and unambiguously identified as a correction decision in the first place (cf. decision T 130/07, supra, reasons 1.9 and 1.10). The Board does not doubt that this explains why the appellant directed the notice of appeal and the statement of grounds of appeal against the "Decision of September 6, 2010" and filed them within two and four months, respectively, from that decision's date of notification.

1.11 For this reason, albeit not entirely without hesitation, the Board holds, in application of the principle of the protection of legitimate expectations, that the statement of grounds of appeal is deemed to have been filed in time.

1.12 Since the appeal also complies with the other provisions referred to in Rule 101 EPC, it is admissible.

2. The invention

[...]

Order

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This decision T 0105/11 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:T010511.20160310. The file wrapper can be found here. Photo "Correction" by Danjo Paluska obtained via Flickr under CC BY 2.0 license (no changes made).

6 comments :

  1. The exasperation of the BA in view of the repeated issuances of second decisions by ED or OD is clearly to be perceived, especially since this was already made clear in T 130/07.

    On the other hand, the Board is also slowly getting sick of professional representatives who file appeals based on a re-issued decision, whilst they certainly should know better.

    I am not sure the next time a BA will be so lenient, but at the origin is the not professional way of acting of ED and OD. Such "double" decisions should never have left the EPO, but in times where the accent is on production and not on quality, this should not come as a surprise.

    There is manifestly a problem of training, not only of ED and OD, but also of formalities officers and representatives.

    Furthermore, it should be possible to block such actions with the help of the IT systems of the EPO.

    ReplyDelete
  2. It would have been strange if the Board would have decided differently based only on the fact that the applicant was professionally represented. It is not up to a representative to "know better" when the EPO makes a mistake, and issues an unclear statement. It would lead to represented applicants being discriminated against as compared to non-represented applicants.

    The decision provides an overview of earlier situations in which unclear statements by the EPO have led to an appeal still being found admissible, despite grounds being filed late when seen in relation to a "first" decision. Those cases may or may not be identical to the current case, but the element in common with this case seems, that if legitimate expectations can be argued to exist, erroneous statements by the EPO should not come at the expense of the applicant. In such a case, it should (and does) not matter whether also an argument exists, pleading the opposite.

    Any remark that a representative should have known better is weak, given how the appeal was (apparently needed) to be decided upon. Any irritation should be directed to the instance that issued an erroneous and unclear statement in the first place.

    ReplyDelete
  3. It is amazing to see how touchy representatives are, but the Board stated: "it appears that the professionally represented appellant should have been aware that the second decision intended to correct, as requested by the appellant itself, the first written decision under Rule 140 EPC", and ..... that "for this reason, albeit not entirely without hesitation, the Board holds, in application of the principle of the protection of legitimate expectations, that the statement of grounds of appeal is deemed to have been filed in time".

    Being told that the professionally represented applicant should have been aware of the situation and that the BA did not decide without great hesitation the the legitimate expectations had to be protected, boils down merely that he, the representative, should have known known better.

    In view of those statements it is not certain at all, that in future such appeals might continue to be deemed admissible.

    This does not excuse in any way the wrong-doing of the ED. If it had acted professionally we would be in the present mess.

    ReplyDelete
  4. My comment was triggered by the assumption that the Board may "just as well" decide differently in a future case. Of course, that is not how it should be, if the facts are the same. But facts are never the same, so indeed, the door is open to a different outcome, and a situation like this is better prevented.

    ReplyDelete
  5. Just for information
    In T 2227/11 the ED cancelled a first decision and issued a second one. For the BA this was wrong.
    Since the applicant had filed an appeal within the time limits set in the first decision, the appeal was admissible.
    The representative in T 2227/11 was thus well "aware" of the situation and acted accordingly.
    Why did the representative in T 105/11 not act the same way?

    ReplyDelete
  6. It does not matter why. The fact is, he did not. And given the outcome of this case, he need not have done so either.

    ReplyDelete

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