tag:blogger.com,1999:blog-8990057754240336385.post8879804263798185674..comments2024-02-27T09:18:36.160+01:00Comments on DeltaPatents Case Law blog: J 22/12 - As grant falls, opposition failsDeltaPatentshttp://www.blogger.com/profile/07830354704918972593noreply@blogger.comBlogger3125tag:blogger.com,1999:blog-8990057754240336385.post-58308735892257807222014-07-20T19:25:13.125+02:002014-07-20T19:25:13.125+02:00In this case the applicant explicitly approved the...In this case the applicant explicitly approved the text proposed for grant with his letter of 31.01.12, so I don't think Rule 71(5) EPC comes into play. As far as I can tell, the decision to grant complied with Art. 113(2) EPC.<br /><br />A party is not adversely affected by a decision within the meaning of Art. 107 EPC if the decision is consistent with its requests (J 12/85). Not being able to file a divisional anymore is therefore not an adverse effect, but merely a consequence of the decision. If this were different, any decision to grant would adversely affect an applicant: whether losing the right to file a divsional is adverse or not within the meaning of Art. 107, resulting in the decision being appealable or not, cannot be dependent on the subjective intentions of the applicant. (See also T 591/05, point 2.4; the facts are not identical though.)<br /><br />One could try to base an argument on Rule 71a(1) ("The decision to grant the European patent shall be issued if all fees have been paid, ..."), but I am not convinced that a decision issued in violation of this provision in itself negatively affects the applicant. But I simply have difficulty accepting that an applicant is <i>entitled</i> to benefit from not paying a fee and maybe one day I will be proven wrong. :-)<br /><br />The decision to grant of 16.02.12 correctly indicated the date of the mention of the grant as 14.03.12. So in principle the applicant could still have filed a divisional. From the e-mail correspondence of 02.04.12 it appears however that the applicant received this decision only on 16.03.12 (which seems unrelated to the fee situation). Assuming this is indeed the case (i.e. the EPO is not able to prove otherwise), then the applicant certainly has a valid reason to be annoyed.<br /><br />This must have happened before (it seems less exotic than the incorrect debiting), but I am not aware of any decisions dealing with this situation.<br /><br />J 7/96 explains that the date of notification of the grant decision is the date on which the grant takes legal effect between the EPO and the applicant and on which the text of the patent becomes res judicata. The publication of the mention of the grant is what makes the grant take legal effect with respect to third parties. It seems to me that a patent cannot have legal effect with respect to third parties before the date on which its text becomes final, so that a publication of the mention of the grant preceding the notification of the grant decision is without legal effect. If that is correct, the EPO could (and should) delete the mention of the grant and re-issue it without an appeal being necessary.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-4664984526513507582014-07-14T11:51:01.430+02:002014-07-14T11:51:01.430+02:00In this case, I would consider paying the fee a le...In this case, I would consider paying the fee a legal act. Rule 71(5) EPC explicitly provides that "If the applicant (...) pays the fees (...) and files the translations (...), he shall be deemed to have approved the text communicated to him (...)." <br /><br />So if the fee is not paid, the decision to grant cannot take place. In this case the fee for grant was debited from an debit order that was canceled almost 6 year earlier. The applicant suffered adverse effects, as he could no longer file divisional. The ability to file divisionals is applicant right that was thus taken away. <br /><br />I think the EPO was correct to rectify their decision to grant. <br /><br />Sander van Rijnswouhttps://www.blogger.com/profile/08074604101159694993noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-65539866385518519532014-07-12T16:30:48.753+02:002014-07-12T16:30:48.753+02:00I very much doubt the correctness of the ED's ...I very much doubt the correctness of the ED's decision to rectify its decision to grant.<br /><br />As far as I understand, the applicant had tried to delay the grant decision by not paying the grant and publishing fees. The EPO mistakenly considered those fees to have been paid and proceeded to issue the grant decision. How does this "negatively affect" the appellant within the meaning of Art. 107 EPC?<br /><br />I understand that this is not what he wanted, but legally speaking he got exactly what he wanted, i.e. requested. Imho, an applicant not paying a fee does not have a legal right to be confronted with the consequences of not paying that fee.Anonymousnoreply@blogger.com