Monday, December 07, 2020 T 2620/18 - Appeal deemed not filed due to mistaken payment of small-entities appeal fee

The  Schedule of fees of the EPO has two amounts for the appeal fee. A small fee for natural persons or small entities, as defined in Rule 6(4) and (5) EPC, and a large fee for everybody else. What happens, if you accidently declare yourself a small entity, even though you are a large entity, and thus pay the wrong fee? When filing an appeal to an opposition this happened to the unlucky appellant. In this case the appeal was deemed not filed. In particular, an attempt to correct under Rule 139, was dismissed as the correction was not filed quickly enough. 

In the decision, the Board goes through of the ways in which this may be rectified, but comes to the conclusion that none apply.  The decision has the following abstract (translated from the German):

For the question of the insignificance of the difference between the full appeal fee and the appeal fee, see Reasons No. 4.8.

On the question of an implicit request for correction of a debit order and the timeliness of the submission of a request for correction, see Reasons 5.7 to 5.14.

On the issue of ex officio correction of amounts in debit orders, see Reasons 6.1 and 6.2.

For the question of interpretation of a debit order with regard to the appeal fee, see Reasons No. 8.4.

Below a machine translation of the sections cited in the abstract is provided, and below that, the original German. 

Friday, January 10, 2020 An electronic debit order is a document filed with the EPO, so errors can be corrected

Payment of the appeal fee  in this case was not executed on the date the electronic debit order was received, because in the box for "method of payment", no method was indicated. The correct fee code had been entered, indicating that the appellant intended to pay the appeal fee, but the EPO only received the money via a separate payment after the 2m period for filing the notice of appeal had expired. This payment was accompanied by a request for correction under R. 139 of the submitted electronic debit order, to indicate that the method of payment was "from deposit account".

The notice of appeal was filed on time and contained a statement that the appeal fee was being paid from the deposit account using the attached electronic debit order. This statement was refused as a valid debit order because not in electronically processable format, but was accepted by the Board as evidence of the true intent, along with correctly indicated fee code in the incomplete debit order. 

The Board further remarked that the present case clearly falls under the principles established in G 1/12 for corrections in documents filed in appeal: the request was made without delay and the true intent was immediately apparent. Furthermore, no legitimate interests of the public in being able to rely on the information published by the EPO were affected in this case.

The correction was allowed and had retroactive effect, meaning that because on the date the incomplete debit order was received, the payer's deposit account had sufficient funds to cover the appeal fee, that date was considered the date of payment and the notice of appeal had thus been validly filed.

Friday, August 02, 2019 J 0015/18 - Verifiable slip-up not "special circumstances" for post-publication rectification of priority claim

This case concerns a Euro-PCT application which claimed priority of a US application P2, which itself was a divisional application of a further US application P1. The PCT application was filed within the 12 month priority period of P1 and some time after entry into the EP phase, the Applicant requested a correction of the priority claim under Rule 139 EPC. This request was refused by the Receiving Section, on the basis that while claiming priority from a non-first application was clearly a mistake that did not reflect the applicant's true intent, the published information relating to the priority claim was not obviously wrong and thus no special circumstances existed that would justify the addition of the omitted priority claim. 

The applicant appealed the decision, arguing that it is wrong to consider that it must be possible for third parties to detect an error in a priority claim based on the published data alone. Any third party affected by the possible grant of the patent would consult a patent professional, who would conclude that the application should have been filed claiming priority from P1. 

When correcting a priority a claim, it is established EPO practice that the interests of the public  should be safeguarded. The Board therefore considered who should be considered as "the public". The applicant seemed to be arguing that the relevant public concerned patent attorneys. The Board disagreed and concluded persons skilled in the art would be the first to consult a PCT publication and that they should be able to rely on the published priority data. The fact that a patent attorney would be able to detect the error by consulting priority document was held to be irrelevant. 

The Board saw no special circumstances for deviating from the established practice that a request to correct a priority claim under Rule 139 must be made sufficiently early for a warning to be included in the publication.

Tuesday, April 30, 2019 T 180/14 - Do not miss the opportunity to correct the error!

In this opposition appeal, the appellant (priopretor) filed statement of grounds of appeal including a new main request, which was indicated to include claims 1-22 of the 2nd auxiliary request filed during the oral proceedings before the Opposition division, and several auxiliary requests. Claim 1 of the new main request did not however correspond to claim 1 according to that second auxiliary request filed during the oral proceedings before the opposition division - at least two significant differences were identified.  In the letter of reply to the statement of grounds of appeal, filed by the opponent (respondent) in 2014, the discrepancy between what was said in the statement of grounds and in the submitted main request, was identified in detail. The appellant did not at that stage react to the respondent's reference to this identified discrepancy between the written statement and the content of the annexed main request. In a communication under Article 15(1) RPBA the board drew the appellant's attention to the corresponding discrepancy already identified by the respondent. It was inter alia noted by the board that the subject-matter of claim 1 of the main request and the first, third and fourth auxiliary requests was provisionally considered to not fulfil the requirements of Article 123(2) EPC. With letter of 15 February 2019, i.e. approximately one month prior to the oral proceedings scheduled before the board, the appellant, in response to the board's communication, filed a new main request as well as new first to fifth auxiliary requests. Claim 1 of the new main request is identical to claim 1 of the second auxiliary request as filed during the oral proceedings before the opposition division. The new main request was presented as a request for correction of obvious errors of what was submitted as new main request wit the statement of grounds in 2014. Did the Board accept the correction? Did the Board admit and allow at least one of the other requests?

Wednesday, April 17, 2019 T 0725/14 - Valid transfer of rights results in invalid priority claim

If during the priority year a European patent application - filed by applicant A - is transferred to a party B, is then the priority claim from a subsequent application (from which the patent in suit matured) by applicant A to the earlier application valid? Which acts and statements, including their timing, constitute the transfer of a priority right between parties? And what role do the parties' intentions - as far as they can be derived from the documents on file - play in this?

Tuesday, August 28, 2018 T 506/16 - Omission of claims pages

Something is missing in the B1 publication...?

In this examination appeal, the Druckexemplar did not contain two of the four claim pages due to an error made by the Examining Division. This error was overlooked by the applicant when approving the text proposed for grant.

The applicant proprietor attempted to correct the error  after approval but the Examining Division:
- rejects as inadmissible the request for correction of the granted patent under Rule 139 EPC,
- refuses the request for correction of printing errors in the patent specification,
- refuses the request for correction of the granted patent under Rule 140 EPC, and
- rejects as inadmissible the request to consider the decision to grant null and void and to issue a further communication under Rule 71(3) EPC.

The proprietor appeals and requests referral to the EBoA, but as the decision shows to no avail.

Friday, August 18, 2017 T 1921/12 - Who should sign a 'decision'

In this decision the Board of Appeal is annoyed about the fact that a Rule 140 Correction of a decision of the Examining Division (signed by the whole division) and a Rule 139 Correction of an obvious error (signed only by the primary examiner in the opposition period, i.e. after grant; G 1/10 stopping this process was not yet issued) are not in the public part of the file.

The Board sees the R.139 correction as not valid since no formally correct decision is taken; it would require the signature of the whole Examining Division.   

In the decision several aspects of the problem-solution approach are re-discussed. The Board is also not keen on hearing witnesses. 

Wednesday, April 05, 2017 T 579/16 - Double identity

This appeal is against a decision of the opposition division by which an opposition was deemed non-admissible. In the present case case, the form 2300 indicated "BYK-Chemie GmbH" as opponent, whereas the attached document containing the indication of facts, evidence and arguments mentioned "Einsprechende: BASF Coatings GmbH" just before the heading "EINSPRUCHSBEGRÜNDUNG".

Due to this seemingly contradictory information, the opposition division held the identity of the opponent not to be sufficiently established before expiry of the opposition period, and as a consequence the opposition inadmissible.

In the appeal, the opponent now as appellant essentially argues that since the tick box for 'Multiple opponents' in form 2300 was not checked and the address specified in form 2300 corresponds to that of BYK-Chemie, it was clear that BYK-Chemie was intended to be the opponent and that the mentioning of BASF in the attached document was essentially an clerical error.

However, the board of appeal concurs with the opposition division with respect to the lack of clear identification of the opponent, but does hold the mentioning of BASF to be correctable under Rule 139 EPC first sentence, as requested by the appellant/opponent in both proceedings but for the first time requested after the expiry of the opposition period.

Of interest here is how the board deals with the application of the criteria summarized by G 1/12 whether such a request is allowable, and in particular, whether the request for correction in this particular case was filed "without delay".

Tuesday, September 20, 2016 T 610/11 - An error in a document filed with the EPO, but... who's error?

The appeal against a decision to refuse was withdrawn by the representative. The representative herein followed the instructions from the applicant. Six weeks after the withdrawal, the representative submitted that the withdrawal of the appeal was due to an error and requested correction of that error. In particular, the appellant's representative stated "I have become aware that our instruction to withdraw this appeal were in error." and the representative  requested correction of that error under Rule 139 EPC.

The Board reviewed the case law on correction of errors and, in the end, the Board comes to the conclusion that the declaration submitted by the appellant's representative to withdraw the appeal cannot be considered to contain an error to be corrected under Rule 139 EPC, as the error was made by the applicant and not by the representative.

Wednesday, May 18, 2016 T 1785/15 - Appeal against a grant, following advice from the Office

The proprietor filed an appeal against the decision to grant, after the patent was granted with errors -introduced by amendments by the Examining Division, but implicitly approved by the applicant with his R.71(3) response- and after being pointed out to the option of filing an appeal by the formalities officer of the EPO. But his appeal was not succesfull: in light of the decision G 1/10, the appeal was inadmissible. The Board however ordered a reimbursement of the appeal fee for reasons of equity, as the proprieter filed the appeal based on incorrect advice from the office.

Friday, April 29, 2016 T 2523/11: attempt to voluntarily reduce scope of protection without support in application as filed

In opposition the patent was revoked because there was no support for a range of "0.2mm to 0.8mm diameter for warp and weft yarns". The patent application as filed has support for: "warp yarns having a diameter in the range of 0.20 mm to 0.80 mm and weft yarns having a diameter in the range of 0.20 mm to 1.0 mm". Thus, the proprietor reduced the scope of protection by giving up the diameter range from 0.8mm to 1.0mm for the weft yarns. 

During the Opposition procedure the proprietor used G 1/93 to argue that the scope of protection of features without a technical contribution may be reduced without violating Art. 123(2). The Opponent and the Opposition Division did not share that opinion. 


An appeal was filed with several requests in which the proprietor tried several strategies to overcome the A.123(2) and (3) problem. In the main request a correction of an obvious error was requested (change 1.0 to 0.8mm). In the auxiliary requests several variations of (undisclosed) ranges / values were requested. The outcome of the appeal procedure is that the scope of protection is now reduced to "infinitely small".

Tuesday, February 09, 2016 T 615/14 - Oops, mistake! Sheer force of habit...but repairable.

In G1/12 it was decided that Rule 139 could be used to correct the appellant's name. The Board of Appeal in the present case decided that such is also applicable to a correction of the opponent's name, although the situation in appeal proceedings is different from that in opposition proceedings because the identity of an appellant is limited to one or only a few options, namely the party or parties involved in first-instance proceedings, while in the case of an opposition the identity of the opponent was completely unknown and in fact could be any party whatsoever. The Board disagreed with this because there was only a choice between two options and not an endless number, which makes that there was no difference between this case and an appeal. The Board further sets out the reasons why a correction under Rule 139, following G1/12, is also applicable to opposition proceedings, and uses the (in the Board's view allowable) post-9 months filed evidence, to come to its final decision that a correction under Rule 139 was allowable here.

Summary of Facts and Submissions

I. This decision concerns the appeal filed by the opponent against the decision of the opposition division to reject the opposition against European patent No. 1 605 772 as inadmissible.

II. On 26 March 2008, professional representative Mr ... for Andries van Westerbrugge et al. / N.V. Nederlands Octrooibureau had filed a notice of opposition against the above-identified patent. Form 2300.1 mentioned N.V. Nutricia as opponent (section III), with the box in section VII ("Facts and arguments ... are submitted herewith on a separate sheet") being ticked. Attached was a document "Facts and Arguments" signed by the same attorney. In the first paragraph of page 1 of this document, it was stated: "On behalf of Campina Nederland Holding BV, the Netherlands, I hereby file opposition to European Patent No. 1 605 772 B1 ...". This document contained a reference to "the enclosed EPO form 2300" (second paragraph of page 1).

III. By letter of 12 June 2008, another representative from the same law firm informed the EPO that the name N.V. Nutricia given in form 2300.1 was erroneous and should actually read Campina Nederland Holding B.V. The representative requested that the name of the opponent be accordingly corrected to Campina Nederland Holding B.V under Rule 139 EPC.

Friday, September 04, 2015 T 1436/12 Change of a referenced document

In this appeal following a refusal by the examining division, the Board did not allow a change of reference to a document incorporated by reference as a correction or as an amendment. The applicant had in the application made a reference to a US application identified by the internal patent attorney docket number (the US application number was not yet known). The applicant requested in appeal proceedings to change the reference to a PCT application which claimed priority from the US application. The Board examined the matter thoroughly. One consideration for not allowing the change was that at the moment of filing the European application the US files was not public; so it could not be verified based on the attorney docket number, which was in the US file, which applications were involved.

Friday, June 05, 2015 T 445/08 - True intentions to be confirmed

This appeal is the referring case of G 1/12, and shows the Board applying the answers of G 1/12.

Catchwords:

• If the notice of appeal is to be considered in the context of the file history, the true intention needs to be confirmed by external facts and evidence at least to prevent that requirements such as those of Article 107 EPC be circumvented (point 9).
• In applying Rule 139 EPC to a party's request to correct a mistake in the notice of appeal in respect of the identity of the appellant, the principle of legal certainly needs to be taken into consideration (point 10).

Background / Summary of Facts and Submissions

I. The appeal lies from the decision of the Opposition Division, posted on 28 December 2007, revoking European patent No 1140330.

II. The (registered) patent owner was Zenon Technology Partnership, The Corporation Trust Company Corporation Trust Centre 1209 Orange Street, Wilmington, DE 19801/US (the patent had been acquired from Zenon Environmental Inc, 845 Harrington Court Burlington Ontario L7N 3P3 Canada, by an assignment registered by the EPO on 30 May 2006).

III. A notice of appeal, dated 8 February 2008 but received on 15 February 2008, was filed, reading:

"European Patent No 1140330 (99955620.2-062)

Zenon Technology Partnership

We hereby give Notice of Appeal (underlined by the Appellant) against the decision of the Examination Division [sic] dated 28 December 2007 to refuse the above patent application [sic]. Cancellation of the decision in its entirety is requested so that the patent may be maintained?.

The name, address and nationality of the Appellant is (emphasis by the Board):

ZENON ENVIRONMENTAL INC

845 Harrington Court

Burlington

Ontario L7N 3P3

Canada

ZENON ENVIRONMENTAL INC is a Canadian Corporation.

In the event that the Board of Appeal wishes to make a decision detrimental to the Applicant's [sic] rights at any time, it is hereby requested that Oral Proceedings be held to discuss the matter."

The procedural steps after the filing of the notice of appeal

IV. On a communication dated 7 March 2008 notifying the parties of the commencement of the appeal proceedings, the Registrar of the Board added the following handwritten statement: "the appeal was filed in the name of ZENON ENVIRONMENTAL INC (underlined by the Registrar). The patentee is here registered as ZENON TECHNOLOGY PARTNERSHIP (underlined by the Registrar). Therefore the patentee is asked to clarify the situation."

V. The Appellant and the Respondent both reacted with letters dated 13 March 2008.

The Appellant wrote "... the appeal should of course have been filed in the name of the current proprietor, i.e. Zenon Technology Partnership (underlined by the Appellant). I apologise for the confusion and respectfully request the correction".

The Respondent requested that the appeal be rejected as inadmissible, as it had been lodged by a legal entity other than the adversely affected (entitled) party.

Friday, August 08, 2014 J 16/13 - Obviously erroneous formal order

How to determine a board's competence pursuant to Article 21(3) EPC when the formal order of an appealed decision is obviously erroneous to such an extent that it is essentially incomprehensible when compared with the reasons in the body of the decision?

This is an appeal against the decision of the Examining Division, posted on 5 October 2012, not allowing the request of the applicant, now appellant, that a wrongly filed description and claims be completely exchanged under Rule 139 EPC for those of the priority document.

According to the order of the decision found on page 1 of EPO Form 2916, entitled "Decision", the following was decided: "In the matter of European patent application No. 08167183.6 it is decided as follows: The request under Rule 139 EPC to exchange the wrongly filed description and claims cannot be allowed".

However, the decision was issued with a cover page, EPO Form 2007, with a different order, namely a refusal of the application. The decision also contained the signature page with the signatures of the members of the Examining Division, EPO Form 2048.2, which contained the order that the application was refused on the basis of Article 97(2) EPC. The refusal was also registered in the electronic file system of the EPO.

Notice of appeal was filed on 5 December 2012, and appeal fee was paid the same day. The statement setting out the grounds of appeal was filed on 21 January 2013. 

The appellant's main request was that the decision under appeal be set aside and that the correction of the specification under Rule 139 EPC and the filing of the correct one be allowed. 

Reasons for the Decision

1. The appeal is admissible.

Competence of the Legal Board of Appeal

2. On the face of the decision under appeal, the Examining Division decided that the application is refused on the basis of Article 97(2) EPC. This wording is found on the cover page (EPO Form 2048.2) containing the signatures of the members of the Examining Division. The attached EPO Form 2007 also contains the refusal as the formal order. However, in the body of the decision the order is worded differently: "The request under Rule 139 EPC to exchange the wrongly filed description and claims cannot be allowed." The reasoning of the decision is also consistent with this order, while apparently none of the reasons supports a refusal of the application under Article 97(2) EPC. The Board takes it that the order in the body of the decision is the correct one which reflects the genuine intention of the Examining Division. Thus the Board considers that the cover page with the refusal is merely a formal error, and that the decision only concerned refusal of the request for correction under Rule 139 EPC. In this situation the question arises whether the Board competent for deciding on the appeal under Article 21(3) EPC should be chosen according to the (erroneous) formal legal effect as derivable from the cover page or the Register, or rather according to the intended (factual) legal effect as derivable from the body of the decision, in particular its reasons and other statements it contains.

3. The Board is aware of decision T 1382/08 of 30 March 2009, in which under comparable circumstances a Technical Board of Appeal found that it was competent to decide an appeal filed against a decision on a request under Rule 46(2) EPC 1973 (refund of further search fees). (It is noted that this decision preceded decision G 1/11 of 19 March 2014 of the Enlarged Board of Appeal, deciding that for appeals concerning such requests, when not part of a grant/refusal, a Technical Board of Appeal is competent). The deciding Board in case T 1382/08 derived the competence of a Technical Board under Article 21(3)(a) EPC 1973 from the formal legal effect of the decision (refusal), in spite of the fact that it was obviously erroneous, as in the present case. Furthermore, also as in the present case, the refusal was entered in the European Patent Register. The deciding Board held that the legal effect of the decision as apparent towards the public was decisive for determining the Board competent pursuant to Article 21(3) EPC 1973 (corresponding to Article 21(3) EPC), see point 1.3 of the Reasons.

4. The present Board does not follow this formal approach, which has certain disadvantages. First of all, such a situation would, in theory, in all likelihood lead to a remittal to the department of first instance on the basis of a substantial procedural violation, on the grounds of missing or contradictory reasons. Simply ignoring the wrong formal order of the appealed decision is not an option, because a possible dismissal of the appeal (on the underlying substantive issue) will make this wrong formal decision final (and as such essentially incurable). Remittal causes significant delay to the proceedings, without seeming to provide any satisfactory legal relief to the appellant. This route was also chosen by decision T 1382/08. Alternatively, a "formally competent" Board taking up the case may choose to decide the case on the merits, but this leads to the rather unsatisfactory situation that the case is decided on its merits by a Board which in fact is not competent, given the legislative intent behind Article 21(3) EPC. This can be particularly problematic if in this manner the Legal Board rather than a Technical Board decides a case on technical issues (see also G 1/11, point 10 of the Reasons).

5. These disadvantages are also apparent here. A transfer of the case to a Technical Board for the sole purpose of setting the decision under appeal aside, e.g. on the basis of a substantial procedural violation, and remitting the case for correction of the decision does not seem equitable towards the appellant, to whom the error of the Examining Division cannot be imputed. However, this is not necessary. In its decision G 1/11, the Enlarged Board of Appeal found that where in the regulation of the competences between the Technical Boards and the Legal Board a lacuna in the law is discernible, the substantive matters to be decided on should be guiding when assigning the case to the appropriate Board (point 13 of the Reasons). The Enlarged Board of appeal concluded that a lacuna in Article 21(3) EPC existed, in the sense that it could not be established if the legislator had indeed considered the special and apparently contradictory constellation of the substantive issues (unity of the application, a technical question) and the competent Board (the Legal Board) which would have followed from a "blind" application of Article 21(3)(c) EPC. The Enlarged Board of Appeal held in decision G 1/11 that in this situation the substantive issues and procedural economy should be decisive, which clearly pointed to the competence of the Technical Board.

6. The Board holds that the same considerations are applicable here. It can be safely presumed that the legislator did not intend - it could not have seriously intended - to rely on the competence rules of Article 21(3) EPC in those rare and practically unforeseeable procedural situations where a decision is issued with an obviously erroneous and on an objective view, "impossible" order. This is the case where the formal order of the appealed decision is essentially incomprehensible when compared with the reasons in the body of the decision, in particular when it plainly does not correspond to any of the foreseen possible legal effects flowing from the substantive issue underlying the appealed decision. The present Board holds that in such situations, if the competence is supposed to change from one Board to another only because of the "impossible" order, the order can be disregarded for the purposes of Article 21(3)(a) and (c) EPC, and rather the substantive request underlying the decision must be guiding. In the present case this request concerns the allowability of the correction under Rule 139 EPC in combination with the priority document, as explained in detail in points VIII and XVI-XVII above, an issue that quite obviously does not fall under Article 21(3)(a) EPC. Accordingly, the Board is satisfied that it is competent to decide on the case pursuant to Article 21(3)(c) EPC.

Exchange of application documents under Rule 139 EPC ("Main request")

7. The Examining Division based its decision firstly on the argument that the proposed replacement was not evident because it was not clear if the description or rather the drawings were erroneous. As a second independent argument, the Examining Division held that an exchange of the documents would bring in new subject-matter, contrary to Article 123(2) EPC. The general statement in the application pointing to the priority document and other documents of the applicant could not be relied on, as these were not available to the public or the EPO on the date of filing the present application. The Board concurs with the substantive conclusions of the Examining Division, though partly with somewhat different reasoning concerning compliance with Article 123(2) EPC.

(...)

Extension of the time limit for filing missing parts under Rule 56(3) EPC ("first auxiliary request")

Admissibility of the request

21. This request was first submitted in the grounds of appeal, and no decision was made on it by the Examining Division. However, the Board considers that this request and the submitted grounds in support of the request are closely related to the substance of the appellant's original request, namely the request for correction under Rule 139 EPC. Concerning their substantive effects, both requests have the same purpose, namely the replacement of the "wrong" description/claims with the correct ones. Furthermore, the auxiliary request concerns a rather extraordinary, essentially unforeseen procedural possibility, based on the violation of legitimate expectations, another extraordinary circumstance. Thus it appears justified to consider this request not as a request directed at a separate and independent procedure within the grant proceedings, but rather as ancillary to the disputed issue of the correction under Rule 139 EPC. The relevant facts are all on file and require no further enquiries. Therefore, the Board considers it expedient to deal with the request and admits it under Articles 12(2) and 12(4) RPBA.

Allowability of the request

22. Rule 56(3) EPC permits the later filing of missing parts under certain conditions. One condition is that the missing parts must be filed within one of the two possible time limits under Rule 56(2) EPC. Only one of these time limits is applicable, the other one being a fixed time limit (within two months of the date of filing) set by Rule 56(2), first sentence, EPC and which has already expired. Thus the setting of a time limit under Rule 56(3) EPC as requested by the appellant must implicitly rely on the other time limit of Rule 56(2) EPC, namely the time limit set by an invitation to file missing parts pursuant to Rule 56(1) EPC. Such an invitation was not issued by the EPO, but the appellant submits that it ought to have been issued as a question of good faith (or legitimate expectation). Quite apart from the fact that the omission of such a communication in the present case did not in any way violate the appellant's legitimate expectations (see below), Rule 56(1), second sentence, EPC is quite clear: "The applicant may not invoke the omission of such a communication". This means that the applicant alone is responsible for filing the correct documents and thus remains responsible for any loss of rights which may have been caused by the filing of wrong application documents. On this basis alone, the "good faith" argument of the appellant cannot succeed.

23. The Board does not examine in depth under which further conditions, e.g. until which stage of the grant procedure, is it possible for the EPO to issue an invitation to file missing parts under Rule 56(1) EPC. The Board notes that according to the Guidelines "it is not permissible [to rely on it] at later stages of the procedure", see Part H, Chapter IV.2.3.2, but otherwise it is not explained when the "later stages of the procedure" commence. The wording of the rule nevertheless implies that this possibility is limited to the examination of the European patent application under Article 90(1) EPC, i.e. the examination on filing under Rule 55 EPC, concerning the requirements for according a filing date. Arguably, the issuance of the invitation under Rule 56(1) EPC is no longer possible once the examination under Article 90(1) and Rule 55 EPC has been completed by the Receiving Section, and this is clearly the case here, implied by the fact that the case has been transferred from the Receiving Section to the Search Division.

24. Furthermore, reference is made to decision J 27/10 of 9 December 2010, which held that "missing parts of the description" in Rule 56 EPC must mean a genuine part (fraction) of an originally filed description, so that this rule cannot serve as a basis for substituting a complete (or even partial) description, see points 11, 12 and 18 of the Reasons.

25. As to the substance of the "protection of legitimate expectations" argument, it is not apparent to the Board that the EPO made any error. As explained above, the examination of application documents for identifying any missing parts under Rule 56(1) EPC is part of the examination under Article 90(1) EPC, the purpose of which is to establish if a filing date can be accorded. Though it is implicit in this rule that the Receiving Section should check if any parts are missing, this can only be done by comparison with the request for grant, which specifically lists the items filed. However, at this stage the Receiving Section does not (and normally cannot) check the technical contents of the application. In particular, it is under no obligation to check whether the reference signs in the abstract correspond to those found in the drawings which are to be published together with the abstract. The Board can accept that it might have been obvious for a formalities officer in the Receiving Section to discover this fact, provided he was consciously looking for concordance between the abstract and the corresponding Fig. 1. This may even be possible without a formal technical qualification. However, the point is that the Formalities Officer simply did not have any obligation to make this check during the examination under Rules 55 and 56 EPC.

26. It is true that the Guidelines instruct formalities officers to notify the applicant under Rule 58 EPC that the abstract does not belong to the application, as part of the procedure under Article 90(3) and Rule 57(d) EPC (see Guidelines, A-III 10.2, also A-III 16.2). However, the primary instruction to formalities staff is that beyond checking the existence of the abstract, its content is normally checked by the Search Division. Only when it is obvious that the abstract does not belong to the application should this be brought to the attention of the applicant. There are no particular instructions in the Guidelines that the reference numerals must be checked. Otherwise there was no indicataion here that the abstract as filed was wrong in any way: it referred to an existing figure (Fig. 1), and had the same title as the description (Display apparatus and control method thereof). The drawings contained figures that were perfectly consistent with such types of inventions (block diagrams and flowcharts). In short, on an objective view, there was nothing in the file that could have established a reasonable, let alone a legitimate expectation that the abstract would be identified by the Formalities Officer as "obviously not belonging to the application".

27. Further arguments by the appellant that it had not been notified of the error in time and therefore could not take certain steps, such as withdrawing the application before publication or requesting re-establishment of rights in the time limit of Rule 56(3) EPC (see points 2.25-26 of the grounds of appeal), are apparently unfounded. According to the file, the extended European search report was issued on 6 February 2009, i.e. approximately four and a half months after the filing date, but still more than three months before publication. The report included the European search opinion (Rule 62 EPC). The search opinion explicitly stated that "the figures presently on file do not seem to correspond to the disclosure and the claims", see page 2, point 2. Against this background, it remains unexplained why the appellant itself was unable to identify the error earlier than the stated date of 19 January 2010. Under such circumstances, any re-establishment in respect of the time limit of Rule 56 EPC under Article 122 EPC seems hardly possible, quite apart from the other procedural issues that such a request for re-establishment would inevitably raise.

28. The fact that the Search Division approved the abstract pursuant to Rule 66 EPC in the communication issued together with the search report and opinion (see point V above) cannot be objected to. The abstract apparently did correspond to the description. The fact that the figures did not correspond to the description was properly identified by the Search Examiner. It is not apparent what further duty to warn the applicant the EPO might have had at that stage of the proceedings. On this basis, the arguments of the appellant as listed in points 2.21 to 2.31 of the Grounds are apparently without merit. It has simply not been shown that the EPO did not fulfil its obligations in handling the present case.

Further procedure

29. The apparent formal decision to refuse the patent application is obviously wrong. The Board has explained above that remittal to the Examining Division on the basis of a substantial procedural violation would have caused significant delay. A similar delay would be likely if the Board remitted the case to the Examining Division simply with the order to examine if a correction under Rule 140 EPC would be appropriate. Thus the Board decides, also in view of Article 11 RPBA, last passage, to set aside the decision under appeal with the order to continue the proceedings, but the Board refuses the request under Rule 139 EPC that the application documents be exchanged, as well as the request that a time limit under Rule 56(3) EPC be granted. This appears to the Board the most expedient way of preventing the formally wrong decision (refusal of the application under Article 97(2) EPC) from having any substantive legal effect, particularly in view of the fact that dismissing the appeal would immediately make this formally wrong decision final.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

(...)

4. The case is remitted to the department of first instance for further prosecution.

Catchwords

Where the formal order of an appealed decision is obviously erroneous to such an extent that it is essentially incomprehensible when compared with the reasons in the body of the decision, in particular when it plainly does not correspond to any of the foreseen possible legal effects flowing from the substantive issue underlying the appealed decision, and if the competence pursuant to Article 21(3) EPC is supposed to change from one Board to another only because of such an "impossible" order, the formal order can be disregarded for the purposes of Article 21(3)(a) and (c) EPC, and rather the substantive request underlying the decision must be guiding in determining the Board competent to decide the case, see point 6 of the Reasons. (T 1382/08 not followed).

This decision has European Case Law Identifier: ECLI:EP:BA:2014:J001613.20140522. The whole decision can be found here. The file wrapper can be found here.

Photo from freedigitalphotos.net.

Note: blog updated with inclusion of reasons 7 and 21-28 on 30 June 2015.

Thursday, May 08, 2014 G 1/12 - Water filtration using immersed membranes/Zenon Technology Partnership

Mistaken identity 

My Wife and My Mother-in-Law", a famous optical illusion. Appears in Puck, v. 78, no. 2018 (1915 Nov. 6), p. 11

This is a decision of the Enlarged Board following a referral by the Board of Appeal T 445/08.

In this blog we deal with the main decision. In a subsequent blog we will deal with the admissibility of the referral, where, very unusual, the Enlarged Board could not agree and a minority held the case as inadmissible.

Background of the case

A European application was granted and had been  filed on 18 November 1999 in the name of ZENON ENVIRONMENTAL INC as a PCT application. The patent, once granted, was assigned to Zenon Technology Partnership on 30 May 2006. The transfer of ownership was registered by the EPO with effect from 10 February 2007. An opposition was filed by Siemens Industry, Inc.

The opposition division revoked the patent by a decision dated 28 December 2007. The name of the patent proprietor was correctly cited in the decision as Zenon Technology Partnership.

On 7 March 2008 the Registrar of the Board sent a communication notifying the parties of the commencement and the reference number of the appeal proceedings. This communication bore the following handwritten statement: "the appeal was filed in the name of ZENON ENVIRONMENTAL INC. The patentee is here registered as Zenon Technology Partnership. Therefore the patentee is asked to clarify the situation".

In response, Zenon Technology Partnership sent a letter dated 13 March 2008 and received on 17 March 2008 confirming that "the appeal should of course have been filed in the name of the current proprietor, i.e. Zenon Technology Partnership" and requesting correction of this error; this being the true intention.

The opponent (respondent) challenged the admissibility of the appeal on the ground that it had been filed by a company ZENON ENVIRONMENTAL INC. which was not the registered patent owner. The actual patent owner, namely Zenon Technology Partnership, and the company ZENON ENVIRONMENTAL INC., which had filed the appeal, were two different entities and therefore the second company was not entitled to file an appeal in the place of the registered patent owner. Correction of the identity could have been possible under R.101(1), but that option had expired [before the relevant period under Article 108 EPC had expired].. Correction under R.101(2) only covered correction of formal deficiencies (e.g. such as a wrong spelling or a wrong address). The respondent also held that a correction under R.139 was also not possible because that rule was a general provision over which the specific rules governing the appeal proceedings took precedence according to the general principle of law that "lex specialis generalibus derogat".

The Board of Appeal investigated the case law and decided to refer four questions to the Enlarged Board.

The decision

The answers to the referred questions were (here in a form where the Enlarged Board had rephrased the first question):

Reformulated question (1)  When  a notice of appeal, in compliance with Rule 99(1)(a) EPC,  contains the name and the address of the appellant as provided  in Rule 41(2)(c) EPC and it is alleged that the identification  is wrong due to an error, the true intention having been to  file on behalf of the legal person which should have filed the  appeal, is it possible to correct this error under Rule 101(2)  EPC by a request for substitution by the name of the true  appellant ?

Answer:  yes, provided the requirements of Rule 101(1)  EPC have been met.

Question (2): If the answer is yes, what kind of evidence is to be considered to establish the true intention?

Answer: Proceedings before the EPO are conducted in accordance with  the principle of free evaluation of evidence. This also  applies to the problems under consideration in the present  referral. 

Question (3) If the answer to the first question is no, may the appellant's intention nevertheless play a role and justify the application of Rule 139 EPC?

Answer: In cases of an error in the appellant's name, the general procedure for correcting errors under Rule 139, first sentence,  EPC is available under the conditions established by the case law of the boards of appeal.

Question (4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?

Answer: Given the answers to questions (1) and (3), there is no need to answer question (4). 

Reasons for the Decision

(…)

20. (…) Given that it is explicitly required that the notice of appeal identify the appellant (name and address), it is clear that status as a party to the proceedings has to be established within the two-month period under Article 108, first sentence, EPC, this being the relevant period within the meaning of Rule 101(1) EPC. Otherwise, the appeal will be found inadmissible "... unless any deficiency has been remedied before the relevant period under Article 108 [EPC] has expired." In other words, the identity of the true appellant, i.e. the person on whose behalf the appeal was actually filed, must be established by expiry of the two-month period prescribed in Article 108, first sentence, EPC at the latest. 

22. In contrast, Rule 101(2) EPC states that, if the board of appeal finds that the appeal does not comply with Rule 99(1)(a) EPC, it must inform the appellant accordingly and request him to remedy the deficiencies noted within such period as it may specify. If those deficiencies are not corrected in good time, the board shall reject the appeal as inadmissible. Rule 101(2) EPC, which concerns the procedure for correcting the appellant's name and address to meet the requirements under Rule 41(2)(c) EPC, may be applied where there is a deficiency in the notice of appeal, statement setting out the grounds of appeal or any document subsequently produced by the appellant (which is clear from the term "appeal" in Rule 101(2) EPC, which has to be interpreted to mean "the appeal as a whole" - see T 715/01, loc. cit., Reasons No. 10), provided the appellant's identity has already been established within the two-month period as set out above. In other words, it applies to deficiencies which do not affect the establishment of the true appellant's identity as such, e.g. spelling errors or incomplete indication of the appellant's name. 

24. In the boards' case law, Rule 101(2) EPC (formerly Rule 65(2) EPC 1973) has been interpreted so as to allow for a correction of the appellant's identity, under the conditions set out there and within a period to be specified in the communication, after expiry of the appeal periods prescribed in Article 108 CBE. 

25. This case law was established in three decisions cited in the referral: T 340/92, loc. cit., T 1/97, loc.cit., and T 97/98, loc.cit.; it has been followed in several other decisions, which, as a rule, cited T 97/98, the decision published in the EPO's Official Journal. 

The rationale for this case law is as follows:

26. According to Rule 99(1)(a) EPC, the notice of appeal must contain the name and address of the appellant in accordance with the provisions of Rule 41(2)(c) EPC. Besides the administrative purposes, the purpose of this provision is to ensure that the appellant can be identified and so make it possible to establish whether or not the appeal was filed by a party to the proceedings within the meaning of Article 107 EPC (see T 97/98, loc. cit., Reasons No. 1.3). Deficiencies including the need for substitution of the name of the indicated person by another and omissions regarding the appellant's name or address may be remedied under Rule 101(2), first sentence, EPC by invitation of the board of appeal, even after expiry of the two-month time limit under Article 108 EPC (see T 1/97,loc.cit., Reasons No. 1.1, and T 97/98, loc. cit., Reasons No. 1.3). However, according to the boards' case law, the correction of the deficiency or the omission is possible only if it "does not reflect a later change of mind as to whom the appellant should be" (see T 97/98, loc. cit., Reasons No. 1.3), i.e. the appellant must be sufficiently identifiable within this period for filing an appeal (see T 1/97, loc.cit., Reasons No. 1.1, and T 97/98, loc. cit., Reasons No. 1.3). This is the case if "it is possible to derive from the information in the appeal with a sufficient degree of probability, where necessary with the help of other information on file, e.g. as they appear in the impugned decision, by whom the appeal should be considered to have been filed" (T 97/98, loc. cit., Reasons No. 1.3; see also T 1/97, loc.cit., Reasons No. 1.1 and the other decisions cited there).

27. In other words, an incorrect designation of the appellant in the notice of appeal may be corrected under Rule 101(2) EPC, provided that the appellant was identifiable, i.e. the provisions on the adversely affected party in Article 107 EPC and Rule 101(1) EPC were met, on expiry of the two-month period, so that the correction only expresses what was intended when the appeal was filed within that period. 

28. From the rationale of T 97/98 it follows that, in the event of a deficiency as to the appellant's identity, the board must establish the true intention of the appellant on the basis of the information in the appeal or otherwise on file, i.e. ascertain who must be deemed in all likelihood to have filed the appeal and, consequently, replace the name indicated in the appeal with that of another natural or legal person. 

29. The Enlarged Board fully endorses this case law, in which it is considered that an incorrect indication of the appellant's identity is a deficiency which can be remedied, provided "its correction does not reflect a later change of mind as to whom the appellant should be, but on the contrary only expresses what was intended when filing the appeal" (see T 97/98, loc. cit., Reasons No. 1.3). As is well-established case law, the board may point out the deficiency in the communication under Rule 101(2) EPC, which relates to deficiencies in the name and address given in the notice of appeal or also the statement setting out the grounds of appeal.The Enlarged Board has no reason not to allow correction in response to a Rule 101(2) EPC communication pointing out deficiencies as to the appellant's name and address. In response to such a communication the original indication of the appellant's identity may be brought in line with its correct name, for example by way of a request to correct a wrongly quoted name by replacing it with the true appellant's correct name. It goes without saying that evidence of the true intention as to who is the natural or legal person on whose behalf the appeal was intended to be filed must be produced and evaluated by the board concerned. This is also in line with the relevant ruling in G 2/04 (loc. cit., Reasons No. 3.1). The Enlarged Board therefore has no reason to deviate from the case law followed by the boards.

30. Thus, the answer to question (1), as reformulated above - namely whether when a notice of appeal, in compliance with Rule 99(1)(a) EPC, contains the name and the address of the appellant as provided in Rule 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is it possible to correct this error under Rule 101(2) EPC by a request for substitution by the name of the true appellant - is yes, provided the requirements of Rule 101(1) EPC have been met. 

31. Question (2) "If the answer is yes, what kind of evidence is to be considered to establish the true intention?"  The referred question concerns what kind of evidence is needed to establish true intention. In general terms, it must be emphasised that proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence. This also applies to the problems under consideration here. As the Enlarged Board of Appeal pointed out in G 3/97 (OJ EPO 1999, 245, Reasons No. 5) and G 4/97 (OJ EPO 1999, 270, Reasons No. 5), "(t)he principle of free evaluation would be contradicted by laying down firm rules of evidence defining the extent to which certain types of evidence were, or were not, convincing". The Enlarged Board of Appeal sees no reason not to apply this principle in the present case and to provide guidance on its application. 

32. Question (3)  "If the answer to the first question is no, may the appellant's intention nevertheless play a role and justify the application of Rule 139 EPC ?" 

Even though the answer to question (1) was yes, the Enlarged Board of Appeal wishes to respond to question (3) on whether Rule 139, first sentence, EPC can apply if the name of the appellant was incorrect and the correction to be allowed involves "substitution" of the appellant, a question on which the appellant (patentee) and the respondent (opponent) have commented extensively and argued in support of differing points of view.

33. First of all, it is important to point out that Rule 139 EPC provides for the correction of errors indocuments filed with the EPO. This appears in Chapter VI of Part VII of the Implementing Regulations to the EPC, which covers Rules 137 to 140 EPC. Part VII of the Implementing Regulations relates to Part VII of the EPC (Articles 113 to 134a EPC), which is headed "Common provisions".

34. Rule 139, first sentence, EPC allows the correction of "linguistic errors, errors of transcription and mistakes in any document filed with the European Patent Office". This list and the rule's heading ("Correction of errors in documents filed with the European Patent Office") make clear that the rule deals with cases in which an error of expression in a declaration has occurred or a mistake in a document is the consequence of an error.

35. Since it applies to any document filed with the EPO, the Enlarged Board of Appeal sees no reason why it should not apply to appeals.

36. The first sentence of Rule 88 EPC 1973, or now (with the same wording) of Rule 139 EPC, applies generally (see J 4/85, OJ EPO 1986, 205, and subsequent case law). This follows clearly from the EPC structure as intended by the legislator, Rule 139 EPC having been left in the part relating to "Common provisions", where it had already been in the EPC 1973.

37. The boards of appeal, in particular the Legal Board of Appeal, have developed a large body of case law on corrections under the first sentence of Rule 88 EPC 1973 (first sentence of Rule 139 EPC) and established the following principles:

(a) The correction must introduce what was originally intended. For example, an applicant wishing to add a designation not originally intended on filing cannot rely on the first sentence of Rule 88 EPC 1973 (J 8/80, OJ EPO 1980, 293, in particular Reasons No. 7). The possibility of correction cannot be used to enable a person to give effect to a change of mind or development of plans (J 8/80, loc. cit., Reasons No. 6; J 6/91, OJ EPO 1994, 349). It is the party's actual rather than ostensible intention which must be considered.

(b) Where the original intention is not immediately apparent, the requester bears the burden of proof, which must be a heavy one (J 8/80, loc.cit., Reasons No. 6).

(c) The error to be remedied may be an incorrect statement or an omission.

(d) The request for correction must be filed without delay.

Furthermore, an allowable correction under Rule 139 EPC has retrospective effect (J 4/85, loc. cit., Reasons No. 13; as endorsed in several subsequent decisions, for example J 2/92, OJ EPO 1994, 375, Reasons No. 5.2.2; J 27/96 of 16 December 1998, Reasons No. 3.2; J 6/02 of 13 May 2004, Reasons No. 2; J 23/03 of 13 July 2004, Reasons No. 2.2.1 and J 19/03 of 11 March 2005, Reasons No. 3).

38. Consequently, if correction of the error is allowed, the appeal will be found admissible and the condition of Article 107 EPC will have been satisfied within the two-month period according to Article 108, first sentence EPC.

39. The Enlarged Board of Appeal cannot subscribe to the argumentation put forward by the respondent (opponent) according to which, applying the general principle of lex specialis derogat legi generali, only Rule 101 EPC is applicable, since this is "lex specialis" in relation to Rule 139 EPC, which has to be considered "lex generalis". Leaving aside the explanations set out above, the Enlarged Board of Appeal cannot find in the wording of Rule 139 EPC any indication that this generally applicable provision refers to exceptional provisions. The EPC drafters did not in the wording of Rule 139 EPC make use of any introductory or final formula which, by definition, would have referred to a specific provision excluding the general provision. This is the case, for example, in Rule 100(1) EPC (formerly Rule 66(1) EPC 1973), which provides that the provisions relating to proceedings before the department which has taken the decision impugned apply to appeal proceedings, "unless otherwise provided". In this respect, in G 6/95 (OJ EPO 1996, 649) the Enlarged Board of Appeal decided that the provisions of Rule 71a(1) EPC 1973 (now Rule 116(1) EPC) relating to the first-instance procedure are not applicable within appeal proceedings, since the procedure before the boards of appeal is otherwise provided for, namely in the Rules of Procedure of the Boards of Appeal (RPBA). Other EPC provisions, for example Rules 5, second sentence, 109(1), first sentence, 131(2), second sentence, 132(2), first sentence and 137(1) EPC, refer to special provisions and clearly indicate that the legislator wanted to add to a general provision one or more special provisions "derogating" from it. It is clear that the legislator did not include in Rule 139EPC a formula permitting the conclusion that it included one or more specific provisions that derogate from the general provision. The Enlarged Board of Appeal concludes that Rule 139 EPC is generally applicable as indicated above. In its decision J 4/85 (loc. cit., Reasons No. 13) the Legal Board of Appeal moreover stated that another provision (in that case, Rule 43 EPC 1973) cannot supplement the provisions of Rule 88 EPC 1973. 

40. For the above reasons, the Enlarged Board of Appeal's response to question (3) is that, in cases of an error in the appellant's name, the general procedure for correcting errors under Rule 139, first sentence, EPC is available. The well-established case law of the boards of appeal on the application of Rule 88, first sentence, EPC 1973 and/or Rule 139, first sentence, EPC provides the necessary guidance on its application in the event of an error in the appellant's name.

41. Question (4) "If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?"

Given the answers to questions (1) and (3), there is no need to answer question (4). 

The whole decision can be found here. The file wrapper can be found here.