J 0003/22 - Correction of withdrawal

Key points

•  A professional representative explicitly withdraws an application with a fax received on 19.05.2020.
• "The representative had not informed the appellant or his Indian representative of the summons to oral proceedings, the above-cited letter [fax] of 19 May 2020 or the EPO's letter of acknowledgement of the withdrawal dated 25 May 2020. The examining division, having cancelled the oral proceedings, included both letters in the Register of European Patents [**] and closed the file."
• "In October 2020, the appellant found out about the unsolicited withdrawal."
• "On 25 May 2021, the appellant, having hired a new European representative, filed a request for re-establishment of rights into the time limit to attend oral proceedings. This letter was treated by the examining division also as an implicit request for a correction of the withdrawal of the application under Rule 139 EPC."
• The Legal Board: "The case law of the boards on the correction of erroneous withdrawals is well founded and typically deals with withdrawals declared against the intention and without any fault or with very little fault of the appellant. In all these cases, the consequences of the applicant losing their patent application were severe. This fact, however, did not lead the boards to decide in favour of the applicant and to the detriment of the general public's trust in the reliability of the Register of European Patents and in the freedom to work an alleged invention that was no longer claimed by an applicant."
• " Since decision J 10/87, requests for retraction of the withdrawal of an application as a whole have only been held allowable under Rule 88 EPC 1973 and later under Rule 139 EPC 2007 [sic] if the public had not been officially notified of the withdrawal by the EPO at the time the retraction of the withdrawal was applied for.'
• "Since decision J 25/03 (referring to decisions T 824/00 and J 14/04), it is established case law that an entry in the Register of European Patents renders a declaration of withdrawal public in the same way as a publication in the Patent Bulletin."
• "The mentioned decisions already balance the interests of the general public and the applicant. They came to the conclusion that until the public is officially informed by an EPO publication, the applicant's interest in correcting an erroneous withdrawal should prevail. This ceases being the case when the public may rely on an officially published declaration of withdrawal, at least where the file does not contain any indication that this declaration might have been erroneous."
• "The fact that the error occurred without any fault of the appellant does not qualify as exceptional circumstances that would justify differentiating the case at hand from the settled case law. The applicant not being responsible for a mistaken withdrawal is the rule rather than the exception since the second prerequisite for a correction under J 10/87 reads "the erroneous withdrawal is due to an excusable oversight". [*] Most cases deal with errors caused by representatives misinterpreting or ignoring orders of their clients, confounding cases or the like. Thus, the Board sees no reason and no basis to diverge from the settled case law and balance the interests of the general public and the appellant in a way that the latter's loss should outweigh the protection of the general public and its expectation that an explicitly withdrawn application remains withdrawn."
• * - this factor was not confirmed in G 1/12 r.37. See also T 1678/21: "As far as the "excusable oversight" requirement is concerned, the board notes that it is related in nature to the "due care" requirement for re-establishment of rights under Article 122 EPC. However, a correction under Rule 139, first sentence, EPC is a generally applicable legal remedy and is thus available independently of whether the conditions for re-establishment of rights are met (see point 2.3.2 above). This general applicability would appear to be circumvented if the above requirement were to be applied to corrections under Rule 139, first sentence, EPC."
• ** - Article 127 EPC 2000 specifies that "The European Patent Office shall keep a European Patent Register"; the term "Register of European Patents" was used in Article 127 EPC 1973. More importantly, letters are not entered in the Register but in the file (see Article 128). Even though nowadays the file can be inspected through a website called "European Patent Register", table "all documents", legally the file and the Register are two different concepts. In the case at hand, the tab "Event history" shows that the withdrawal was entered in the Register on 22.05.2020 (link); I don't know if this was early in the morning or late in the evening (see also J 6/19). 
• As a comment, the present decision does not cite G 1/12, which only specifies, in the relevant part, that "the request for correction must be filed without delay".
• The Legal Board provides the following headnote: "Once the public is officially informed by an EPO publication of an explicit declaration of withdrawal and without any indication that this declaration might have been erroneous, there is no room for a further balancing of the interests of the general public and the applicant (confirming the settled case law of the boards of appeal".
• As a comment, it is unclear to me what the Legal Board means with "officially informed by an EPO publication". Traditionally, the EPO publications are the Bulletin, OJ, and the patent publications. 
• A practical solution appears to be that the EPO codes the status "withdrawn" in the Register only with some delay (e.g. 10 days after the date of the acknowledgement of the withdrawal that is sent to the applicant). Any interested third party can check the file and see the notice of withdrawal in the online file in the period between receipt of the notice (and addition to the public online file) and the coding to the status "withdrawn". 

https://www.epo.org/law-practice/case-law-appeals/recent/j220003eu1.html