T 0105/11 - Corrected decision and appeal

Key points

• In this case, the Examining Division had re-issued a "second decision", intended as correction under Rule 140 EPC of the first decision. The Board follows established case law and finds that the date of notification of the corrected decision does not restart the time limits for submitting the Notice of appeal and the Statement of grounds. Therefore, the Statement of ground was filed late. It was filed at the end of four months from the second decision.
• The Board applies the principle of the protection of legitimate expectations and decides that the statement of grounds of appeal is deemed to have been filed in time, "albeit not entirely without hesitation".

 EPO T 0105/11 - [C] - link

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.

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.