T 1825/14 - Cannot go back

Key points

• In this case, the EPO first granted an extension of a time limit for a response. Later the EPO issued a Notice of loss of rights based on the request for extension being late filed, the extension therefore being invalid, and the response hence being late.
• The Board considers this a substantial procedural violation. The EPO "cannot subsequently go back on its own earlier position, especially when, as here, it has led the applicant to legitimately believe that no loss of rights has taken place." 
• The Examining Division had taken the decision with a legal member and oral proceedings. I note that the applicant did not seem to very clearly invoke the principle of legitimate expectations. 
• The request for an extension was, according to the applicant, filed on paper in the mailbox of the EPO on Munich on the evening of the last day, but date stamped with the day after. 
• There is also a remark about the reimbursement of the deposit for the hearing of witnesses. 

EPO T 1825/14 - link

II. The facts relevant to the present decision are summarised below.

III. An examination report concerning the patent application in suit (application No. 11002792.7) was issued by the examining division on 27 July 2011. A period of four months for filing observations and for correcting indicated deficiencies was set, which expired on 6 December 2011.

IV. With a letter dated 6 December 2011 the applicant requested a two-month extension of the time limit. The examining division granted this request with a communication dated 19 December 2011, thereby extending the time limit for reply to a total of six months, expiring on 6 February 2012.

V. On 6 February 2012, the applicant filed a response to the communication dated 27 July 2011, together with amended application documents.

VI. On 8 March 2012, the formalities officer issued a communication on behalf of the examining division, noting a loss of rights pursuant to Rule 112(1) EPC, namely that the application was deemed to be withdrawn under Article 94(4) EPC. The reason given was that the invitation to file observations on the communication from the examining division dated 27 July 2011 had not been complied with in due time, as the observations had been filed on 6 February 2012. More specifically, the applicant was informed that the "application" had been received at the EPO on 7 December 2011 and that the request for extension of the time limit had therefore been granted "erroneously", the time limit having expired on 6 December 2011. The "extension of time limit" was "considered not having been granted" and, consequently, the applicant's reply was deemed to have been received late.

Reasons for the Decision

1. The appeal is admissible.

2. The board notes that the request for an extension of the time limit was initially granted by the examining division and was thus treated as a valid procedural act.

3. Relations between the EPO and applicants are governed by the principle of good faith (J 2/87, OJ EPO 1988, 330, and J 14/94, OJ EPO, 1995, 824). Hence, if the EPO issues a communication such as - in the present case - receipt of a response within a set time limit, and then treats that response as a valid procedural act, it cannot subsequently go back on its own earlier position, especially when, as here, it has led the applicant to legitimately believe that no loss of rights has taken place.

4. In the present case, the examining division was thus prevented by its own earlier conduct from issuing the notice of loss of rights dated 8 March 2012. Hence, it should not have gone back on its earlier position, which had led the applicant to legitimately believe that no loss of rights had occurred, the time limit having been extended by the examining division's communication dated 19 December 2011. Therefore, by issuing the notice of loss of rights and not withdrawing it as requested by the applicant, the examining division committed a substantial procedural violation.

5. In view of the above, the time limit for filing observations was complied with by the letter dated 6 February 2012 and, consequently, there was no reason for the examining division to grant the request for further processing.

6. The decision under appeal is therefore to be set aside.

7. Request for reimbursement of fees

7.1 According to Rule 103(1)(a) EPC, the appeal fee is reimbursed where a board deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. As the appeal is allowable and the board considers reimbursement of the appeal fee to be equitable in view of the substantial procedural violation committed by the examining division, a reimbursement of the appeal fee is justified.

7.2 The taking of evidence was made conditional upon deposit with the EPO by the applicant of an amount for reimbursement of expenses of the witnesses (Rule 122(1) to (3) EPC). Since the witnesses have not requested any reimbursement of their costs, the deposit made by the applicant is to be reimbursed on condition that cost waivers signed by the witnesses are submitted.

8. Since, as pointed out above, there was no need to request further processing, the fee for further processing is also to be reimbursed.