J 0006/19 - Retraction of withdrawal

Key points

• The applicant withdrew an already published Euro-PCT patent application with a letter filed on 19.12.2018. On 20.12.2018, the EPO issued the Form 205 "Closure of the procedure". The withdrawal was “published in the European Patent Register early in the morning of 21 December 2018.” 
• The applicant requested a correction of the withdrawal on 21.12.2018 received at 10:57 hrs.
• The applicant submitted that the correction request was timely filed, inter alia because it was “entitled to the protection of its legitimate expectation that its request for retraction would be filed in due time because it relied on the advice given orally on 20 December 2019 by the formalities officer that this request could be filed "...within two days", i.e. until 21 December 2018”.
• The Legal Board does not allow the appeal (against the decision to refuse the requested correction).
• The Legal Board: “In this case, the withdrawal appeared in the European Patent Register early in the morning of Friday, 21 December 2018, after the publication run. The public had thus already been officially notified of the withdrawal of the application when the request for retraction of the withdrawal was received by the EPO on 21 December 2018 at 10.57 hrs. Furthermore, at the time of the official notification, the public had no reason to suspect that the withdrawal could be erroneous and later retracted. As already noted, the request for withdrawal was unqualified, unambiguous and unconditional. And the request for retraction of the withdrawal, filed on 21 December 2018, would not have been available for file inspection until at least the following day, 22 December 2018.”
• As to the argument based on legitimate expectations, the Legal Board notes the following.
• “The principle of the protection of legitimate expectations governs all procedural action taken by EPO employees vis-à-vis parties to proceedings, including telephone calls, which are not part of the formal procedure ”
What was said during the phone call was not decisive, because the Legal Board recalls that “in any case the authorised representative is expected to be aware of the relevant law and case law”.
• “In particular [representatives] are expected to know that a filed document is likely to become visible in the European Patent Register once it has been coded by the EPO (see FAQ - European Patent Register on the EPO website). In this case, Form 2058, "Closure of the procedure in respect of application n° 15848194.5", was issued on 20 December 2018. The appellant could then have expected the withdrawal to be published early in the morning of the following day, after the publication run. Thus, it was the appellant's own responsibility to file the request for retraction before the withdrawal appeared in the Register.”
• The cited FAQ is probably this one. It includes the remark that: "When will a document or correspondence become visible in the European Patent Register? For publicly available outgoing communications: on the day after the date of despatch. For publicly available incoming communications: once the filed document has been coded by the EPO. Please note that the date displayed alongside a document in the All documents view is the date of receipt by the EPO."
• Therefore the request for correction was not timely filed, according to the Legal Board.

Disclosure: my firm was involved.

EPO J 0006/19 -  link

Text of the decision omitted here because it contains personal details (names of persons involved).