J 0007/19 - Correction withdrawal rejected

Key points

• The Board does not allow a correction of a withdrawal of an application.
• The appellant submitted that the withdrawal“had been based "on the erroneous belief" that the claims of the withdrawn European patent application were the same as the claims of a corresponding Japanese patent application.”
• The Board: “The notion of a mistake eligible for correction under Rule 139 EPC does not cover the scenario where a declaration of withdrawal reflects the true intention of the applicant, but is based on wrong assumptions.”
• The Board: “There are also good policy reasons for having this limitation. If the notion of a mistake were extended to also cover a scenario where the declaration correctly reflects a party's intentions, but was based on wrong assumptions, any mistaken assessment of the disclosure of the application, the patentability of the invention, the entitlement to priority, the legal provisions or the related case law would make any withdrawal potentially eligible for correction. This would be detrimental to legal certainty ”
• The Board also refers to general principles as illustrated by Italian, Swiss and German civil law. 
• Personally I appreciate that the Legal Board discusses the law of more EPC Contracting States than only Germany. 

Headnote

• “The notion of a mistake eligible for correction under Rule 139 EPC does not cover the scenario where a declaration of withdrawal reflects the true intention of the applicant, but is based on wrong assumptions.”

EPO J 0007/19 -  link

Reasons for the Decision

1. According to Rule 139 EPC linguistic errors, errors of transcription and mistakes in any document filed with the European Patent Office may be corrected on request. This provision has been subject to extensive interpretation by the boards of appeal. According to the case law (J 8/80, OJ EPO 1980, 293, Reasons No. 3; J 4/82, OJ EPO 1982, 385, Reasons No. 3; J 19/03 of 11 March 2005, Reasons No. 3-12; J 4/97 of 9 July 1997, Reasons No. 3), Rule 139 EPC also applies to "corrections of procedural acts if they are submitted by a document", for example to a request for correction of the withdrawal of a designation or of a claimed priority (cf. J 19/03, loc. cit., Reasons No. 3 and 4). In this case the correction would retrospectively modify or eliminate the procedural act concerned.

The provision is of general application (G 1/12, OJ EPO 2014, A114, Reasons No. 35-39). It applies to any declaration or procedural act, including the withdrawal of an application. As correctly pointed out by the appellant, retraction and correction of a declaration are two distinct legal concepts.

2. An applicant's ability to correct a withdrawal, however, is subject to several conditions specified by the case law. The first of them is the existence of a mistake within the meaning of Rule 139(1) EPC.

3. The EPC does not provide a definition of this term; it is the task of the case law to fill this lacuna. According to the case law, "a mistake may be said to exist in a document filed with the European Patent Office if the document does not express the true intention of the person on whose behalf it was filed" (cf. J 8/80, OJ EPO 1980, 293, Reasons No. 4; J 4/82, OJ EPO 1982, 385, Reasons No. 5). Therefore, mistakes which result in a divergence between the party's actual and declared intent are eligible for correction under Rule 139 EPC. As clarified by the Legal Board of Appeal, "the correction must introduce what was originally intended" and "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, Reasons No. 2.2; see also G 1/12, loc. cit., Reasons No. 37).

4. In the case in hand, the applicant intended to withdraw the application; its letter of 20 June 2016 correctly expressed this intent. The alleged error relates to the reasons for filing the withdrawal. The applicant mistakenly believed that the claims of the European application did not differ considerably from the claims of the corresponding Japanese application. On the basis of this assumption it decided to abandon the application. There was no divergence between declaration and will. In fact, the only divergence was between what the appellant would have been likely to do had it been aware of all the circumstances and what it actually did. However, divergences between a party's hypothetical intention and the content of a declaration it filed with the EPO do not fulfil the notion of a mistake as developed by the case law. Hence, they are outside the scope of Rule 139 EPC as interpreted by the boards. The correction in this case would not establish what was originally intended, but correct the original intention since it was formed on the basis of wrong assumptions.

5. At the oral proceedings, the applicant raised two objections against this preliminary view. The first was that, while it may be true that the mistake at issue related to the assumptions on which the declaration was based, these assumptions concerned the application itself and not extrinsic factors, e.g. the commercial prospects of the invention or the market situation in Europe or the US. Therefore, it was not an error relating to the motives, contrary to the board's suggestion in the communication issued in preparation for the oral proceedings. The board agrees with this remark. The mistake concerned specific attributes of the subject-matter referred to in the declaration of intent. However, this characterisation does not change the conclusion as to whether or not applicant's declaration reflected its true intention.

6. The second argument was that, according to the applicant, the case in hand does not materially differ from that on which decision J 10/08 of 16 November 2009 was based, in which the request to correct the withdrawal was granted. In that case, the applicant intended to abandon a PCT application. However, by mistake, it instructed the European representative to withdraw the EP application instead. Similarly, in the case in hand, the applicant did not intend to abandon the European application; it merely intended to abandon a non-existent further application with claims identical to those of the Japanese application. In both cases the withdrawal did not reflect the applicant's true intention. The fact that in J 10/08 there were two pending applications involved, while in the case at hand only one pending application is involved, does not prevent the Board from following the same reasoning as in J 10/08 and grant the request.

The board cannot agree with this argument. The two cases concern two different factual situations and two different types of mistake. In J 10/08, a US attorney mixed up the instructions pertaining to two different applications from the same company. As a consequence of this error, he instructed the European representative to withdraw the European application on behalf of the applicant, while the applicant had actually intended to abandon the PCT application.

In the case in hand, the applicant intended to withdraw the application at issue but had decided to do so because it had mistakenly attributed specific characteristics to it. There is a clear difference between a situation where a party did not intend what it (or its representative) declared, and a situation where the party intended to declare exactly what it (or its representative) declared, but did so because it mistakenly believed some facts to be true. In the first case the mistake leads to a conflict between declaration and intention; in the second case the mistake affects only the formation of that intention. In the first case the correction would bring the filed document in line with the original intention of the party; in the second case the correction would modify an act or document matching the original intention with an act or document reflecting a different intention that was not influenced by a wrong assumption.

The distinction between errors relating to the declaration, its content or its transmission and errors relating to the assumptions on which the declaration is based is made in the civil law of several contracting states too (see, for example: in Italian law, Article 1433 Civil Code (CC), which concerns errors as to the declaration or its transmission, and Article 1429 Nos.1-3 CC, which concerns mistakes as to the nature or the subject of the contract, the identity or the characteristics of the other contracting party; in German law, Section § 119(1) BGB, which deals with errors as to the content of the declaration, and Section § 119(2) BGB, which concerns mistakes about the characteristics of a person or a thing; in Swiss law, Article 24(1) Nos. 1-3 of the Federal Act on Amendment of the Swiss Civil Code, Part Five: The Code of Obligations, dealing with errors as to the declaration, and Article 24(1) No. 4, which deals with mistakes as to the facts on which the declaration is based). In the case law of the boards, only errors relating to the declaration, its content or its transmission fall under the notion of a mistake within the meaning of Rule 139 EPC.

7. There are also good policy reasons for having this limitation. If the notion of a mistake were extended to also cover a scenario where the declaration correctly reflects a party's intentions, but was based on wrong assumptions, any mistaken assessment of the disclosure of the application, the patentability of the invention, the entitlement to priority, the legal provisions or the related case law would make any withdrawal potentially eligible for correction. This would be detrimental to legal certainty (see for similar concerns also the decision of the Board of Appeal of the German Patent Office of 9. January 1954 H 1694 III/79b - 1 B 18/52, GRUR 1954, 118).

As clarified in the case law, the withdrawal of an application "is the gravest procedural step that can be taken" (J 4/03 of 9 September 2004, Reasons No. 12); it produces several effects for both the EPO and the public. After a withdrawal, the EPO has to take several procedural steps and arrange for the refund of the fees. Legal certainty requires that the "EPO must be able to assume that a withdrawal has been made with all the deliberation and care necessary for such a grave step" and that the "European Patent Office can rely on the statements of the parties in proceedings" (J 4/03 of 9 September 2004, loc. cit., Reasons No. 12). After the publication of the withdrawal, the interest of the public is also involved. Third parties must be able to trust information published in the European Patent Bulletin. Therefore, where the applicant has made a decision on withdrawal without considering all the relevant circumstances, it must bear the consequences.

Order

For these reasons it is decided that: