T 1285/23 - Fighting again before the ED

Key points

• Now that the discussion of the former designation fee per designated state has been removed from the 2026 edition of the Guidelines, this decision remains noteworthy. It was published in October 2025.
• In this case, the applicant had withdrawn the designation of GB in the parent application by letter of 02.03.2017, after the Rule 71(3) Communication. The decision to grant was issued on 16.06.2017, and the mention of the grant on 12.07.2017. The patent was opposed.  The OD decided to maintain the patent in amended form. The opponent appealed. The proprietor disapproved of the text of the patent. The parent patent was revoked. 
• The proprietor filed a divsional application on 05.07.2017. On 23.02.2018, the applicant submitted a letter about the designated states (after the application was published on 10.01.2018). The Receiving Section issued a decision on 22.05.2018 that GB is not designated, and made it open to appeal. The Board rejects the appeal in 
• The search report was also published on 10.01.2018. The examination fee was paid on 06.07.2018. Hence, on 22.05.2018, the Receiving Section was competent.
• The Board rejected the appeal against the decision of the Receiving Section (decision J 3/18, issued on 19.08.2020, identical to decision J 3/20 in a parallel divisional case (blog post).
• The Legal Board held that "an interpretation of Article 76(2) EPC in accordance with recognised rules of interpretation shows that only those states that had been designated in the earlier application at time of filing the divisional can be designated in the divisional"
• Further, "During the oral proceedings the appellant presented submissions concerning the protection of its legitimate expectations which had not been presented before. ... In the case on file the board used its discretion not to admit the new submissions because the appellant could and should have presented the facts that form the basis for the alleged protection of legitimate expectations earlier in the proceedings."
• Examination starts on 09.09.2020, with an Intention to grant. On 20.10.2020, the applicant requests that the Examining Division consider GB to be designated.
• The ED decides on the matter on 21.03.2023 (decision). 
• The applicant appeals.
• "During the oral proceedings before the Legal Board of Appeal the appellant sought to rely for the first time on the principle of good faith. They stated that they had relied on the communication dated 10 August 2016 concerning the application which was eventually the subject of decision J 14/18. This case concerned the then co-pending application no. 16174992.4 ("the co-pending application"). In that communication the EPO had listed GB as one of the designated states."
• "The appellant did not dispute that a decision of a Legal Board of Appeal concerning a decision of the Receiving Section could in principle also have a binding effect, or an effect of res judicata, on an Examining Division when the application proceeded to that division. However, it argued that its request was now based on the principle of good faith. In J 13/18 the Legal Board of Appeal had never considered that line of argument in substance, but had based the dismissal of the appeal, and thus the refusal of the request to add GB as a designated state, solely on the interpretation of Article 76(2) EPC. There could thus not be a binding effect, under Article 111(2) EPC, of that decision on the Examining Division when they considered that request on a different legal basis, namely the principle of good faith. "
• "The Board disagrees. In J 13/18 the Legal Board of Appeal dismissed the appeal. By doing so it upheld the finding of the Receiving Section not to include GB as a validly designated state in the application. Decision J 13/18 became final when it was issued at the end of the oral proceedings. "
• "The subject-matter of decision J 13/18 was the determination of whether the Receiving Section's refusal to add GB as a validly designated state to the application was correct or had to be overruled. In its decision the Legal Board of Appeal considered whether Article 76(2) EPC could be interpreted such as to allow the appellant's request, and decided not to admit the lines of argument presented by the appellant based on the correction of errors and on the principle of good faith. By dismissing the appeal the Legal Board of Appeal issued a conclusive decision on the request of the appellant to include GB as a validly designated state in the application, rather than admitting the late filed lines of argument (including that of the principle of good faith) and remitting the case to the department of first instance for further prosecution."
• The Board considers the matter, hence, res judicata by J 13/18.
• "Thus, even if the Board applied Article 111(2) EPC to the case in hand, this would not have altered the Board's conclusion."
• "For the reasons set out above, the Examining Division was not competent to decide in substance on the appellant's request to add GB as a validly designated state in the application. The decision is void and is formally to be set aside."
• "The Board concluded above that in view of the effect of res judicata emanating from J 13/18 the Examining Division was not competent to decide in substance on the appellant's request in question."
• "The Board is equally bound by this effect. As a consequence, the appellant's request to add GB as a validly designated state in the application is inadmissible."
• The Board hence decides, in the order of the decision, that "The decision under appeal is set aside. The request to add Great Britain as a validly designated state in the application is refused as inadmissible."
• "Thus, even if the Board applied Article 111(2) EPC to the case in hand, this would not have altered the Board's conclusion."
• Hence, the Board did not apply Article 111(2) EPC to the case at hand.
• The Board sees no difference in facts that would suspend the binding effect under Article 111(2) EPC
  
  
• The appeal fee is reimbursed. "By issuing a decision on a matter in respect of which it was not competent, the Examining Division committed a substantial procedural violation. Whilst the appellant did not obtain the full legal redress sought by its appeal, the Board nevertheless had to set aside the impugned decision."
• "the Board concurs with the body of case law according to which reimbursement of the appeal fee may be ordered based on the principle of good faith, even if the appeal was not allowed and thus one of the conditions of Rule 103(1)(a) EPC was not met (CLB, V.A.11.14)."

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t231285eu1