T 0646/20 - Addition of further designated states after grant (no)

 Key points

• “This is a case where the patentee appeals against the grant of its own patent. Most of the arguments revolve around the question of whether the patentee was adversely affected by such grant, but also around questions on the interpretation of the remedy of "further processing" under Art. 121 EPC.”
• “European patent application 07747361 [] was filed on 2 April 2007, that is, before the EPC 2000 came into force on 13 December 2007. Under the EPC 1973, EPC Member States had to be designated individually, and a designation fee for each Member State had to be paid. In the present case, designation fees for five Member States (DE, DK, ES, GB and PT) were paid, but not for the others. [] In regard of the other Member States and Extension States, a "noting of loss of rights pursuant to Rule 112(1) EPC" (in the following "Notification") was sent to the applicant's representative on 5 December 2008. ... The appellant states that the Notification was never received, which the Board under Rule 125 (4) EPC has to accept in the absence of any proof to the contrary.”
• “On 4 July 2019, the Office issued the decision to grant (now subject to appeal) that indicated 31 July as the date when the decision to grant would be published in the European Patent Bulletin. On the very day of 31 July 2019, the applicant filed a request for further processing in regard of the loss of rights for the remaining EPC Member States and Extension States communicated in the Notification of 2008, but not received by the applicant. With this request, the applicant filed the corresponding fee for further processing and the designation fees for the remainder of the EPC Member States and Extension States. Against the decision to grant, the appellant on 12 September 2019 filed a notice of appeal, paid the appeal fee on the same day and supplied the reasons on 13 November 2019.”
• The question is whether the appeal is admissible, in particular, whether the appellant is adversely affected. The Board finds that the appellant is not adversely affected by the decision to grant because it had paid the grant fee; according to the Board this includes approval of the designated states intended in the Druckexemplar
• The issue is not entirely clear to me. Rule 71(3) in the version applicable between 01.04.2009 and 31.03.2012 read "he shall be deemed to have approved the text intended for grant."  (OJ 2008 p.513). However, Rule 71(5) in the version in force since 2012 reads "he shall be deemed to have approved the text communicated to him under paragraph 3 and verified the bibliographic data" (OJ 2010 p.637). The intention to grant under Rule 71(3) was issued in April 2019 in the present case.
• The appellant argues that further processing was still available, the 2008 Notice of loss of rights never having been properly notified. “Not least in light of the appellant's argument that the availability of the remedy of further processing at the time the decision was rendered constituted an adverse effect (quod non), the Board finds it appropriate to address this issue.”
• “The Board accepts that the remedy of further processing does not require a pending application at the time the request is filed. But already the term "further processing of an application" indicates that it requires an application. An application that is deemed withdrawn can return to the stage of a pending application once the request for further processing is successful, but an application that has been granted cannot. An application that has turned into a granted patent cannot be further processed as an application”
• “Given the Board's interpretation of an applicant's approval in response to a communication under Rule 71(3), the Board further observes that even in the absence of receiving the Notification of loss of rights, the two-months period as specified in Rule 135 EPC should commence from the date of the Communication [under Rule 71(3) EPC]. This was the point in time when it fell on the applicant to check the complete file of its application at least in regard of the text and designated Member States mentioned in the Communication, and thus the point in time when the applicant should have had constructive knowledge of the designation of five Member States and the failure to designate the others. ”
• “Only in passing, the Board observes that the notification of a loss of rights under Rule 112(1) EPC is a "voluntary service" of the EPO (Case Law, 9**(th) ed. 2019, III.K.4.1), and the Board has some reservations as to whether the lack of receipt of such notice can indeed allow the applicant to request further processing even years after such notification has been dispatched.”
• I'm not sure if CLBA III.K.4.1 is very helpful on this point, as it seems to summarize J7/92 regarding renewal fees and re-establishment after failure to pay with surcharge. It would be rather strange if the EPO would not send out a Notice of loss of rights for cases where further processing is available.
• In my view, the EPO should docket a check for confirmation of receipt and if no confirmation is obtained, proceed with public notification under Rule 129 EPC (after the second attempt under current Rule 129 EPC. 
  
  
• As a bit of nit-picking, the usual phrasing is Contracting States of the EPC (not Member States). Moreover, for extension states, extension fees must be paid (not designation fees). Further, on the EPO website, the decision was given the catchword "Addition of further Designation States after grant", probably 'Designated States' was intended. Finally, the old designation fee system also applies for European applications filed between 13.12.2007 (entry into force of the EPC 2000) and 01.04.2009, see the current text of Rfees2(2). Nevertheless, it is correct that the application at issue was filed after the entry into force of EPC 2000 and that “Under the EPC 1973, EPC [Contracting States] had to be designated individually, and a designation fee for each [Contracting] State had to be paid.”

T 0646/20

https://www.epo.org/law-practice/case-law-appeals/recent/t200646eu1.html

Reasons for the Decision

1. Admissibility of the Appeal

1.1 It is good law that in order to correct the designation of Member States in a decision to grant, the only available remedy is to file an appeal against such decision (decision T 493/08 of 29 September 2009, point 6.2.1 of the reasons). Yet in order to file an appeal under Art. 107 EPC, the appellant must be adversely affected. This is questionable in a case where the applicant has approved the text intended for grant and the corresponding bibliographical data as set out in the Communication. The Enlarged Board of Appeal has so held in a case where the applicant after having approved the text intended for grant appealed against the decision to grant in order to obtain a correction of the granted patent (decision G 1/10 published in OJ 2013, 194).

T 0468/13 - Appeal against grant

EPO T 468/13

For the decision, click here

Key points

• In this case, the applicant noted after (publication of the mention of the) grant that some errors were not corrected in the description. He filed an appeal, submitting the corrected description. Interlocutory revision was granted. This is an (expensive and timewise limited) alternative to Rule 140, since use of Rule 140 in such cases was ruled out by G 1/10.
• Interestingly, interlocutory revision was granted despite the patent being granted in conformity with the Druckexemplar approved by the applicant. 
• The present decision of the Board concerns the request for reimbursement of the appeal fee, which was made on the ground that the changes in the description had already been filed before the R71(3) communication, but were erroneously not taken into account in the Druckexemplar. According to the Board, this does not amount to a substantial procedural violation, because the applicant had approved the Druckexemlar. 

Summary of Facts and Submissions

I. The present decision concerns the appellant's request for reimbursement of the appeal fee submitted in connection with the appeal filed against of the decision of the examining division dated 15 November 2012 granting a European patent in respect of application number EP 08706692.4.

II. The essential steps preceding the filing of the appeal were as follows:

The examining division issued a communication dated 18 July 2012 pursuant to Rule 71(3) EPC indicating the text in which it was proposed to grant a patent.

With a letter dated 6 November 2012, the applicant approved the text and completed the necessary formalities. The decision to grant was duly posted on 15 November 2012.

In a fax letter dated 24 January 2013, the applicant requested a correction under Rule 140 EPC to the effect that page 4 of the patent should be deleted, as had been requested in the applicant's earlier letter dated 2 February 2011.

In the minutes of a telephone conversation between the formalities officer and the applicant's representative dated 25 January 2013, the applicant was informed that correction under Rule 140 EPC was not possible and that the only possibility to set aside the decision was to file an appeal.

III. The applicant filed a notice of appeal on the same day. In the notice of appeal, the appellant requested that the "false decision" be set aside and a "corrected patent" be granted. It was stated that a written statement setting out the grounds of appeal had been filed with the letter dated 24 January 2013. The appellant requested reimbursement of the appeal fee.

IV. By means of a communication dated 27 February 2013, the examining division ordered rectification pursuant to Article 109 EPC and set aside the decision to grant. However, it was stated that the request for reimbursement of the appeal fee could not be allowed and that the request would be forwarded to the Board of Appeal for a decision (Rule 103(2) EPC).

V. Following commencement of proceedings before the board, the board issued a communication in which the appellant was informed of the reasons why the board considered that the appeal fee should not be reimbursed.

In a response to the board's communication dated 21 July 2015, the appellant requested that the board decide on the basis of the documents currently on file.

Oral proceedings have not been requested.

Reasons for the Decision

1. As the examining division granted interlocutory revision under Article 109 EPC, the only matter to be decided by the board is the request for reimbursement of the appeal fee.

2. In accordance with Rule 103(1)(a) EPC, "The appeal fee shall be reimbursed ... in the event of interlocutory revision ... if such reimbursement is equitable by reason of a substantial procedural violation". Other reasons for reimbursing the appeal fee are if the appeal is withdrawn before filing the statement of grounds of appeal (Article 103(1)(b) EPC), or if the appeal is deemed not filed, neither of which apply here.

3. The board notes that the appellant has not explicitly alleged that a substantial procedural violation was committed by the examining division. The board has however considered whether the failure to take into account the applicant's request to amend the description dated 2 February 2011 amounts to a substantial procedural violation which would render equitable the reimbursement of the appeal fee. It finds this not to be the case, for the reasons set out below.

4. With the communication under Rule 71(3) EPC dated 18 July 2012, the examining division informed the applicant of the text in which it intended to grant the patent. Thereby, the applicant was given the opportunity to check the text of the patent to be granted.

After receipt of the Rule 71(3) EPC communication the applicant did not request a correction of the description, but instead, with the letter dated 6 November 2012, expressly approved the text of the patent. German and French translations of the claims were duly filed. The fees for grant and printing were duly paid on 24 October 2012. Thus the text communicated with the Rule 71(3) EPC communication was also deemed approved under Rule 71(5) EPC. Therefore, the text in which the patent was granted corresponded to the text approved by the applicant. Consequently, no substantial procedural violation can be identified with respect to the procedure to grant.

With regard to the earlier request dated 2 February 2011 to amend the description mentioned in the statement of grounds, the Enlarged Board of Appeal has established that if, given the opportunity to check the patent text before approving it, an applicant does not draw any errors to the attention of the examining division and thus ensure his approval is limited to the correct text, then the responsibility for any errors remaining in that text after grant should be his alone (cf. G 1/10, Reasons for the Decision, point 11). In this light, the failure of the examining division to take account of the applicant's earlier request was not a substantial procedural violation which could have rendered reimbursement equitable (cf. Rule 103(1)(a) EPC).

5. The appellant has provided no counter-arguments.

6. It follows that the request for reimbursement of the appeal fee must be refused.

Order

For these reasons it is decided that:

The request for reimbursement of the appeal fee is refused.