T0433/21 withdrawal of appeal, Rule 139 EPC


Correction of withdrawal, filing divisional application, Rule 139 EPC, pendency of the appeal

This case concerns the rescission of a declaration to withdraw the appeal on the grounds that such declaration was allegedly made in error. The case also concerns the question of whether a request to reopen appeal proceedings should have the consequence that the appeal is again pending.
The Examining Division refused European patent application no. 13866092.3, a decision against which the applicant appealed. The Board issued a communication concluding that none of the requests on file appeared to be allowable.
The appellant withdrawn its appeal, the order to close the case was sent to the representative.
The appellant who henceforth is referred to as "the petitioner" provided that: first, it had always been the intention of the petitioner to file a divisional application rather than to withdraw the appeal. Second, in requesting the correction, the petitioner had acted without delay. Third, the declaration of withdrawal contained an error that would have made it immediately apparent to third parties that no withdrawal of the appeal could have been intended. Fourth, declarations made in error could be retracted according to § 119 German Civil Code (BGB), which by way of Art. 125 EPC should find application in the present circumstances.
The representative received instructions to withdraw the appeal prior to deadline, to request a refund of the official fee, and to file a divisional application.
In terms of terminology and legal meaning, it is important to distinguish between a "retraction" of a declaration of intent and its "rescission". A retraction of a declaration of intent (including a withdrawal) is possible before the declaration of intent has had any legal effect. For this to be the case, the retraction must reach the addressee either before or at the same time as the declaration itself. Therefore, if a statement to disregard the withdrawal reaches the Office at the same time (meaning: the same day) as the withdrawal, both (conflicting) declarations have reached the Office at the same time and no legal effect can be given to the declaration of withdrawal.
However, a declaration can no longer be disregarded if it has already had legal effects, which is the case from the day following the receipt of such declaration. Here, the request to undo such legal effects is considered as a rescission and is subject to certain conditions.
In the case at issue, the petitioner declared a withdrawal of the appeal, yet in fact had received instructions to file a divisional application and withdraw the appeal. It was submitted that the declaration to withdraw the appeal was not erroneous, but incomplete, and the error was the omission to (additionally) file a divisional application, as if one page of the document had gone amiss. According to decision G 1/12, omissions in a document may also be corrected under Rule 139 EPC. Yet the omission must relate to a document which was actually filed with the Office. The omission of a procedural act is not an error or omission in a document, nor does it relate to a "document filed with the European Patent Office". If the Board were to follow the petitioner's line of argumentation, anyone could file a blank page or even no page at all and later claim that the true intention was to file an application, an opposition, an appeal or any other document, and request a correction under Rule 139 EPC.
Thus, the Board finds that in the present case the representative made an error by omission, but not an omission concerning the content of the document that was actually filed, an omission to carry out the client's instructions. The omission of a procedural act cannot in itself be regarded as a correctable error under Rule 139 EPC, because it does not fall within the scope of an error or mistake in a "document filed with the European Patent Office" as required by that Rule, but rather constitutes an error or mistake in the run-up to the filing of the document.
In the case at issue, the Board assumes in the petitioner's favour that at the time of receiving the instructions from the applicant, the representative's intention was to file a divisional application in addition to or in lieu of a withdrawal. However, as it is not immediately apparent that this was also the intention of the representative at the moment of filing the document, "the requester bears the burden of proof, which must be a heavy one" (decision G 1/12). In the present case, the Board does not consider it sufficient to point out that the client had given instructions to file a divisional application, since the representative may well not have had this in mind when filing the letter. In the absence of proof, the Board must conclude that the intention of the representative at the time of filing the statement was only to withdraw the appeal.
It is appropriate at this stage to further deal with the petitioner's position concerning Art. 125 EPC and § 119 German BGB. The petitioner's arguments are: An error was committed (§ 119 BGB) by the representative (§ 166 (1) BGB) who notified the Office without culpable delay after discovering the error (§ 121 BGB). Rescission should thus be possible and the damage caused to the Office or third parties by such erroneous declaration should be compensated, § 122 BGB.
One of the requirements to safeguard the interests of the public is that an indication of any error must be found in the document itself. In the case at issue, the only argument advanced by the petitioner was the fact that the date of the decision under appeal was erroneously given as "2022", although it should have been "2020". Third parties should thus have been aware that no withdrawal could have been intended. The Board finds this argument unconvincing, a reasonable observer would have concluded that it was the indication of the year "2022" that was erroneous, not the declaration of withdrawal.
Further requirements are that the retraction must be made immediately and before the public has been notified thereof.
The petitioner put forward that even if the public were to inspect the file and learn of a withdrawal, it would not be in a position to know at that point in time whether a divisional application had been filed or not. The Board is not persuaded on this point: the question is whether the public could have learned of the withdrawal of the appeal, not whether the public could not have learned of some other procedural act.
The Board now turns to the consequences of refusing the request for correction. This is of importance because the petitioner, after filing its request for correction, also filed a divisional application in the belief or understanding that a request under Rule 139 EPC to rescind the withdrawal of the appeal would ex lege reopen the appeal proceedings with the consequence that the patent application would still be pending. After all, an application is pending up to the date on which the European Patent Bulletin mentions the grant of the European patent or up to the date on which the application is refused, withdrawn or deemed withdrawn. This is relevant to the extent that Rule 36 EPC requires that a divisional application can only be filed in relation to a pending earlier patent application.
The current proceedings do not make the appeal proceedings pending again. Rather, they are meant to establish whether the underlying application and the related appeal proceedings should be deemed still pending and thus be continued at the stage they were prior to ordering their termination. By the order to terminate appeal proceedings, the case has become res iudicata. The Board has been asked to render a decision not in the appeal proceedings, but rather in proceedings meant to determine whether the order can be set aside and the appeal proceedings be continued, which the Board would refer to as ancillary proceedings.
From the ancillary nature and limited scope of these proceedings, it further follows that potential substantive rights associated with the application would only arise if appeal proceedings were reopened after a finding that Rule 139 EPC was applicable, then after another finding that the request for correction was allowable. This was not the case here.
For the above reasons, the requests of the petitioner - to allow a correction under Rule 139 EPC, to reopen appeal proceedings - must be refused.
The request for a correction under Rule 139 EPC /Art. 125 EPC is refused.