Correcting an (erroneous) withdrawal that was filed before filing a divisional, are third parties rights harmed?

• A published erroneous withdrawal that was filed before filing a divisional application, may still be remedied by a Rule 139 EPC correction in case the withdrawal and filing are published at the same date.
• The correction needs to meet the Rule 139 EPC criteria. In addition, there must be no undue delay in seeking its correction and third parties who might have taken note of the withdrawal by inspection of the file must have had reason to suspect that the withdrawal was erroneous.

Background

In its motivation, the Applicant pointed to a clause in the relevant case law that was not taken into account by the ED. According to the case law of the BoA, it was not possible to retract the withdrawal of an application once third parties had been informed of it by way of publication in the Bulletin or in the register, unless the retraction reached the addressee either at the same time as or before said publication or unless there was reason to suspect that the withdrawal was made in error.

The appeal

The Applicant deemed that, as the withdrawal was published at the same time as the filing of the divisional, a third party would have had reason to suspect that the withdrawal was erroneous.

In its reasons, the BoA summarized the relevant case law for correcting the withdrawal of an application under Rule 139 EPC:

• “(a)     the withdrawal did not reflect the true intention of the applicant (existence of a mistake within the meaning of Rule 139 EPC);
• (b)       there was no undue delay in seeking its correction (J 04/03, point 9 of the Reasons; J 10/87, point 13 of the Reasons);
• (c)       third parties who might have taken note of the withdrawal by inspection of the file would have had reason to suspect that the withdrawal was erroneous (see J 10/08, point 12 of the Reasons; J 2/15, point 13 of the Reasons; J 8/06, point 6 of the Reasons).”

In addition, the Board explained: “Some decisions by the board have required a further condition to be met, more specifically that the error was due to an excusable oversight (e.g. J 04/03, point 9 of the Reasons; see also J 10/87, point 13 of the Reasons). This board cannot adhere to this case law “.

The Board’s reasoning 

The Board then contemplated on the background of the applicable law. The strict approach towards a correction of a withdrawal aims to protect the expectations of third parties rather than sanctioning the Applicant for its negligence. It was further noted that the EPC does not allow for third party intervention in a Rule 139 EPC correction. For this reason, the withdrawal mistake must be recognisable in order to allow correction so that third parties rights are not impaired even without such an intervention possibility.  

For the current case, the Board deemed that requirements (a) – (c) were met. For requirement (c), the Board explained in consideration 3.4: “Finally, the requested correction would not jeopardise the legitimate expectations of the public. By consulting the register, any third party would have received notice of both events at the same time, i.e. the withdrawal of the parent application and the filing of the divisional application. Subsequently, they could have made only two inferences at the time the withdrawal was published: either that the divisional application had been validly filed or that a mistake had occurred. In neither case could they have relied on the withdrawal as giving the green light to practice the invention. If they had done so, this would have been without proper justification.” 

The decision under appeal was set aside and the withdrawal of European patent application was corrected such that it was made on a date after filing of the divisional application.