J 0011/80 (Withdrawal of a European patent application) of 25.3.1981

Summary of Facts and Submissions

I. On 26 January 1979, the appellant filed a European patent application, claiming priority from a German national patent application made on 22 April 1978.

II. In accordance with the practice announced in Official Journal EPO 1978, page 312, preparations for publication of the application were deemed to have been completed on 13 August 1979, that is, ten weeks before the expiry of the eighteenth month after the priority date.

III. On 27 September 1979, the Office received a letter from the appellant dated 20 September 1979, the body of which consisted of two sentences: "We hereby withdraw the above-mentioned patent application. Publication of the application should not take place."

IV. On 12 October 1979, the Receiving Section issued a response, stating that the application would be published on 31 October 1979, in accordance with Article 93 EPC, and that the withdrawal of the application would be announced in the European Patent Bulletin. The application was, in fact published on 31 October 1979 and the withdrawal of the application was announced on 12 December 1979.

V. On 18 October 1979, the Office received a request for further processing of the application under Article 121 EPC. The fee for further processing was duly paid.

VI. On 28 November 1979, the Receiving Section issued the Decision under appeal, rejecting the application for further processing as inadmissible, on the grounds that the circumstances of the case were not those in which further processing could be requested and that the application had been withdrawn unconditionally.

VII. On 18 January 1980, the appellant lodged this appeal, by a notice dated 16 January 1980, applying for the Decision under appeal to be set aside and for a declaration that the patent application was still existant. The appeal fee was duly paid.

VIII. In the Statement of Grounds of the appeal, lodged on 27 March 1980, the appellant contended that the application was in existence even without a decision that there should be further processing. Contrary to the view of the Receiving Section, the application had not been effectively withdrawn because the application to withdraw it had been conditional. The appellant set out arguments based on national laws of Contracting States to the European Patent Convention to the effect that a declaration of intention must be interpreted so as to give effect to the true intention of the person making it. In particular, the appellant cited a Decision of the German Federal Patent Court (BPatGE 15, 160), in which that Court had had to decide a similar case.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rules 1(1) and 64 EPC, and is, therefore, admissible.

2. Article 121 (1) EPC provides that a request for further processing of an application may be made if the European patent application is to be refused or is refused or deemed to be withdrawn following failure to reply within a time limit set by the European Patent Office.

3. None of those conditions is satisfied in this case. The application was not to be refused, nor was it refused nor was it deemed to be withdrawn following failure to reply wihin a time limit set by the Office. The application was either withdrawn unconditionally as the Receiving Section considered, or not withdrawn because the condition for withdrawal imposed by the appellant was not satisfied. The request for further processing was, therefore, in either case, misconceived, and the Receiving Section was right to reject it.

4. However, the question remains whether the applicaion is still in existence. The appellant's letter of 20 September 1979, containing, in substance, only two sentences, was addressed to the European Patent Office. The appellant could assume that the staff would have a practical knowledge of the commercial realities that lie behind decisions to proceed, or not to proceed, with a patent application. In the judgement of the Board, the appellant did clearly indicate that it wished to withdraw its application on the not uncommon condition that the contents of the application remained undisclosed to the public. This does not alter the fact that the division of the request into two independent sentences led to incorrect interpretation and that a more grammatically unambiguous formulation would not have led to the result of the decision under appeal.

5. The Receiving Section should have interpreted the appellant's letter in the way the Board has indicated. At the very least, the Receiving Section should have pointed out to the appellant that publication could not be stopped and should have enquired whether the appellant wished to proceed. A request for withdrawal should only be accepted without question if it is completely unqualified and unambiguous.

6. In this case, it is unnecessary to consider the complex questions of comparative national law raised in the Statement of Grounds filed in the appeal.

7. The application is still in existence, as it has never effectively been withdrawn. Insofar as the Decision under appeal includes a finding that the application has been withdrawn, it must be set aside.

8. As there is no basis for an application for further processing requiring payment of a fee for further processing, the fee paid for that purpose must be refunded.

9. No application has been made for reimbursement of the appeal fee in accordance with Rule 67 EPC, and it is not considered that the circumstances of the case would have justified such an order.

ORDER

For these reasons, it is decided that:

1. In so far as it held that the appellant's application for a European patent had been withdrawn, the Decision of the Receiving Section of the European Patent Office dated 28 November 1979 is set aside and it is declared that European patent application No. 79 100 230.6 is, and has always been, in existence.

2. It is ordered that the notification to the public in the European Patent Bulletin that European patent application No 79100230.6 has been withdrawn shall be corrected.

3. It is ordered that the fee for further processing shall be refunded to the appellant.