J 5/19: Correction of error in withdrawing an application

“Protecting the expectations of third parties rather than sanctioning the applicant for its negligence is the primary consideration” – re-dating the withdrawal of an application in order to deem a divisional application validly filed.

In J 5/19, the EPO’s Legal Board of Appeal took a relatively lenient decision on 21 January 2021 in favour of an applicant regarding an erroneous act by their representative. The European representative had received two emails from a US attorney representing the applicant, the first providing instructions to file a divisional application prior to the deadline for filing a response to a Communication pursuant to Article 94(3) EPC issued with respect to the parent application. The second email requested the parent application be withdrawn or abandoned. However, the representative performed these acts in the wrong order – the letter withdrawing the parent application was dated 3 May 2018 and the divisional application was filed on 8 May 2018. Both of these acts appeared on the register on the same date, 11 May 2018.

A request to ‘retract’ the withdrawal of the application, citing Rule 139 EPC, was filed on 29 May 2018. The representative argued that the filing of the withdrawal was a mistake and the true intention had been to file a divisional application and subsequently withdraw the parent. The Examining Division rejected this request on the basis that “according to the case law of the boards of appeal, a withdrawal could not be retracted once it had been entered into the register”.

However, the Legal Board of Appeal ultimately overturned this decision, stating that the withdrawal of the application would be corrected so as to be dated between 9 May and 20 May 2018 – i.e. after the filing of the divisional application but prior to the deadline to file a response to the Communication under Article 94(3) EPC issued with respect to the parent.

In forming this decision, the Board held that three cumulative conditions had to be met for the request to be allowed (referencing G 1/12):

1. The withdrawal did not reflect the intention of the applicant – the Board makes an important distinction between the assessment of the intentions of the applicant and those of the representative, with the former being the relevant factor in the situation at hand.
2. There was no undue delay in seeking the correction – the request to retract was filed only one week after a communication indicating that the second application could not be treated as a divisional application.
3. Third parties viewing the file would have had reason to suspect that the withdrawal was erroneous – in other words, the legal certainty of third parties was not impacted significantly, given that third parties could practice an invention after publication of a (non-erroneous) withdrawal.

With respect to point iii., the Board reasoned that as the register indicated that a divisional application had been filed, third parties would understand that the subject matter of the original application could still be pursued through the divisional in one of two scenarios; either the withdrawal was an error (correctable under Rule 139 EPC) or the divisional application was validly filed (under Article 76 EPC). It was considered that a third party could not reasonably rely on either scenario to indicate that the invention was no longer the subject of a pending application, and so the Board held that, in the present case, each of the above conditions had been met.

It is worth noting that, an earlier request of the applicant to reinstate the parent application, was not considered allowable, as this request did not represent the intention of the applicant.