Brief outline of the case
On 28.09.2021, the applicant’s professional representative stated in a letter to the board that the applicant withdrew the pending appeal.
On 29.09.2021, the applicant’s representative withdrew the “request” to withdraw the appeal, explaining that the request for withdrawal was based on an erroneous interpretation of the client’s instructions.
On 01.10.2021 the Registrar of the Board informed the applicant of the closure of the appeal proceedings in a standard communication.
On 05.10.2021, the applicant/appellant inter alia requested correction of its error under R 139. It explained how it came to the wrongly filed withdrawal and put forward that the “correction” (withdrawal of the withdrawal) was promptly filed on 29.09.2021 before any confirmation of termination of the appeal proceedings from the Board was made public.
On 05.10.2021 the Registrar of the Board informed the applicant/appellant in a communication (EPO Form 3004) as follows: “Following the appellant’s withdrawal of the appeal requested with submission dated 28.09.2021, the appeal proceedings before the Board 3.5.03 has been terminated. Consequently, this Board is no longer competent to deal with that case.”
On 15.11.2021, the applicant/appellant referred to the communications of the Registrar dated 01. and 05.10.2021 and requested a reasoned decision “according to Rule 112 EPC or any other applicable provision”. No such decision was issued.
The EBA set aside the decision of the BA, remitted the case to the board for reopening of the procedure and ordered reimbursement of the fee for Petition for review.
The EBA’s reasoning
The EBA found that the board committed a substantial procedural violation by closing the appeal procedure without deciding on the request for correction under R 139.
The request for correction, i.e. the retraction of the withdrawal of the appeal filed after its withdrawal is a relevant request within the meaning of R 104(b) for the purposes of Art 112a(2,d).
According to the case law of the BA on R 139, the success of such a request cannot be ruled out a priori, and if the request is successful, a decision on the merits of the appeal would be possible.
The question whether this also constitutes a violation of Art 113 that would fall under Article 112a (2,c) was left open.
Errare humanum est!
An error is always possible and the prompt reaction of applicant’s representative, on the next day, should be emphasised. Although it was not filed as a correction under R 139, such a request was implicit. The prompt reaction made clear that the applicant’s true intention was not to drop the case but to continue with the procedure and continue the appeal procedure.
As the public was not yet informed of the termination of the appeal procedure, the board could have withdrawn its first communication.
It might well be that the request under R 139 crossed with the communication of the board of the same day, at least the prompt reaction of applicant’s representative should have rang a bell at the board.
An appeal closed without having to take a formal decision, is always good for the production statistic.
In its eagerness to close the appeal procedure by two communications on 01.10.2021 and 05.10.2021, the board also committed a mistake. One could apply to the board the second part of the Latin proverb: sed perseverare diabolicum.
It is interesting to note that the EBA carefully avoided any decision whether not taking into account applicant’s request under R 139 constitutes a violation of Art 113. I am inclined to answer this question in the positive.
The reopening might not necessarily lead to examination of the appeal against the refusal decision of the ED.
In line with T 379/10, when resuming the appeal procedure following a decision in accordance with Article 112a(5), the reopened appeal procedure is restricted to the rectification of the serious deficiency identified in the review decision.
In the present case the board will thus first only decide upon the request under R 139.
If this request is not deemed allowable, the closure of the procedure will be definitive.
It is only if the request under R 139 is allowable, that the appeal will be discussed as to its merits.
196 petitions for review have been filed and 41 are still pending.
15 have been considered admissible but not allowable
34 have been considered clearly not admissible
110 have been considered clearly not allowable
In 10 cases reopening of the appeal procedure has been ordered and the fee reimbursed.
From those 10, 7 decisions have been upheld after reopening.
Only 2 decisions differed from the original decision of the board, 1 in examination (refusal to grant), 1 in opposition (revocation to maintenance in amended form).