Withdrawals: Check and Check Again

Withdrawing a European application can be a useful way of getting back some fees or preventing anything further appearing on the public register for the application. It is, however, a final option and is generally irrevocable once done. It is always therefore slightly scary when a client asks for their European application to be withdrawn, just in case a mistake is made and either the wrong application is withdrawn or the applicant changes their mind or provides conflicting instructions. Withdrawing an application is also final in the sense that, once a withdrawal is requested, the application is no longer pending and a divisional cannot then be filed. 

One possible situation would be if instructions are received to file a divisional and to withdraw the current application so that a refund of the examination fee could be obtained and another attempt made at getting the invention examined. If the divisional was filed the day before the withdrawal request, all would be fine. If, however, the application was withdrawn first the divisional would not be validly filed. This is unfortunately exactly what happened for European application number 15750584.3, leading to decision J 5/19, one that issued last year but which I have only just noticed. The representative requested withdrawal of the application on 3 May 2018 to get a 50% refund of the examination fee, and filed a divisional application a few days later on 8 May 2018. The EPO duly refunded the examination fee and separately informed the representative that the divisional application could not be treated as a divisional because the parent application was no longer pending (Rule 36(1) EPC). The representative then immediately recognised their mistake and filed a request to retract the withdrawal. The examining division rejected this on the grounds that a withdrawal could not be retracted. An appeal was then filed against this decision, with the representative arguing that, because both the withdrawal and the divisional filing appeared on the register at the same time, third parties would not be led to believe that the subject matter had been entirely abandoned, and that they would have reason to suspect that the withdrawal was erroneous because the application had been withdrawn before the divisional was filed. 

The Board of Appeal outlined the conditions to be met for a withdrawal to be corrected, which were that:

(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). 

The Board noted that other decisions had added further conditions such as the error being due to an "excusable oversight" (J 4/03), which the Board in this case disagreed with because a correction under Rule 139 EPC did not require this, only that it should be evident that an error had been made and what the correction should be. This did not require the "due care" test that applied in cases of re-establishment. Also, according to the Enlarged Board decision in G 1/12, the conditions to be met did not include any reference to due care. 

To determine whether the withdrawal was due to a mistake, the Board considered that the intention of the applicant and not that of the representative was relevant. The applicant, via their US attorneys, had provided instructions to both file a divisional and to withdraw the application. The withdrawal prior to filing the divisional did not therefore reflect the applicant's true intention. The representative did seek correction without delay by making a request straight after being informed that the divisional was not validly filed. Finally, third parties would be made aware at the same time of the withdrawal and the divisional being filed, which could only lead to the inference of the divisional being validly filed or a mistake having been made. The Board therefore decided that the correction should be allowed, which they did by correcting the date of withdrawal to the day after the divisional was filed.

The lesson to be learned from this case should be fairly obvious, which is to check and double check before withdrawing an application, both to make sure that you have the correct application number and that you are following the client's instructions correctly. Things can be corrected, but going through a few years of appeal proceedings to find out is not a particularly stress-free way of finding this out. 

It Just Might Be A One-Shot Deal

On preparing a request to enter the European regional phase from an international application, one of the key questions to ask is whether the EPO was the international searching authority (ISA). If they were, the written opinion of the ISA, if it raises objections, will need to be addressed. The first opportunity to do this, if international examination was not requested, is in response to the communication under Rules 161 and 162 EPC, which issues shortly after European regional phase entry. Rule 161(1) EPC states that the applicant will be given an "opportunity to comment on the written opinion [...] and, where appropriate, invite him to correct any deficiencies". If no response is filed to such a communication, the application is deemed withdrawn.  

Frank Zappa's lovely white teeth. Source here.

Since it is well known that EPO examiners can get impatient with applicants that are viewed as not progressing their applications towards allowance, if a response at this stage does not move the application forward it can be considered by an examiner as the applicant losing one chance of addressing their objections. I therefore tend to advise applicants that a full response to the written opinion should be made either on regional phase entry or within the six month period given by the Rule 161/162 communication. If any objections remain these can be addressed at the examination stage, where the applicant will always get at least one shot at responding to such objections. 

An important point to note, however, is that examiners are not always reasonable. A safety net in any response filed at the EPO is therefore always advisable in the form of a standing request for oral proceedings under Article 116 EPC in the event the Examining Division (ED) is not minded to allow the application. The ED cannot then issue a decision under Article 97(2) to refuse the application until after issuing a summons to oral proceedings and, if necessary, holding oral proceedings at which a final decision is made. 

A tricky question is how many communications under Article 94(3) EPC can the ED issue before they take things further. Article 94(3) merely states that the applicant shall be invited "as often as necessary" to file observations and amend the application. The interpretation of this can vary widely. Sometimes the ED will string things out for several communications, particularly if the applicant is making efforts each time to resolve the objections. In some cases, however, and particularly if the applicant does not seem to be making much of an effort, the ED can issue a summons after just one communication, or even in some cases as a first communication. Of course, if a standing request for oral proceedings is not on file, this can instead be a decision to refuse, which can take the applicant by surprise. See an earlier post here for a cautionary tale of what can happen if an applicant does not take objections by the ED seriously and does not have such a request on file. 

All this is a lengthy preamble to a decision that has recently been issued by the EPO Boards of Appeal, T 17/22. This relates to an application that was a European regional phase entry where the EPO was the ISA. The application claimed an "oral care composition" (i.e. toothpaste), defined by various ingredients and their properties, including a whitening agent.  The international written opinion had raised various objections covering lack of novelty, inventive step and clarity. 

As usual, the Rule 161 /162 communication invited the applicant to respond to the objections raised and the applicant responded by making some amendments to the claims with supporting arguments. The examiner was not, however, satisfied with the amendments, which included amending claim 1 to incorporate features from claims 2 and 3. The examiner's problem with this, which was set out in a communication issued under Rule 137(4) and Article 94(3) EPC, was that both claims 2 and 3 as originally filed depended only on claim 1. The applicant responded with arguments as to why the combination of features was supported by the application as filed, requesting the examiner "to reconsider the opinion as expressed in the invitation". The examiner clearly still did not agree with the applicant and, instead of issuing an examination report, issued a decision to refuse the application, the grounds for which stated that the applicant "still has not provided a satisfactory basis and/or argument why the introduction of the combined teachings of claims 1-3 should be allowable", and that the applicant "has not requested oral proceedings and had the opportunity to comment and amend more than once and consequently the ED considers that the right to be heard under Article 113(1) is respected". This apparently took the applicant somewhat by surprise, and the decision was appealed, in part on the grounds that the ED had committed a substantial procedural violation because the right to be heard under Article 113(1) EPC had been violated. The applicant this time did request oral proceedings (although, when it comes to the Boards of Appeal, this does not always work).

In considering whether the ED had committed a substantial procedural violation, the Board noted that the expression "as often as necessary" in Article 94(3) required the ED to issue at least one substantive communication under Article 94(3) EPC before issuing a decision to refuse the application, unless a summons to oral proceedings could be issued. This was supported by the Guidelines C-III 5 and the case law in T 305/14. In the present case, the ED had issued two communications before the decision to refuse. Neither communication was, however, considered to be a substantive one under Article 94(3). The first one, under Rules 161 and 162 EPC, was an invitation that allowed the applicant to make voluntary amendments as well as dealing with objections in the international written opinion, while the second one, under Rule 137(4) EPC, was of a formal nature and also therefore not substantive. The ED had, in the Board's opinion, committed a substantial procedural violation by not issuing a communication under Article 94(3) EPC after the applicant's response. The application was therefore remitted to the ED for further prosecution and the appeal fee was reimbursed. 

Although this was, in the end, the correct result for this applicant, it provides another useful example of why it is always a good idea to have a request for oral proceedings on file. You never know when the examiner is going to be unreasonably difficult, and it is not necessarily good practice to find out that you were correct after all by going through a lengthy appeal procedure that could have been avoided by simply adding one line to your response in the first instance. 

A Prolific, and Persistent, Inventor

The name Michael Oluwaseun Bamidele has come up several times over the past few years while I have been reviewing decisions each month from the UK IPO for the CIPA Journal. The latest one (BL O/746/22), which issued just last week, prompted me to take a closer look at what Mr Bamidele has been doing. The latest decision is one of eight issued since 2014 relating to UK patent applications filed and prosecuted by Mr Bamidele. All but one of these decisions, including the latest one, unfortunately resulted in refusal. You might think that this would not demonstrate a particularly good track record for an inventor, but it turns out Mr Bamidele has managed to get five applications granted so far by the IPO out of a total of 16 filed since 2010. The technology fields for these patents are quite diverse, covering cellular communication (GB2476705B), object location (GB2476850B), domestic waste recycling (GB2476937B), holographic projectors (GB2477508B) and a human-powered electrical power supply (GB2523853B). 

According to his LinkedIn profile, Mr Bamidele is the Founder and Product Owner of Dorex Technologies Ltd, which claims on its website to be "a UK based company offering unique solutions and a variety of services". Mr Bamidele introduces his company in the following video. 

Another video below from Mr Bamidele describes a "Green Hover Vehicle Solution", which is described in GB2552190A. The vehicle apparently removes the need for an internal combustion engine by using magnetic repulsion to levitate over a road surface and air turbines to provide propulsion. Figure 1 of this revolutionary patent application is reproduced below. 

Mr Bamidele and his company, which according to him is worth £600 million (based on a £15M investment for 2.5% of the company - see video above), appear to be very much underappreciated. His achievements in obtaining patents at the UK IPO, apparently entirely without the assistance of a patent attorney, are outstanding. I very much look forward to seeing what he achieves in the future. Perhaps we have another Arthur Pedrick in the making, although such a comparison at this early stage in Mr Bamidele's patenting career may be slightly unfair, especially since Mr Bamidele does not appear to own a cat.