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 It is always therefore slightly scary when a client asks for their European application to be withdrawn, just in case a mistake is made and either the wrong application is withdrawn or the applicant changes their mind or provides conflicting instructions.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 If, however, the application was withdrawn first the divisional would not be validly filed.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and that they would have reason to suspect that the withdrawal was erroneous because the application had been withdrawn before the divisional was filed.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.
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