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 It is always therefore slightly scary when a client asks for their European application to be withdrawn, just in case a mistake is made and either the wrong application is withdrawn or the applicant changes their mind or provides conflicting instructions.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 If, however, the application was withdrawn first the divisional would not be validly filed.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and that they would have reason to suspect that the withdrawal was erroneous because the application had been withdrawn before the divisional was filed.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

Corrections and Conflicts of Interest

Rule 7 of the IPReg Rules of Conduct, which applies to Chartered Patent Attorneys in the UK, states (in part) that "A regulated person must not act where his interests conflict with those of a client or of a former client". There is a proviso that allows such a conflict to continue, provided "all of the parties have given their informed consent in writing", but a regulated person "must, however, refuse to act on behalf of conflicting or potentially conflicting parties in contentious matters, in circumstances where the regulated person's actions would not be seen to be neutral or where accepting instructions from both parties would risk a breach of Rule 5 [carrying out professional work in a timely manner and with proper regard for standards of professional service and client care] or Rule 8 [keeping the affairs of clients and former clients confidential] cannot be observed".

Bearing the above in mind, I will set out a possible situation. Let's say you are a patent attorney doing a typical task of engaging a new client (Mr S), who wants to get a UK patent application prepared and filed. You work with Mr S and get the application prepared and filed in November 2017, filing it in his name without paying any fees. So far so good. All seems to be in order, and you wait until near the time for sorting the fees out by the first anniversary. However, ten months afterwards in September 2018 you find out that your client has decided to engage the services of a different patent attorney by filing a Form 51 himself. While unusual, this is not unheard of and Mr S is perfectly within his rights. You then, for the avoidance of doubt, on 17 September 2018 confirm to the UK IPO that you withdraw your representation. Normally that would be an end of it as far as you are concerned. While you might be disappointed to lose your client to a bigger firm of patent attorneys, there is nothing you can do about it. However, shortly after withdrawing your representation you are contacted by Mr H, who says that he worked with Mr S in developing the invention you prepared and filed the patent application for. Mr H is in an ongoing dispute with Mr S about the invention and the company Mr S has set up to commercialise it, and there is a disagreement about who should be named as inventor and applicant on the application. Mr H seeks your advice on what you can do to help him with this, now that you no longer represent Mr S.

At this point, even without having to consult the IPReg Rules of Conduct, you should of course inform Mr H that you unfortunately cannot act for him because this would conflict with the interests of Mr S, your former client and doing so would be against the rules. You advise Mr H that there are plenty of other patent attorneys he can choose from, pointing him in the direction of the register of patent attorneys on the IPReg website. Although unhappy not to be able to engage your services because you already have a good knowledge of the invention, Mr H would then go off to engage someone else and you can then get on with other less contentious things. 

However, this is not what actually happens. Instead, three days after confirming your withdrawal of representation to the UK IPO, you write to the IPO seeking a correction under Section 117 to the applicant, which you had previously identified as Mr S on filing the application, asking that Mr H is also named as applicant and inventor. After some head-scratching, the IPO informs the new representative about the request for correction. Unsurprisingly, the new representative objects and the IPO then decides to refuse the request, suggesting that a reference under Section 8 (entitlement) should be filed to resolve any dispute over who should be identified as inventor and applicant. You nevertheless persist in arguing that a correction under Section 117 should be allowed. The new representative, of course, disagrees and the dispute eventually results in a hearing being held to resolve the issue. In the view of the hearing officer, Section 117 cannot be used to circumvent the more specific legal provisions of Sections 8 and 13, in line with the well known principle generalia specialibus non derogant (the general cannot overrule the specific). You argue that you knew that Mr H was a co-inventor at the time of filing the application but failed to enter his name in error. The hearing officer, however, does not believe you because the error was not the result of a single isolated oversight on Form 1 but also involved stating that all the applicants were inventors and that there were no other inventors. In other words, in the hearing officer's view, you positively affirmed that there were no other inventors when filing the application, making the possibility of this being an error very unlikely. The error was also not noticed until nearly a year afterwards, and only shortly after you withdrew your representation. The hearing officer, unsurprisingly, refuses your request for correction. 

What I am wondering about now is not whether the decision to refuse the correction was correct, as it was clearly a complete non-starter, but instead what position you, as a regulated patent attorney, are now in. Have you acted in accordance with the Rules of Conduct? If not, what should happen? As you might have guessed by now, the situation is not hypothetical but actually happened*. The case can be easily found by those who know where to look.

*UPDATE 17/9/20: Based on information I have received since the above post was published, the hypothetical case could have been slightly different to how I have put it, although given that the actual details are not on the public record it not possible to tell. Let's suppose instead that you were acting for both Mr H and Mr S originally, being instructed principally by Mr S. After the application was filed, Mr S got involved in a dispute with Mr H and, being named as sole applicant, took the patent application with him to the new representative. Does this alter the conclusion about whether there was a conflict?

UPDATE 18/9/20: Following several discussions about how the scenario might possibly be interpreted as not resulting in a conflict, one possibility raised is that your client was originally, and continued to be, Mr H. It might then be argued that continuing to represent Mr H would not be a conflict, since he was always your client and he was the one who paid the bills, while Mr S was only the inventor and applicant. This would require Rule 7 to be interpreted to exclude Mr S from being your client, thereby excluding you from being conflicted. Unfortunately for you, this runs against the definition of "client" provided in Rule 1, which is given as "the principal on whose behalf a regulated person acts as agent and includes any person for whom the regulated person is address for service for any right regardless of the nature of any current relationship". Mr S was the named applicant and you were identified as the address for service in communications from the IPO before Mr S took representation elsewhere. Mr S was therefore a client within the meaning of the rules, becoming a former client afterwards, whether or not Mr H was as well. I wonder if anyone can think of a plausible way around this. 

T 1785/15 - If you're reading this it's too late

The end of the examination procedure at the EPO starts with a communication under Rule 71(3) EPC, which informs the applicant that the examining division is prepared to grant the application on the basis of an accompanying version of the application text. The text intended for grant (a.k.a. the druckexemplar) is typically an assembly of the originally filed application, together with any amendments the applicant has made along the way, and usually with further amendments made by the examiner. Examiners often make amendments to tidy up the application so it complies with the EPC, such as inserting a characterising clause to comply with Rule 43(1)(b), mentioning a relevant document to comply with Rule 42(1)(b) or amending the description to conform with the claims (Article 84 EPC). Normally the examiner's amendments are fairly easy to identify and a decision on whether to approve them is straightforward. If any are not acceptable, for example if the examiner gets something wrong, it is always possible to respond with a request under Rule 71(6) to have them changed. If the changes are minor and unlikely to be a problem, the right to receive a further communication under Rule 71(3) can be waived, and the application can then go on to get granted without further ado.

All this is straightforward and well known, at least to European practitioners. An important point to note is that the communication under Rule 71(3) is the applicant's last chance to get things right before the application gets granted. Approving the text for grant is therefore not something to be taken lightly. Examiners, applicants and even patent attorneys can make mistakes and this is the opportunity to correct any that might have been made. An applicant that responds to a Rule 71(3) communication without first checking carefully that everything is how they want it to be is running the risk of not getting what they want and not being able to do anything about it afterwards. As the Enlarged Board decision of G 1/10 made clear, errors made by the applicant during prosecution cannot be corrected after grant, which can prove fatal to the resulting patent. Possibly more importantly, errors made by the examiner that have been approved by the applicant at the Rule 71(3) stage also cannot be corrected after grant. As stated in G 1/10, the responsibility for any errors remaining in the text after grant is the applicant's alone, whether the error was made by them or by the examining division.

A recent decision, T 1785/15, has emphasised the need to be careful when considering whether to approve the text for grant. The application, 09756869.5, entered the European regional phase in 2012 and the applicant made some amendments to the claims the following year in response to the international written opinion. The examining division then issued a communication under Rule 71(3) in February 2015 with a clean and marked-up version of the text. Substantial changes were made to the claims, together with a few formal changes to the description. The applicant then paid the grant fee and filed translations of the claims into French and German within the usual four month period. Only after a decision to grant was issued did the applicant point out to the examiner that the claims contained errors. By that point, however, it was too late to do anything about it. The applicant's attorney, who somehow got the impression from the examiner that the decision to grant could be appealed, filed an appeal against the decision to grant.

The Board first pointed out that appeals could be filed by any person adversely affected by a decision (Article 107 EPC). By approving the text for grant, the applicant had signalled its approval, leaving no room for the notion that they were adversely affected by the decision to grant. Rule 140 EPC allowed obvious mistakes in decisions to be corrected but, as G 1/10 set out, this was not available for correcting the text after approval by the applicant. The applicant's request for a correction was therefore inadmissible. Normally this would not mean that the appeal fee was refunded, since the applicant should have known that the appeal was hopeless. They had, however, been given the impression that an appeal could be validly filed after speaking with the examiner. The Board therefore decided that the appeal fee could be refunded, even though the appeal was rejected as inadmissible.

This case is another warning, as if it were needed, that the communication under Rule 71(3) should be taken very seriously and the text for grant should be carefully checked before it is approved. The responsibility for this is with the applicant, but applicants are often unaware of the importance of getting things right at this stage and may simply wave an application through, not wanting to spend any more time and money than necessary to get the application granted. The responsibility is then in practice down to the patent attorney, who should always carefully check the text for grant and point out anything that might be a problem, even if this means adding a bit more to the bill, or having to write off some time. Obvious errors or mistakes can then be spotted and corrected before it becomes too late.

Virgin v Premium - yet another chapter

The dispute between Virgin Atlantic Airways and Premium Aircraft Interiors has been rattling along for a while now, and has been keeping various patent attorneys, solicitors, barristers and bloggers quite busy.  Other chapters of the story involve decisions from the High Court and the Court of Appeal (a good starting point if you are interested in finding out more is this IPKat post), as well as proceedings before the EPO.  Even the Supreme Court will apparently be having a go at the matter, having granted Premium leave to appeal earlier this year.

The story relates to European patent EP1495908 concerning an aircraft seating system (right).  The patent was granted in 2007 to Virgin and designated the UK, along with various other European countries. The patent was opposed by Cathay Pacific, Airbus and Premium. The patent survived the opposition and subsequent appeal proceedings, although in an amended form. A decision to maintain the patent as amended was issued yesterday following the decision by the appeal board in T 1259/09, and a B2 publication is due to appear soon.

One argument raised by the opponents during the EPO proceedings was that the European patent should not have been granted with a GB designation, because the request for grant included the following statement (click for a larger version):

The examining division had nevertheless allowed the application to proceed to grant with the GB designation intact.  Both the opposition division and the appeal board concluded that there was nothing they could do, since the ability to correct any such errors was only in the remit of the examining division, and since Premium was not a party to the proceedings before the examining division and not entitled to appeal.  The GB designation therefore stood. There was nothing further the opponents could do, so the only options left for them was to fight the patent in each country, which at least Premium continues to do.

Premium have now had another go at trying to get the GB designation removed, this time through the unusual step of applying for a correction under Rule 50 of the UK Patents Rules 2007.  A decision relating to this request, which resulted in a hearing at the IPO, has now been issued: BL O/281/11.  Premium argued that, since the UK was expressly excluded as a designated state by the applicant, no European patent (UK) ever existed and therefore the UK register should be corrected to reflect this.  According to Premium, nothing that Virgin or the EPO did subsequently could change the fact that there had never been a GB designation, and any suggestion that there was an EP(UK) was an error that should be corrected insofar as it appeared on the UK register.  They put forward the case of Arrow v Merck [2007] EWHC 1900 (Pat) in support of their argument, as this related to a correction being made to remove a GB designation following grant by the EPO. However, as the hearing officer noted, in that case the EPO had realised there had been a mistake and issued a corrigendum afterwards.

The hearing office pointed out that the difference in this case was that the EPO had not considered there was anything it could or would do, even if it considered that there had been a mistake.  For the comptroller to come to a conclusion that any error had been made that could then be corrected, it would be necessary to look afresh at the facts considered previously by the EPO examining division and effectively come to a view on the validity of what had been done.  This would, the hearing officer considered, amount to a review of a determination by the EPO which, particularly in the context of an ex parte request for correction of the register, was not open to him. In contrast to the provisions governing revocation on patentability grounds, the comptroller had been given no power to review decisions made by the EPO, and the hearing officer could not see how he could have any sort of power to do so under the UK Act and Rules. Because there was no basis on which a correction could be made, the request was refused.