“No one’s perfect” the saying goes, “that’s why pencils have erasers”. The equivalent saying used by the forgiving folk at the European Patent Office (EPO) would be: “no one’s perfect, that’s why the European Patent Convention allows correction of mistakes in any document filed under Rule 139”. However, the EPO’s case law on corrections generally deals with mistakes made by a representative. What happens when the mistake is made by the applicant when instructing their representative in the first place?
Recent EPO Board of Appeal case T 0610/11 gives some guidance on this point and it seems that the EPO is only forgiving up to a point. The news is not good for applicants. The view of this particular Board is that a mistake in a procedural declaration, such as the withdrawal of an application, can only be corrected if the mistake was made by the representative.
In this particular case the representative withdrew an appeal filed against a decision by the EPO Examining Division to refuse an application ahead of scheduled oral proceedings. The withdrawal was filed on the basis of instructions from the applicant, who had decided to incur no further costs on the application. The problem was that, as it turns out, this decision was due to an internal miscommunication within the applicant’s company. The decision maker had been unaware that the application was part of a potential transaction and it should have been maintained.
The Board looked at a variety of earlier case law on the subject of corrections. They were happy that the EPC permitted the correction of a procedural declaration, such as a request to withdraw an appeal. What they were unhappy with, in this case, was that the representative did not actually make an error when withdrawing the appeal. The representative was following their instructions correctly, it just turned out that those instructions did not represent the applicant’s true intention.
Other Boards of Appeal have recognised that a mistake can exist in a document if it does not express the true intention of the person on whose behalf it was filed. In other words, the true intention of a represented party is decisive, and declarations made before the EPO not in line with those true intentions can be corrected. But this particular Board focussed on the fact that the earlier decisions in this thread of case law concerned situations in which the representative made a mistake when trying to follow the applicant’s intended instructions. The earlier cases did not, they felt, deal with a situation where an explicit instruction given to a representative was correctly executed but later on turned out not to be in line with the party’s true intentions.
Ultimately, the Board concluded that the correction of a substantial procedural act such as the withdrawal of an appeal must remain an exception, and that mistakes in such procedural declarations can be corrected only if the mistake was made by the representative.
This decision certainly does not make it any easier for an applicant to correct mistakes in documents filed at the EPO, and reinforces how difficult it can be to correct what some might consider an honest mistake. It is something to be aware of, particularly when instructing your representative to take an action as final as withdrawing an application. In such circumstances it would be a good idea to make doubly sure that everyone else in your organisation agrees.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.