Payment of Patent Maintenance Fees Merely Mechanical
| DOI | 10.1093/jiplp/jpp096 |
| Date | 02 July 2009 |
| Pages | 529-532 |
| Year | 2009 |
| Published By | Oxford University Press |
Boards of Appeal had the competence to check the com-
pliance of the Examining Division’s decision to correct its
decision with the requirements of Rule 89 EPC 1973.
The Board did not follow the decision in T 268/02. Its
main reasons for not doing so were that:
†The non-conformity with the provision of Rule 89 EPC
1973 of an examining division’s decision correcting the
decision for grant is not one of the grounds of opposi-
tion under Article 100 EPC 1973 [point 11].
†...A correction under Rule 89 EPC 1973 has a retro-
spective effect ...and the incorrect grant decision has
been replaced retrospectively by the corrected version
...a change in a granted claim which arises by way of
a correction decision issued by the examining division
does not amount to an amendment of the claims after
the grant of the European patent [point 13].
†In the context of the EPC, however, the opposition div-
ision has no appellate jurisdiction to set aside a
decision of the examining division [point 15].
†A decision can be reversed, however, only as the conse-
quence of an appeal filed against it, not of an opposi-
tion [point 16].
†...the principle of equal treatment does not mean that
procedural rights given to the applicant or patent pro-
prietor in examination proceedings (or examination
appeal proceedings) have to be equally provided for the
opponent in opposition proceedings (or opposition
appeal proceedings), since both proceedings are inde-
pendent from each other [point 18].
At point 19, the Board expressed some sympathy for the
effect that belated corrections might have on third parties:
There is indeed an unavoidable risk that a third party
relying on the granted patent in the original version may
have started to use the invention and that the use would
not constitute infringement of the patent in the original
version, but of the patent as corrected ...in the absence of
specific provisions in the European Patent Convention, the
solution of any problem of third party rights must be left
to the national courts of competent jurisdiction.
The Board also rejected the respondent– opponent’s
arguments that the Opposition Division could review the
correction decision of the Examining Division that were
based upon national legal provisions.
The Board’s conclusion at point 22 was:
...the opposition division in opposition proceedings has
no inherent competence to review the correction decision
taken by the examining division. Thus the opposition div-
ision would act ultra vires if it were to verify whether the
correction of the grant decision of the examining division
fulfilled the requirements of Rule 89 EPC 1973. The same
applies to the board of appeal in opposition appeal pro-
ceedings.
The Board also refused to refer questions to the Enlarged
Board of Appeal arising from the divergent case law (with
T 268/02) by exercising its discretion not to do so and
upon the basis that this was not an important question of
law as: ‘...cases in which a correction of a grant decision
is an issue in opposition or opposition appeal proceedings
will occur only extremely infrequently, so that the number
of those who might be negatively affected provides no
reason for a referral’ [point 27].
Practical significance
As stated by the Board, the factual situation in this case
rarely occurs. Nevertheless, should it occur, it may
provide the patentee with an interesting tactic to use in
appeal proceedings.
David Rogers
Legal Member, Boards of Appeal
European Patent Office
Munich, Germany
Email: drogers@epo.org
doi:10.1093/jiplp/jpp102
Advance Access Publication 2 July 2009
BPayment of patent maintenance fees
merely mechanical
Sarnoff Corp. v Canada (Attorney General), 2008 FC 712,
6 June 2008
‘For unexplained motivations’, the Canadian Patent
Office instituted abandonment proceedings against
Sarnoff Corporation because the patent maintenance
fees—which were always paid on time—were paid by
an ‘improper person’ according to the Commissioner of
Patents; however, on judicial review, Mr Justice Roger
Hughes of the Federal Court of Canada held that it
would clearly be a frustration of the legislative intent of
the Patent Act if ‘non-patent’ matters always required
the specialist intervention of patent agents and, in such
routine and clerical matters, payment of fees can be
achieved through ‘any’ agent acting on behalf of the
principal, provided they are so authorized.
Legal context
Section 6 (1) of the Patent Rules provides that the
Commissioner of Patents shall only correspond with an
‘authorized correspondent’ with respect to the mainten-
ance of a patent application. And, with respect to patent
rights assigned to corporations (or others), an authorized
correspondent is defined in section 2 of the Patent Rules
as either a patent agent appointed by the corporate
Journal of Intellectual Property Law & Practice, 2009, Vol. 4, No. 8 CURRENT INTELLIGENCE 529
Get this document and AI-powered insights with a free trial of vLex and Vincent AI
Get Started for FreeStart Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting
Start Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting
Start Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting
Start Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting
Start Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting