European Union: Unintentional Abandonment Of Euro-PCT Applications?

Last Updated: 19 April 2016
Article by Julian Asquith

"The cautious seldom err." Confucius (551-479 BC)

This article discusses the risks of claims being deemed abandoned under EPC Rule 162(4) as a result of reducing the number of claims on filing a Euro-PCT application. The absence of a decision on the correct interpretation of Rule 162(4) leaves room for legal uncertainty. Different interpretations of Rule 162(4) are discussed, together with some proposed amendments to Rule 162(4).

The problem

On filing a Euro-PCT application it is common practice to reduce the number of claims to 15, thus avoiding the payment of claims fees (235 and 580 Euros for each claim in excess of 15 and 50 respectively).
 
But how cautious should a professional representative be when performing this seemingly straightforward step?

Rule 162(4) states: "Where a claims fee is not paid in due time, the claim concerned shall be deemed to be abandoned."

This rule seems to be open to at least two possible interpretations, as follows:

Interpretation 1
Claims which are present in the application at the time when claims fees are finally due for payment shall be deemed abandoned if claims fees are not paid for those claims.

Interpretation 2
Claims which are present in the application at any time before claims fees are finally due for payment shall be deemed abandoned if claims fees are not paid for those claims.

As far as the author is aware, there is no decision which conclusively determines whether Interpretation 1 or 2 is correct.

The most straightforward interpretation of Rule 162(4) would appear to be Interpretation 1, on the grounds that if claims have been deleted before the final deadline for payment of claims fees then no claims fees are "due" in respect of the deleted claims, and therefore it can be argued that abandonment of the deleted claims should not arise.

However, in support of Interpretation 2, it could be argued that the fact that a claim has been deleted is irrelevant, as Rule 162(4) says nothing about when the claim must be present in the application. Rule 162(4) can be interpreted as meaning that any claim for which a claims fee is not paid shall be deemed to be abandoned, regardless of whether the claim has been deleted or not.

Furthermore, abandonment is a serious matter. The consequences of abandonment in the present scenario are set out in Guideline E-VIII, 2.1.3, which states:

"Where a claims fee has not been paid in time, the claim concerned is deemed to be abandoned. Features of a claim deemed to have been abandoned pursuant to Rule 162(4) and which are not otherwise to be found in the description or drawings cannot subsequently be reintroduced into the application and, in particular, into the claims."

Some possible solutions

In an effort to exercise caution, some professional representatives have suggested adopting one or more of the following strategies when reducing the number of claims on filing a Euro-PCT application.

  1. Insert into the description statements of invention corresponding with the wording of any deleted claims.Combine a number of dependent claims into a single dependent claim containing alternative clauses.
  2. For example, a dependent claim specifying that a feature is red and another dependent claim specifying that a feature is blue could be combined into a single dependent claim specifying that the feature is red or blue.
  3. Add to the description a statement which makes clear that the description includes the subject-matter of all of the claims contained in the application as originally filed under the PCT.

The intention of such strategies is either to avoid the possibility of a claim being deemed abandoned under Rule 164(2), or to ensure that the claim could be reinstated if it were to be deemed abandoned.

However, the employment of such strategies is neither convenient for applicants nor conducive to the efficiency of the patent system as a whole, and we will therefore consider below what changes could be made to Rule 162(4) to avoid uncertainty. However, before doing so, let us look more closely at interpretations 1 and 2.

Interpretations of Rule 162(4)

Let us consider whether opportunities to make amendments before the deadline for payment of claims fees can teach us anything about the interpretation of Rule 162(4).

PCT Article 41 states, "The applicant shall be given the opportunity to amend the claims, the description, and the drawings, before each elected Office within the prescribed time limit." As a result, in the case of a Euro-PCT application the applicant can file voluntary amendments before the 31 month deadline. There is a further opportunity to amend within the 6 month period set in the communication under Rules 161 and 162.

Imagine an international application in which claim 1 is for feature A and claim 16 is for feature A + B. On filing a Euro-PCT application, if claim 16 were deleted to avoid payment of a claims fee, then under Interpretation 2 above claim 16 would be deemed abandoned. However, claim 16 lies wholly within the scope of claim 1, and therefore, for logical consistency, we have to ask whether part of the scope of claim 1 would also have to be deemed abandoned. Suddenly issues relating to splitting a claim into two notional parts, reminiscent of those discussed in the recent referral to the Enlarged Board of Appeal in T 0557/14 (relating to "poisonous divisionals"), start to come to mind.

Further difficulties with Interpretation 2 can be identified by considering an international application in which the claims are amended many times either during international examination or in voluntary amendments before the EPO. Claims could be added, amended and deleted many times, eventually arriving at a set of 15 claims. On entry to the European regional phase no claims fees would be due, but under Interpretation 2 exactly which of the earlier claims would be deemed abandoned through failure to pay claims fees for those claims?

Consideration of problems of this sort allow one to argue that Interpretation 1 appears more logical than Interpretation 2. It also seems likely that if the EPO were inclined to follow Interpretation 2 there would, by now, have been a decision on the correct interpretation of Rule 162(4). However, in the absence of any actual decision on this point, total certainty on the correct interpretation of Rule 162(4) would appear not to be available.

The view from Directorate Patent Law / Dir. 5.2.1

European Patent Office

In an effort to clarify these issues the author entered into some correspondence with Directorate Patent Law at the EPO during 2014. Directorate Patent Law has kindly given permission for their opinion to be reproduced here, provided it is made clear that their opinion was given in reply to a general enquiry and that the information is not binding on the EPO in an individual case.

On this basis, the relevant portion of the opinion from Directorate Patent Law (abridged by the author) is reproduced below:

"... final assessment whether all claims fees due have been paid will (only) be made upon expiry of the six month additional period under Rule 162(2) 1st sentence EPC. Where the number of claims changes as a consequence of an amendment filed before expiry of this additional period (e.g. due to a deletion of claims), these amended claims will be the basis for calculating the amount of the claims fees to be paid (Rule 162(2) 2nd sentence EPC). The expiry of this additional period is decisive for the question of a deemed abandonment of claims under Rule 162(4) EPC in the (amended) application for which no claims fee was paid [emphasis added by the author]. The term "due time" in Rule 162(4) EPC, therefore, refers not to the period under Rules 159(1), 162(1) EPC, but to the additional period under Rule 162(2) EPC.

The consequences thereof can be clarified by the following examples:

(A) An international application comprises claims 1-25. Before expiry of the 31-month period, claims 21-25 are deleted (i.e. an amended set containing 20 claims is filed within the 31-month period) and five claims fees (for claims 16-20) are paid.

(B) An international application comprises claims 1-25. After expiry of the 31-month period, but before expiry of the additional period under Rule 162(2) EPC, claims 21-25 are deleted (i.e. an amended set containing 20 claims is filed) and five claims fees (for claims 16-20) are paid.

In both examples (A) and (B) claims 21-25 are not deemed to be abandoned under Rule 162(4) EPC (note, however, the last paragraph below) because at the time of assessment under Rule 162(4) EPC (date of expiry of the additional period under Rule 162(2) EPC) there are no claims in the application documents for which claims fees must be paid and have not been paid.

By contrast, claims are deemed to be abandoned under Rule 162(4) EPC in the following example:

(C) An international application comprises claims 1-25. Before expiry of the additional period under Rule 162(2) EPC, no amendments are made and five claims fees (for claims 16-20) are paid. Claims 21-25, for which claims fees have not been paid within the period under Rule 162(2) EPC, are deemed to be abandoned under Rule 162(4) EPC, which will be communicated under Rule 112(1) EPC."

Suggested amendments to Rule 162(4)

It is helpful to set out the full wording of Rule 162.

Rule 162
Claims incurring fees

(1) If the application documents on which the European grant procedure is to be based comprise more than fifteen claims, claims fees shall be paid for the sixteenth and each subsequent claim as laid down in the Rules relating to Fees within the period under Rule 159, paragraph 1.

(2) If the claims fees are not paid in due time, they may still be paid within six months from a communication concerning the failure to observe the time limit. If within this period amended claims are filed, the claims fees due shall be computed on the basis of such amended claims.

(3) Any claims fees paid within the period under paragraph 1 and in excess of those due under paragraph 2, second sentence, shall be refunded.

(4) Where a claims fee is not paid in due time, the claim concerned shall be deemed to be abandoned.

In the author's submission, the legal uncertainty described above could be removed by amending Rule 162(4) in the following way, to correspond with Interpretation 1 above.

Rule 162(4): In respect of any claim which is present in the application at the end of the period under paragraph 2, where a claims fee is not paid in due time, the claim concerned shall be deemed to be abandoned.

This would make clear that only claims which were left in the application at the time when claims fees are finally due are deemed abandoned if the corresponding claims fees are not paid.

However, one might ask why Rule 162(4) refers to abandonment at all. The case law relating to abandonment in general indicates the need to take into account the "real intention" of the party (T 910/92), and the importance of "taking into account all the circumstances" (J 13/84). It does not follow that because an applicant has failed to pay claims fees for certain claims that the applicant wishes to abandon those claims. Therefore, in referring to abandonment, Rule 162(4) seems at odds with the tenor and spirit of decided case law on the subject of abandonment generally.

Furthermore, Rule 162(4) also seems rather at odds with the more relaxed provisions of Rule 164, which took effect from 1 November 2014, according to which an applicant for a Euro-PCT application now enjoys the freedom to pay a further search fee for any invention not yet searched. If the applicant chooses not to pay a further search fee the corresponding claims are not searched, but they may still be pursued in a divisional application. In contrast, an applicant who does not pay claims fees under Rule 162(4) runs the risk of abandonment of those claims, including the risk (if the claims are not otherwise supported by the description) of not being able to pursue a divisional application for those claims (Guideline C-IX, 1.3).

For these reasons it is submitted that Rule 164(2) could be amended in the following way for greater consistency with both decided case law and new Rule 164.

Rule 162(4): In respect of any claim which is present in the application at the end of the period under paragraph 2, where a claims fee is not paid in due time, the claim concerned shall be deemed to be abandoned may not be pursued further in the application.

This would allow an applicant to file a divisional application for such claims, even for features which, in the words of Guideline E-VIII, 2.1.3, "are not otherwise to be found in the description or drawings"

This would seem a fairer and more logical outcome, which avoids the legal uncertainties discussed above.

This article originally appeared in epi-Information and is available at information.patentepi.com/1-16/unintentional-abandonment.html .

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.