"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.
- 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.
- 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.
- 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.