Friday, September 25, 2009

R.40(3) - deemed withdrawn or refused ?

I recently received the following question:

I just answered question G3-10(d) [Basic Questions book] relating to failure to file a translation under R 40(3).

According to Visser, a missing translation under Art 90(3), R 57 (a), R 40(3) and failure to provide this within the two month time limit under R.58 will lead to the refusal of the application Art 90(5). He has also stated that the statement in A-III, 14 is probably incorrect.

In the DeltaPatents answer you refer to the translation under Art 14(2), R 6(1), which will lead to the application being deemed withdrawn.

Which is the correct answer?

Think about it, then click on Read more to see my answer

My answer:

Unfortunately, the EPO has published some conflicting information on a couple of points in EPC2000. Derk Visser is basing his conclusion in his notes to R.40(3), on the documents used during the preparation of EPC2000, and the notes on R.57(a) published in the Special Edition (SE) No. 4 of OJEPO 2007.

Therefore, on the exam, the exam committee should accept both answers if you indicate the source (either guidelines for deemed withdrawn or SE 4 for refused). However, you should be aware that the exam committee often expects and prefers the guidelines answer over any other.

However, I would defend the deemed withdrawn conclusion of the Guidelines. 
Legally, there is no difference between the application as filed when the pages of text are filed directly, or a reference is provided to a previously filed application consisting of those pages. The second way is simply a shorthand way of doing the same thing, although the text has to eventually be provided as a certified copy R.40(3).
Therefore, the law treats both kinds of applications the same. The language rules are applied the same – fee reduction R.6(3), authentic text Art.70(2), and filing a translation R.6(1)/ R.40(3).

I would then argue that R.6(1) and R.40(3) are parallel implementing regulations for Art.14(2), and the legal consequence is the same. This fits in with the use of the EPC to simply file a priority founding application – file some text, and get a filing date, and allow the application to become deemed withdrawn.

I hope this clears things up.

1 comment:

  1. I solved the issue with the following reasoning to come up with the answer of Visser and SE4. Please let me know what you think.

    Art 90(5) says that the application is to be refused "unless a different legal consequence is is provided for by this Convention."

    Art 14(2) provides such different legal consequence: application deemed withdrawn.

    Art 90(3), R 57(a), R 40(3) nor R 58 provide any different legal consequence than Art 90(5) and there appears to be no reference in these articles to Art 14(2) => default of Art 90(5) applies and application is refused.
    Reasoning: you already have the earlier filing date if you are to take advantage of filing by reference. So if you do not bother to file a translation, there is no need for the EPO to do any processing and archiving an application which apparently wasn't valuable enough to the applicant to translate. Since the applicant has the earlier date anyway, no applicants rights are harmed.