I. On 3 July 1979, the appellants filed European patent application No. 79102235.3 which was subsequently published on 6 February 1980 under No. 0007 474. They claimed priority from a United Kingdom national application filed on 5 July 1978 and designated nine Contracting States but not the United Kingdom. Designation fees for nine States were duly paid. Subsequently, by letter dated 29 July 1980, they requested examination of the application and the examination fee was duly paid.

II. By letter dated 22 September 1981 the appellants requested correction of the designations in the application by the addition of the United Kingdom. An additional designation fee was paid.

III. By a communication dated 18 December 1981, a Formalities Officer of Directorate-General 2 stated that the request had been filed at such a late stage that it could not be granted and that the additional designation fee paid would be refunded. He added that the appellants might apply for a decision on the matter in accordance with Rule 69(2) EPC.

IV. On 17 February 1982, by telex (duly confirmed by letter dated 25 February 1982) the appellants applied for a decision in accordance with Rule 69(2) EPC.

V. On 16 March 1982, the Head of Formalities of Directorate-General 2 issued a decision purporting to reject the request for correction on the ground that there had been significant delay in making the request for correction.

VI. On 13 May 1982, the appellants filed notice of appeal by telex (duly confirmed by a letter of the same date). The appeal fee was duly paid.

VII. In their Statement of Grounds of the appeal, dated 21 June 1982, the appellants made submissions concerning the substantive issues on the appeal but they did not contend that the Head of Formalities of Directorate-General 2 was not entitled to give the decision under appeal, nor did they request reimbursement of the appeal fee.

VIII. By a letter dated 20 September 1982, the Legal Board of Appeal drew the attention of the appellants to the fact that it appeared to the Board that, through no fault on the part of the appellants, the decision had been given by a person who was not entitled to give it. Accordingly, it seemed that the Board would have to set aside the decision and remit the case to an Examining Division, ordering reimbursement of the appeal fee (provided that the appeal was not withdrawn).

IX. By letter dated 8 November 1982, the appellants replied that they did not intend to comment on the letter of 20 September 1982 and that the appeal was maintained.

Reasons for the Decision

1. The appeal complies with Articles 106 t0 108 and Rule 64 EPC and is, therefore admissible.

2. By virtue of the provisions of Article 21(2)(c) EPC the Legal Board of Appeal is empowered to examine this decision which purports to be that of an Examining Division entrusted to a Formalities Officer in accordance with Rule 9(3) EPC.

3. In accordance with Rule 9(3) EPC, the President of the European Patent Office may entrust to employees who are not technically or legally qualified examiners the execution of individual duties falling to the Examining Divisions and involving no technical or legal difficulties. Accordingly, by a Notice of the Vice-President, Directorate-General 2, dated 10 August 1979, supplemented and reprinted in a Notice dated 8 January 1982 (Official Journal EPO 3/1982, 112) the giving of decisions under inter alia Rule 69(2) was entrusted to Formalities Officers of Directorate-General 2. However, the giving of decisions under Rule 88 EPC has never been entrusted to Formalities Officers.

4. In accordance with Rule 69(1) EPC, if the European Patent Office notes that the loss of any right “results from the Convention” without any decision concerning the refusal of the European patent application, it shall communicate this to the person concerned who may, in accordance with Rule 69(2) EPC, apply for a decision on the matter by the European Patent Office, if he considers that the finding of the European Patent Office is inaccurate.

5. In the opinion of the Board, it cannot fairly be said that the loss of any right “results from the Convention”, within the meaning of Rule 69(1) EPC, if, as the result of a mistake by an applicant or his representative, the request for grant of a European patent fails to designate a Contracting State which the applicant wished to designate. Moreover, in the present case, the appellants made an express request for correction, stating clearly that it was made under Rule 88 EPC. They were entitled to have their request dealt with accordingly by an Examining Division and not under the procedures of Rule 69 EPC, which are designed only for situations in which the European Patent Office notes that loss of a right results from the EPC and takes the initiative in alerting the person concerned.

6. It follows that the Head of Formalities of Directorate-General 2 exceeded his powers in issuing a decision purporting to reject the request for correction and that the Board must set it aside accordingly and remit the request for correction to the Examining Division concerned with the examination of the European patent application.

7. Since the decision given must be set aside on this ground, the Board finds that there has been a substantial procedural violation within the meaning of Rule 67 EPC. The Board considers that it is equitable to order reimbursement of the appeal fee in accordance with that Rule, notwithstanding that the appellants have not requested reimbursement.

ORDER

For these reasons, it is decided that:

1. The decision of the Head of Formalities of Directorate-General 2 dated 16 March 1982 is set aside.

2. The request for correction of a mistake under Rule 88 EPC is remitted to the Examining Division.

3. Reimbursement of the appeal fee is ordered.