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