3. The EPO acting as designated or elected Office
In J 26/87 (OJ 1989, 329) the Legal Board held that if, on the proper interpretation of the request for grant of an international application, an applicant designated an EPC contracting state for which the PCT was in force on the filing date of the international application, the EPO was bound by the provisions of Art. 153 EPC 1973 to act as the designated Office for that contracting state, even if the international application was published by the International Bureau without mentioning that contracting state as a designated state.
J 19/93 also concerned the designation of EPC contracting states in an international application for the purpose of obtaining a European patent. The Legal Board pointed out that the EPO as elected or designated Office is fully competent to interpret applications appointing it to act in these capacities. The Office is not bound by the interpretation of the receiving Office or of the International Bureau (see also J 4/94, J 26/87).
In J 7/93 the International Bureau did not inform the EPO of its election (in the demand for international preliminary examination) within the former 21-month time limit under R. 104b(1) EPC 1973 (version valid prior to 1 March 2000). The EPO issued a communication pursuant to the then applicable R. 85a EPC 1973 concerning the grace period for late payment of the fees upon entry into the European phase and then a notification of loss of rights pursuant to R. 69(1) EPC 1973. The Legal Board pointed out that both referred to the 21-month period under R. 104b(1) EPC 1973, although, in the circumstances, the 31-month period was applicable. They were considered to be legally non-existent because they could not be based on any provision contained in the EPC or in the PCT. These communications, being legally non-existent, could not have any legal effect to the party's detriment.
In the PCT request in case J 3/94 the applicant had designated a European patent under "Regional Patent" and five PCT contracting states including Germany and the United Kingdom under "National Patent". However, in the demand for international preliminary examination, filed with the EPO as IPEA, only the five PCT member states were elected; under "Regional Patent" there was no cross indicating the European patent. The applicant argued inter alia that the election of DE and GB made the EPO an elected Office by operation of law. However, the Legal Board held that the EPO did not become an elected Office in this case. One of the principles implemented by Art. 31(4)(a) PCT was that it was the applicant's choice for which office he intended to use the results of the international preliminary examination. Furthermore, it was not only a matter for the EPC to decide whether an election made for the national route was also valid for the EPO. The validity of an election had to be decided during the international phase in order to give effect to the election. The IPEA had to examine the demand and the international authorities had to fulfil their obligations resulting from a valid election. The validity and scope of an election had to be clear not only for the applicant and the elected Office but also for the Authorities in the international phase. Its validity had to be assessed on a uniform basis by the Authorities concerned.
In J 4/94 the Legal Board had to consider whether the EPO was competent to interpret the applicant's demand for international preliminary examination differently from the United Kingdom Patent Office acting as IPEA. The Legal Board conceded that the demand was addressed to the IPEA, the competent body to deal with it. However, J 26/87 (OJ 1989, 329) had decided that the interpretation of the request for grant form by the receiving Office and the International Bureau was not binding on the EPO in its function as designated Office. The valid designation put the matter within the competence of the EPO as designated Office (Art. 2(xiii) PCT and Art. 153(1) EPC 1973). In the present case there was a defect in the demand, which the applicant should have been invited under R. 60 PCT to correct. A clear deviation by the IPEA from the intention expressed in the demand was not binding on the EPO. It was therefore possible for the EPO to regard itself as a validly elected Office. Consequently, under R. 104b(1) EPC 1973 (as in force prior to 1 March 2000) the time limit of 31 months applied.